World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Public Service Electric & Gas Company and its affiliates and subsidiaries v. The Whois Privacy Service / Adjaele Global Internet Ltd

Case No. D2011-1799

1. The Parties

The Complainant is Public Service Electric & Gas Company and its affiliates and subsidiaries of Newark, New Jersey, United States of America (“U.S.”) represented by Lowenstein Sandler PC, U.S.

The Respondent is The Whois Privacy Service / Adjaele Global Internet Ltd of Shanghai, the People’s Republic of China, internally represented.

2. The Domain Name and Registrar

The disputed domain name <wwwpseg.com> is registered with Fabulous.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 20, 2011. On October 21, 2011, the Center transmitted by email to the Registrar. a request for registrar verification in connection with the disputed domain name. On October 24, 2011, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 26, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on October 29, 2011.

The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 31, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 20, 2011. The Response was filed with the Center on November 17, 2011.

The Center appointed Pablo A. Palazzi as the sole panelist in this matter on December 1, 2011. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is Public Service Electric & Gas Company, a company organized under the laws of New Jersey.

The Complainant is the owner the mark “PSEG”, as well as a long list of marks containing the PSEG term, all registered in the U.S., in some cases since the year 1971, and predating the registration of the disputed domain name.

The Complainant also owns numerous top-level and country code domain names incorporating the PSEG Mark, including <pseg.com>, <psegbill.com>, <psegelectric.com>, <psegelectricity.com>, <psegnj.com>, <psegprices.com>. and <psegrates.com> among others.

The disputed domain name was registered on April 1, 2003.

5. Parties’ Contentions

A. Complainant

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case:

(1) The Complainant is the owner of the PSEG trademark and other registered trademarks at the United States Patent and Trademark Office. Moreover, the Complainant contends that the disputed domain name <wwwpseg.com> is confusingly similar to the PSEG tradeamrk as it incorporates the Complainant’s distinctive trademark in its entirety. The only difference is that the disputed domain name adds the prefix “www”. The Complainant states that it is established by numerous UDRP decisions that the addition of the prefix “www” to a trademark does not remove any confusion and is, in fact, a deceptive practice known as “typosquatting” which is done with the express purpose of causing confusion.

(2) The Complainant states that the Respondent has no rights or legitimate interests in respect of the disputed domain name as the Complainant’s exclusive rights in its registered trademark predate the registration of the disputed domain name, and the Complainant has not authorized the Respondent to use its trademark. In addition, the Respondent has not been commonly known by the disputed domain name and has not made any legitimate use of the disputed domain name in connection with any bona fide offering of goods and services nor could it have done so in light of the Complainant’s rights. Finally, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue. According to the Complaint, the Respondent’s behavior constitutes typosquatting by registering a domain name that is a close misspelling of Complainant’s domain name <pseg.com>, and this use does not constitute a legitimate business use under the Policy.

(3) The Complainant also contends that the disputed domain name was registered and is being used in bad faith. With regard to bad faith registration, the Complainant states first that this is a classic case of typosquatting. Typosquatting can be defined as “inherently parasitic and of itself evidence of bad faith”. Insurance Company v. Dyk Dylina/Privacy--Protect.org, WIPO Case No. D2011-0304. Second, the unauthorized use of a complainant’s trademark to generate pay-per-click revenue or to sell competitive products constitutes bad faith under paragraphs 4(b)(iii) and (iv) of the Policy. Finally, the registration of a domain name incorporating a widely recognized mark is itself evidence of bad faith registration. The Respondent’s registration of the disputed domain name is prima facie evidence of such bad faith.

The Complainant requests as a remedy the transfer of the disputed domain name.

B. Respondent

The Respondent filed an informal response with the Center on November 17, 2011.

The Respondent states that the disputed domain name <wwwpseg.com> is clearly different from <pseg.com> because it is prefixed by the letters “www” which stand for “world wide waste”.

In addition the Respondent argues that the disputed domain name is being used for a bona fide offering of goods and services. The Respondent argues that as shown in Exhibit E of the Complaint, the disputed domain name is an information site which aims to inform customers of environmentally friendly energy alternatives such as natural gas and solar power. The Respondent states that the disputed domain name is in its first stage of development, and there is a plan for a more comprehensive information portal in the future.

With respect to bad faith the Respondent argues that merely parking a domain similar to a trademark term, should not be an inference of bad faith. Finally, the Respondent argues that an Internet user viewing the website could not be in any doubt that this website is not run by the Complainant. In these circumstances, the Respondent concludes that it cannot be inferred that the Respondent set out to mislead Internet users.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists three elements which a complainant must satisfy in order to succeed. The Complainant must satisfy that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

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

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

A. Identical or Confusingly Similar

The Panel finds that the Complainant has established trademark rights in PSEG as evidenced by the trademark registrations submitted with the Complaint, as mentioned above.

The Panel is also prepared to find that the disputed domain name <wwwpseg.com> is confusingly similar to the Complainant’s trademark PSEG. The name PSEG is clearly the dominant element of the disputed domain name.

The Respondent argues that the disputed domain name <wwwpseg.com> is clearly different from <pseg.com> because it is prefixed by the letters “www” which stand for “world wide waste”.

It is the view of the Panel that the addition of the letters “www” before the word “pseg”, without the period, does not serve to distinguish the disputed domain name from the Complainant’s trademark. Omitting the period in between the letters “www” and a domain name is a common typing error, and accordingly the addition of these letters as a prefix does not serve to reduce potential confusion between a trademark and a domain name.

It is established by numerous URP decisions that the addition of the prefix “www” to a trademark does not remove any confusion and is, in fact, a deceptive practice known as “typosquatting” which is done with the express purpose of causing confusion (see Comerica Incorporated v. PrivacyProtect.org, Domain Admin / Venkateshwara Distributor Private Limited, WIPO Case No. D2011-1697; BHP Billiton Innovation Pty Ltd v. Yorkshire Enterprises Limited and Whois Privacy Services Pty Ltd, WIPO Case No. D2009-1558; F. Hoffmann-La Roche AG v. Transure Enterprise Ltd., WIPO Case No. D2008-0422).

Therefore, the Panel finds that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances, any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name:

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

There is no evidence of the existence of any of those rights or legitimate interests. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the disputed domain name or to use the trademarks. The Complainant has prior rights in the trademarks which precede the Respondent’s registration of the disputed domain name by several decades.

As stated above, the Respondent argues that the “www” part of the disputed domain name stands for “world wide waste” and that the disputed domain name is being used for a bona fide offering of goods and services. The Respondent argues that the disputed domain name is an information site to inform customers of environmentally friendly energy alternatives such as natural gas and solar power.

There is nothing in the content of the disputed domain name, nor in the response filed by Respondent that evidences such situation. The disputed domain name seems to contain a typical pay-per click site and in its lower part contains a legend stating the following: “wwwpseg.com may be for sale”.

In this context, the Complainant has therefore established a prima facie case that the Respondent has no rights and legitimate interests in the disputed domain name and thereby shifted the burden to the Respondent to produce evidence to rebut this presumption (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, (“WIPO Overview 2.0”) section 2.1).

The Respondent is not providing any evidence of its assertions. Thus, the Respondent has failed to show that it has acquired any trademark rights in respect of the disputed domain name or that the disputed domain name is used in connection with a bona fide offering of goods or services.

Therefore, the Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out a number of illustrative circumstances which, if found by the Panel, are taken to be evidence of bad faith. One of them (paragraph 4(b)(iv) of the Policy) is circumstances showing that the Respondent by using the disputed domain name, intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.

As noted above, the disputed domain name is a form of typosquatting. It is the view of the Panel that “typosquatting is virtually per se registration and use in bad faith. It is difficult to conceive of circumstances that would overcome the inference that the typosquatter ‘intentionally attempted to attract, for commercial gain, Internet users to [Respondent’s] web site . . . by creating a likelihood of confusion with the complainant’s mark as to the source’ of the web site” (Go Daddy Software, Inc. v. Daniel Hadani, WIPO Case No. D2002-0568; and New Dream Network, LLC v. Yuanjin Wu, WIPO Case No. DCO2010-0013).

For these reasons, the Panel also finds that the disputed domain name was registered and used in bad faith, in the way described in paragraph 4(b)(iv) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <wwwpseg.com> be transferred to the Complainant.

Pablo A. Palazzi
Sole Panelist
Dated: December 8, 2011

 

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