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EntergyShaw v. CPIC Net [2000] GENDND 1683 (8 December 2000)


National Arbitration Forum

DECISION

EntergyShaw LLC v CPIC Net

Claim Number: FA0011000095950

PARTIES

The Complainant is EntergyShaw, L.L.C. , Baton Rouge, LA, USA ("Complainant") represented by Russel O. Primeaux, Kean, Miller, Hawthorne, D'Armond, Mccowan & Jarman. The Respondent is CPIC Net, Closter, NJ, USA ("Respondent").

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are entergyshaw.com, entergy-shaw.com registered with Network Solutions.

PANELIST

The Panelist certifies that he or she has acted independently and impartially and to the best of his or her knowledge, has no known conflict in serving as the panelist in this proceeding.

Hon. James A. Carmody, as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on November 7, 2000; The Forum received a hard copy of the Complaint on November 8, 2000.

On November 9, 2000, Network Solutions confirmed by e-mail to the Forum that the domain names entergyshaw.com, entergy-shaw.com are registered with Network Solutions and that the Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions 5.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.

On November 9, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 29, 2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@entergyshaw.com, and postmaster@entergy-shaw.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On December 4, 2000, pursuant to Complainant’s request to have the dispute decided by a One Member panel, the Forum appointed the Hon. James A. Carmody as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Uniform Rules "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its Decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the panel deems applicable, without the benefit of any Response from the Respondent.

RELIEF SOUGHT

The Complainant requests that the domain names be transferred from the Respondent to the Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant alleges the following in accordance with ICANN Policy 4

    1. The company which was formed as a joint venture between Entergy and Shaw is named EntergyShaw, L.L.C. The domain names registered by the respondent are entergyshaw.com and entergy-shaw.com. Other than the different suffixes and the hyphen; the domain names at issue are identical. ShawEntergy, L.L.C. was officially formed as a Delaware limited liability company on August 30, 2000.
    2. On June 2, 2000, Entergy and Shaw signed a letter of intent to create a join venture to build and operate power plants. The companies announced the joint venture in a press release issued on that same day, June 2, 2000. On that same day, June 2, 2000, the Respondent obtained the domain names at issue.
    3. As of October 24, 2000, the entry of the URLs for the two domain names brings a web user to a site captioned with the name domainsarefree.com. The site states "Welcome to www.entergy-shaw.com" or "Welcome to www.entergyshaw.com," as applicable.

      There are no services or products offered which relate to the domain names. There are no indications on the two sites of any business which was carried on or is being carried on by the registrant which relates to the domain names.

      Prior to the registration, CPIC NET had no prior use of the domain names or any part of them. CPIC NET has no trademark registrations for the domain names or any part of them.

    4. It is clear from the current conduct of the registrant, as well as past similar conduct by this same registrant, that the registrant is acting in bad faith and has no intention of operating a legitimate business with the use of the domain names. Respondent has had numerous other adverse decisions made against him by other ICANN accredited dispute resolution providers, each ordering the transfer of the domain names at issue.

One example of the registrants’ previous bad-faith cybersquatting is very similar to what occurred in the instant situation. Time Warner, a large media company, and EMI, a large music company, announced a merger between their two companies on January 24, 2000. CPIC NET registered domain names which were similar to the potential names of the newly merged company on January 22, 2000, shortly after the merger was reported in the press but before the official announcement. CPIC NET then refused to transfer the names. The decision of the World Intellectual Property Organization (WIPO) forum was to direct the transfer of the names. It is clear from the numerous instances of conduct of the respondent that CPIC NET and Syed Hussain are acting in bad faith.

B. Respondent

Respondent did not submit a response in this matter.

FINDINGS

Entergy Corporation ("Entergy"), one of the two co-owners of EntergyShaw, L.L.C., is the owner of U.S. Trademark Registration No. 2,387,356, which was issued on September 19, 2000. The mark has been in use since as early as 1996.

Entergy owns, manages, or invests in power plants, and delivers electricity to over 2.5 million customers in portions of Arkansas, Louisiana, Mississippi and Texas. Entergy is also a leading provider of wholesale energy, marketing and trading services. Entergy ranks among the largest U.S. utility companies.

The Shaw Group, Inc., ("Shaw") the other co-owner of EntergyShaw, L.L.C., has been using the word "Shaw" in connection with its industrial services since 1987. Shaw is the largest supplier of fabricated piping systems and services in the world. Shaw offers comprehensive solutions consisting of integrated engineering and design, pipe fabrication, construction and maintenance services and the manufacture of specialty pipe fittings and supports to the power generation, crude oil refining, chemical and petrochemical processing and oil & gas exploration and production industries.

Shaw is also a leading provider of full-service, value-added engineering, procurement, construction, consultation and environmental services to the power generation, process, governmental and industrial markets. Shaw and its subsidiaries have approximately 13,000 employees with offices in the United States, Australia, Canada, the United Kingdom, Venezuela and Bahrain.

Both Entergy and Shaw are publicly traded companies, and both are listed on the New York Stock Exchange.

DISCUSSION

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("Policy") requires that the complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

Identical and/or Confusingly Similar

The domain names at issue, entergyshaw.com and entergy-shaw.com are confusingly similar to Complainant’s marks. The evidence idicates that Complainant holds a registered trademark in connnection with Engergy. In addition, Complainant has common law rights in the SHAW mark, by virtue of its extensive and exclusive use, giving rise to secondary meaning. See MatchNet PLC. V. MAC Trading, D2000-0205 (WIPO May 11, 2000) (citing The British Broadcasting Corp. v. Jaime Renteria, D2000-0050 (WIPO Mar. 23, 2000)) (noting that the UDRP "does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names" and applying the UDRP to "unregistered trademarks and service marks").

In response to Complainant’s press release regarding a signed letter of inent to create a joint venture between Entergy and Shaw, forming EntergyShaw L.L.C., Respondent registered the domain names at issue. Apart from the addition of a hyphen and the TLD ‘.com,’ the domain names are identical to Complainant’s joint venture company, EntergyShaw L.L.C. See The Ritz-Carlton Hotel Co. v. Club Car Executive Transportation and Dennis Rooney, D2000-0611 (WIPO Sept. 18, 2000) (finding that removing a hyphen in the domain names is not sufficient to differentiate the domain names from the mark).

Additionally, the joint venture company name, as well as the domain names at issue, are comprised of Complainant’s ENTERGY and SHAW marks. See Quixtar Investments, Inc. v. Smithberger and QUIXTAR-IBO, D2000-0138 (WIPO Apr. 19, 2000) (finding that because the domain name <quixtar-sign-up.com> incorporates in its entirety the Complainant’s distinctive mark, QUIXTAR, the domain name is confusingly similar).

In light of the preceding, this Panelist finds that the domain names at issue are confusingly similar to marks in which Complainant has rights, satisfying ICANN Policy 4(a)(i).

Rights or Legitimate Interests

Respondent has not asserted any rights or legitimate interests with respect to the domain names at issue. Therefore, this Panelist will make its determination based solely on the complaint. See ICANN Rule 14(a).

The evidence therein indicates that Respondent registered the domain names at issue on the same day Complainant issue a press release regarding a forthcoming joint venture, to be known as EntergyShaw L.L.C. Seizing the moment, Respondent immediately registered the domain names at issue. However, mere registration of a domain name does not confer any rights or legitimate interest. And since registration, Respondent has apparently not made any use of the domain names at issue. The combination of these two facts leads this Panelist to conclude that Respondent has no rights or legitimate interest in the domain names at issue. See Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc. and D3M Domain Sales, AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interest where no such right or interest is immediately apparent to the Panel and Respondent has not come forward to suggest any such right or interest that it may possess).

Registration and Use in Bad Faith

Under the ICANN Policy, evidence of bad faith includes circumstances indicating that:

(ii) you [Respondent] have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iv) by using the domain name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.

Respondent’s opportunistic bad faith is obvious. Respondent registered the domain names at issue the very day Complainant issue a press release regarding the proposed joint venture. Such timing cannot be a coincidence, and this Panelist finds that it represents an ongoing pattern of opportunistically registering domain names of companies in the news, preventing those companies from representing their new venture in a corresponding domain name. See Time Warner Inc. and EMI Group plc v. CPIC Net, D2000-0433 (WIPO Sept. 15, 2000) (finding that this very Respondent registered and used the domain names emiwarnermusic.com, emiwarner.org, emiwarner.net, warneremi.net and warneremi.org in bad faith when Respondent registered the domain names immediately after an announced merger between Time Warner Inc. and EMI Group. Respondent had also registered 15 other domain names similar to those belonging to Complainant, evidencing a pattern of preventative conduct).

This is not to say that Respondent’s behavior would always amount to bad faith. But where Respondent repeatedly registers domain names corresponding to the trademarks and service marks of others, Respondent’s behavior will not be protected by the ICANN Policy. See CBS Broadcasting Inc. v. Worldwide Webs, Inc., D2000-0834 (WIPO Sept. 4, 2000) ("There is nothing inherently wrongful in the offer or sale of domain names, without more, such as to justify a finding of bad faith under the Policy. However, the fact that domain name registrants may legitimately and in good faith sell domain names does not imply a right in such registrants to sell domain names that are identical or confusingly similar to trademarks or service marks of others without their consent.")

DECISION

For the foregoing reasons, this Panelist determines that the requested relief be granted. Accordingly, it is ordered that the domain names entergyshaw.com and entergy-shaw.com be transferred from Respondent to Complainant.

Hon. James A. Carmody, Panelist

Dated: December 8, 2000


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