World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Public Service Electric & Gas Company and its affiliates and subsidiaries v. SamIngram

Case No. D2011-1803

1. The Parties

The Complainant is Public Service Electric & Gas Company (“PSEG”) 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 SamIngram of Bound Brook, New Jersey, U.S.

2. The Domain Name and Registrar

The disputed domain names, <mypseg.com> and <mypseg.net> (“Disputed Domain Names”), are registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 21, 2011. On October 24, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the Disputed Domain Names. On October 24, 2011, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the 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 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 20, 2011.

The Center appointed Michael A. Albert as the sole panelist in this matter on November 29, 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

Complainant in these proceedings is Public Service Electric & Gas Company (“PSEG”), a New Jersey corporation, one of the largest combined electric and gas companies in the U.S., that recognized over USD 11 billion in revenue for PSEG-branded services.

According to the undisputed allegations and exhibits provided by the Complainant, Complainant currently owns approximately 14 U.S. federal trademark registrations and applications for the PSEG trademark and related trademarks. These trademarks include PSEG, as well as a well as the larger family of trademarks to which the PSEG trademark belongs, which also includes the PSEG POWER LLC, PSEG ENERGY HOLDINGS, PSEG GLOBAL, PSEG WE MAKE THINGS WORK FOR YOU, PSEG FOSSIL LLC, PSEG ENERGY RESOURCES AND TRADE LLC, PSE&G, PSEG NUCLEAR LLC, PSE&G WE MAKE THINGS WORK FOR YOU, PSEG RESOURCES, and PUBLIC SERVICE ENTERPRISE GROUP. Complainant’s PSEG trademark was registered in the United States on August 3, 2004. In 2009 and 2010, Complainant spent approximately USD 12 million and USD 4 million, respectively, on the marketing and promotion of the PSEG brand.

According to Complainant’s undisputed allegations, Complainant currently owns numerous top-level and country code domain names incorporating the PSEG Mark, including, but not limited to, <pseg.com>, <psegbill.com>; <psegelectric.com>; <psegelectricity.com>; <psegnj .com>; <psegprices.com>; <psegrates.com>; and <psegrebate.com>. In 2010 and 2011, there have been approximately 6 to 8 million visitors to the <pseg.com> website per year.

Respondent, SamIngram, registered the Disputed Domain Names, <mypseg.com> and <mypseg.net>, on June 27, 2008. According to the information provided by the concerned Registrar, GoDaddy, Inc., the contact address for the Respondent is Bound Brook, New Jersey, U.S.

5. Parties’ Contentions

A. Complainant

Complainant contends that the Disputed Domain Names are identical or confusingly similar to a trademark in which Complainant has rights, that Respondent has no rights or legitimate interests in the Disputed Domain Names, and that Respondent registered and is using the Disputed Domain Names in bad faith in order to deceive visitors to the website to which the Disputed Domain Names resolve.

Complainant contends that the Disputed Domain Names are confusingly similar to Complainant’s PSEG trademark. Complainant observes that the only difference between the Complainant’s PSEG trademark and the Disputed Domain Names is the addition of the word “my.” The addition of “my”, Complainant contends, focuses the reader’s attention on Complainant’s PSEG trademark and creates the impression of an economic relationship between Respondent and Complainant.

Complainant argues that Respondent cannot demonstrate any rights or legitimate interests in the Disputed Domain Names under paragraph 4(a)(ii) of the Policy. Complainant contends that Respondent is not known by the Disputed Domain Names and has not used the Disputed Domain Names in connection with a bona fide offering of goods or services. Complainant avers that Respondent is not making legitimate non-commercial or fair use of the Disputed Domain Names. Complainant has presented evidence that Respondent is using the Disputed Domain Names in connection with a portal website that provides links to various third-party goods and services, some of which compete with Complainant’s goods and services.

Finally, Complainant contends that that the Disputed Domain Names were registered and are being used in bad faith under paragraph 4(a)(iii) of the Policy. More specifically, Complainant maintains that 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.

B. Respondent

Respondent does not dispute the validity of the PSEG trademark. Nor does Respondent dispute that the Disputed Domain Names are “identical or confusingly similar” to the PSEG trademark under paragraph 4(a)(i).

With respect to paragraphs 4(a)(ii) and (iii) of the Policy, Respondent asserts that he has a legitimate interest in the Disputed Domain Names. Respondent claims to have been a member of the Credit Union movement in the United States for 23 years, as a member as well as a vice president of marketing. Respondent states that being a member of a Professional Select Employer Group is a prerequisite for becoming a member of a credit union. Respondent notes that the acronym for Professional Select Employer Group is “PSEG”. Respondent also claims to have purchased domain names incorporating the text “segsareus” and “segsrus”. (These domain names are not at issue here.) Although Respondent concedes that he offers no goods or services in connection with the Disputed Domain Names, Respondent states that he hopes to use the domains names registered by Respondent, including the Disputed Domain Names, as part of his effort to promote the credit union movement.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name must be cancelled or transferred:

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

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

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

A. Identical or Confusingly Similar

Complainant provides sufficient evidence that it is the owner of a valid U.S. trademark (offered into evidence as Exhibit 4 to the Complaint). Trip.com, Inc. v. Daniel Deamone, WIPO Case No. D2001-1066 ([R]egistration of a mark is prima facie evidence of validity [. . . .] Respondent has the burden of refuting this assumption.”). Respondent has provided no evidence to refute the conclusion that Complainant possesses valid and enforceable trademark rights.

The Disputed Domain Names, however, are not identical to the PSEG trademark. Therefore, the first issue is whether the Disputed Domain Names and the PSEG trademark are confusingly similar.

The Panel agrees with Complainant that the addition of the word “my” to the PSEG trademark does not mitigate the risk of confusion; indeed, it may draw the viewer’s attention to the trademark. See, e.g., Sony Kabushiki Kaisha also trading as Sony Corporation v. Sin, Eonmok, WIPO Case No. D2000-1007 ("The addition of the letters “my” has the effect of focusing the reader's attention on the Complainant's trademark. Accordingly, the Panel considers that a reader of the domain name would be confused into thinking that the domain name is associated with the Complainant."); Mastercard International Incorporated v. Daniel Kaufman, WIPO Case No. D2006-1031 ("The domain name differs from Complainant's registered MASTERCARD marks only in that it contains the generic possessive pronoun “my.” ‘The addition of “my” is not sufficient to avoid confusion’ Sony Kabushiki Kaisha also trading as Sony Corporation v. Sin, Eonmok, WIPO Case No. D2000-1007.”); Lance Armstrong Foundation v. CSA Marketing, WIPO Case No. D2005 0886 (“The Panel also finds that the Domain Name is confusingly similar to the LIVESTRONG mark. It incorporates the mark in its entirety, adding only the generic and non-distinctive word “my”, which is often used as a prefix in domain names and therefore does not lessen the likelihood of confusion.”). Moreover, the addition of the “.com” and “.net” gTLDs does not remove the confusing similarity between the Disputed Domain Names and Complainant's PSEG trademark. Deutsche Lufthansa AG v. Nadeem Qadir, WIPO Case No. D2009-0003.

For the all of the foregoing reasons, this Panel finds that the Disputed Domain Names are confusingly similar to Complainant’s trademark, in which Complainant has established rights. Therefore, the Panel finds that Complainant has proven the first element of the Policy.

B. Rights or Legitimate Interests

Under the Policy, paragraph 4(c), rights or legitimate interests in domain names may be demonstrated by showing that:

(i) before any notice of this dispute, Respondent used, or demonstrably prepared to use, the domain names or a name corresponding to the domain names in connection with a bona fide offering of goods or services;

(ii) Respondent has been commonly known by the domain names, even if no trademark or service mark rights have been acquired; or

(iii) Respondent is making a legitimate noncommercial or fair use of the domain names, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark at issue.

The Panel concludes that Complainant has demonstrated that Respondent has no rights or legitimate interests in the Disputed Domain Names.

Respondent has no rights or legitimate interests in the Disputed Domain Names. The unrebutted evidence of record shows that Complainant has never assigned, licensed, or otherwise conveyed any rights in its mark to Respondent. “Th[is] fact, on its own, can be sufficient to prove the second criterion [of the Policy].” Six Continents Hotels, Inc. v. IQ Management Corporation, WIPO Case No. D2004-0272.

While Respondent claims to have registered the Disputed Domain Names in order to promote the Credit Union movement, Respondent concedes that in the more than three years he has owned the domains names he has “yet to develop marketing sites” that would serve this stated purpose. Respondent has not provided evidence that he has made demonstrable preparations to use the Disputed Domain Names in connection with a bona fide offering of goods and services. Instead, Respondent “parked” the Disputed Domain Names with GoDaddy, Inc. Respondent does not deny Complainant’s allegation that he has collected pay-per-click revenues.

No evidence of record suggests that Respondent has become known by the Disputed Domain Names. Respondent does not appear to have used the Disputed Domain Names in connection with any bona fide offering of goods or services. Rather, as evidence offered by the Complainant shows, Respondent is using the Disputed Domain Names in connection with a portal website that provides links to various third-party goods and services, some of which compete with Complainant’s goods and services. See MBI, Inc. v. Moniker Privacy Services/Nevis Domains LLC., WIPO Case No. D2006-0550 (“the operation of commercial link services of this type, designed to lure Internet users and divert them to other commercial sites by the use of domain names identical or similar to a complainant’s trademark, do not confer a legitimate right to or interest in a domain name.”); Emmis Television Broadcasting, L.P., d/b/a KHON-TV v. Henry Chan, WIPO Case No. D2004-0366 (“[A] skeletal website, which serves only to redirect users to a search engine and unrelated third party vendors” is not a bona fide offering of goods or services.).

For all of the foregoing reasons, this Panel finds that Complainant has proven that Respondent lacks rights or legitimate interests in respect of the Disputed Domain Names. Therefore, the Panel finds that Complainant has proven the second element of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires that Complainant show registration and use of the Disputed Domain Names in bad faith. Paragraph 4(b) presents a non-exhaustive list of circumstances considered sufficient to demonstrate registration and use in bad faith. One of the listed circumstances, paragraph 4(b)(iv), is where Respondent attempts to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or of a product or service on Respondent’s website.

Registration in Bad Faith

Respondent may be found to have registered the Disputed Domain Names in bad faith if Respondent knew or should have known of the existence of Complainant’s trademark rights. See Yahoo! Inc. v. Jorge O.

Kirovsky, WIPO Case No. D2000-0428. Here, Respondent registered the Disputed Domain Names in June of 2008, almost four years after the PSEG mark was registered. Respondent does not claim to have been unaware of Complainant’s PSEG trademark. Indeed, PSEG is a Fortune 500 company that has been providing electric or transportation services in New Jersey for more than a century. As noted above, Respondent provided a New Jersey address as a contact address to GoDaddy.com, Inc. when he registered the Disputed Domain Names. The Panel concludes that Respondent knew of Complainant’s PSEG trademark rights when Respondent registered the Disputed Domain Names.

The Panel also concludes that Respondent purchased the Disputed Domain Names in bad faith. While Respondent claims that he purchased the Disputed Domain Names in order to “promote the Credit Union movement in the United States”, the undisputed facts show that Respondent has never actually used the Disputed Domain Names for this purpose. Rather, Respondent has “parked the disputed domains on GoDaddy” and collected click-through revenue. When confronted by Complainant, Respondent attempted to sell the Disputed Domain Names to Complainant. In short, there is sufficient circumstantial evidence that Respondent registered the Disputed Domain Names in bad faith. Respondent’s unsupported assertions regarding aspirations for use of the Disputed Domain Names cannot overcome this evidence. See Aspen Holdings Inc. v. Rick Natsch, Potrero Media Corporation, WIPO Case No. D2009-0776 (“[W]hile the Respondent claims it did not register the disputed domain name in order to profit from or exploit the Complainant’s mark, compelling facts and circumstances [. . . .] suggest otherwise.”).

Use in Bad Faith

Complainant has established that Respondent used the Disputed Domain Names in bad faith by showing the Disputed Domain Names resolve to a website featuring sponsored links and pop-up advertisements. Villeroy & Boch AG v. Marino Pingerna, WIPO Case No. D2007-1912 (“Respondent’s use of the disputed domain name with the intention to attract internet users for commercial gain is established by the sponsored links and pop-up advertisements on its website.”). Complainant attached as Exhibit 5 a printout demonstrating that the Disputed Domain Names resolve to websites with sponsored links connecting Internet users to third-party websites, some of which provide energy-related services that compete with Complainant. Respondent fails to rebut the evidence Complainant offers regarding Respondent’s use of the Disputed Domain Names. Indeed, Respondent concedes that the Disputed Domain Names are “parked” with GoDaddy.com, Inc. As such, the Panel finds that the Disputed Domain Names are being used in bad faith.

For all of the foregoing reasons, the Panel finds that Complainant has proven that the Disputed Domain Names have been registered and are being used in bad faith by Respondent. Therefore, the Panel finds that Complainant has proven the third element 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 Names <mypseg.com> and <mypseg.net> be transferred to the Complainant.

Michael A. Albert
Sole Panelist
Dated: December 13, 2011

 

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