WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Public Service Electric & Gas Company v. Vanguard Resolutions LLC
Case No. D2012-0618
1. The Parties
Complainant is Public Service Electric & Gas Company of Newark, New Jersey, United States of America, represented by the law firm Lowenstein Sandler PC, United States.
Respondent is Vanguard Resolutions LLC of Reno, Nevada, United States.
2. The Domain Name and Registrar
The disputed domain name <psegrewards.com> is registered with GoDaddy.com, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 23, 2012. On March 26, 2012, the Center transmitted by email to GoDaddy.com, LLC. a request for registrar verification in connection with the disputed domain name. On March 26, 2012, GoDaddy.com, LLC 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 March 29, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was April 18, 2012. The Response was filed with the Center on April 18, 2012.
The Center appointed Richard G. Lyon as the sole panelist in this matter on April 27, 2012. The Panel finds that it was properly constituted and has jurisdiction to decide this administrative proceeding. The Panel has submitted his 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 operative facts are not in dispute.
Complainant is an energy and energy services company based in the State of New Jersey, United States. In its last fiscal year it had United States revenues of more than USD 11 billion from its services. Since about 1970 Complainant has actively marketed its products and services under the brand PSEG, the initials for the first four words in its corporate name. Complainant holds many trademarks and service marks that include PSEG that are registered with the United States Patent & Trademark Office (USPTO), and its principal website is “www.pseg.com”.
Respondent is a consulting and advisory business based in Reno, Nevada, United States. Among its areas of expertise are utility and energy, insurance, construction, transportation, government relations, and association management.
Respondent registered the disputed domain name in October 2010. Since registration an Internet user who enters the disputed domain name into her browser is automatically redirected to Respondent’s principal website at “www.vanguardresolutions.com”, at which Respondent describes and promotes its advisory and consulting services.
Complainant, through counsel, sent a cease-and-desist letter to Respondent on December 31, 2011. Respondent replied on February 15, 2012, declining Complainant’s demand for voluntary transfer of the disputed domain name. The content of this correspondence is discussed further in Sections 5 and 6 below.
5. Parties’ Contentions
Complainant contends as follows:
Complainant has rights in its PSEG marks by reason of registration in the USPTO. Adding an everyday word such as “rewards” to Complainant’s “strong” and “famous” trademark does not obviate confusing similarity with the mark.
Respondent is not known by the initials PSEG and has not been licensed by Complainant to use its marks. The use to which Respondent has put the disputed domain name is not legitimate or bona fide for Policy purposes. By immediately redirecting Internet users to its own website Respondent is getting a “free ride” on the substantial goodwill that attaches to Complainant’s marks, for Respondent’s own commercial purposes. Because of the renown of Complainant’s marks, an unlicensed third party can have no legitimate interest in those marks.
Because of the fame of the PSEG marks the Panel may presume bad faith. Moreover statements in Respondent’s February 2012 letter indicate that Respondent’s use only to redirect is, as the redirection was intended to confuse Internet users, to disrupt Complainant’s business, and to profit from the goodwill attaching to Complainant’s marks. As such it is evidence of bad faith as set out in paragraphs 4(b)(iii) and 4(b)(iv) of the Policy and “a classic case of initial-interest confusion” that is actionable under United States trademark law.
While not contesting Complainant’s trademark rights or the facts set out in Section 4, Respondent challenges Complainant’s desired conclusions under each clause of paragraph 4(a) of the Policy:
Complainant’s marks are not famous in the trademark sense, at least not outside its home state of New Jersey. Each of the cases cited by Complainant under this Policy head involved a truly famous mark and is thus distinguishable. The disputed domain name is not identical to PSEG. Complainant does not own a trademark for “PSEG rewards” and its PSEG trademarks do not give it a monopoly on the PSEG letter combination. Indeed a simple Internet search reveals many other uses of these initials for websites unrelated to Complainant or the energy business.
The registration of the disputed domain name and its use to redirect to Respondent’s website were entirely legitimate: “The disputed domain name was purchased as part of a plan to develop a rewards program for PSEG. Vanguard Resolutions purchased the website in order to protect it from others so that the consulting company could offer the website to the utility company when presenting the rewards program.“ (Response, paragraph III-B). Respondent has never profited from the ownership or use of the disputed domain name. It offered the disputed domain name to Complainant “in association with a business relationship” between the parties. (Ibid.)
As Complainant’s marks are not famous in the trademark sense, the Panel may not presume bad faith. In fact Respondent’s business is entirely legitimate and does not compete with Complainant. No consumer is likely to confuse Respondent’s website with Complainant’s business.
Respondent invokes the equitable doctrine of laches. Complainant did not write to Respondent until more than one year following Respondent’s registration and use of the disputed domain name. Respondent contends further that “There is no reason given by Complainant as to why the disputed domain name should be transferred to them. As the most severe consequence, if the panel finds that the Respondent acted in bad faith, the domain name should be cancelled, not transferred.”
6. Discussion and Findings
It is now reasonably well settled that a delay in bringing a complaint, standing alone, does not provide grounds for a defense in a Policy proceeding. As recently stated by the three-member panel in Mile, Inc. v. Michael Burg, WIPO Case No. D2010-2011, “the Policy offers a limited remedy to avoid future confusion in the marketplace, and it does not contemplate that such a remedy would be unavailable because of delay in instituting a Policy proceeding.” See also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.10: “Panels have recognized that the doctrine or defense of laches as such does not generally apply under the UDRP, and that delay (by reference to the time of the relevant registration of the disputed domain name) in bringing a complaint does not of itself prevent a complainant from filing under the UDRP, or from being able to succeed under the UDRP, where a complainant can establish a case on the merits under the requisite three elements.”
Respondent offers no reason to depart from this line of authority, and no evidence that anyone has come to rely upon the disputed domain name for any reason. Given the immediate redirection, it is difficult to imagine any credible proof of reliance, see The First Baptist Church of Glenarden v. Melvin Jones, WIPO Case No. D2009-0022. And the Panel notes that a fourteen-month delay is relatively short in comparison to what is normally cited in a claim of laches. See, for example, Alimak Hek, Inc. v. Richard Wheat, WIPO Case No. D2011-1344 (ten years); Mile, Inc. v. Michael Burg, supra (fifteen years).
B. Identical or Confusingly Similar
As Respondent has acknowledged Complainant’s demonstrated trademark rights in PSEG, the only question for the Panel under the Policy head is whether the disputed domain name is confusingly similar to that mark. Respondent appears to have substituted “confusing similarity” under United States trademark law for the straightforward comparison called for by paragraph 4(a)(i) of the Policy: “The first element of the UDRP serves essentially as a standing requirement. . . . In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms typically being regarded as insufficient to prevent threshold Internet user confusion. Application of the confusing similarity test under the UDRP would typically involve a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name.” WIPO Overview 2.0, paragraph 1.2 (cross-reference omitted).
Applying this test here, confusing similarity is obvious to this Panel, as the dominant feature of the disputed domain name is Complainant’s PSEG mark. The quotation above from the Response indicates that similarity was intentional. Paragraph 4(a)(i) has been satisfied.
C. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires Complainant to demonstrate that Respondent “[has] no rights or legitimate interests in respect of the domain name.” The Panel emphasizes the latter phrase to point out that the legitimacy of Respondent’s consulting business is not at issue in this proceeding. Rather “The issue for the Panel to determine under this Policy head is whether the Respondent’s use of the Complainant’s mark in the disputed domain name is bona fide or legitimate.” General Motors LLC v. Flashcraft, Inc DBA Cad Company, WIPO Case No. D2011-2117 (emphasis added); see also ED Enterprise AG v. Guava Softs Pvt Ltd, Anshul Goyal, WIPO Case No. D2012-0147.
Complainant has demonstrated and Respondent does not dispute that Respondent has not been authorized to use Complainant’s marks and that Respondent has never been commonly known by the letters PSEG, so Complainant has made out its prima facie case under paragraph 4(a)(ii) of the Policy. Respondent provides no evidence of its entitlement to use Complainant’s mark, and no evidence from which the Panel could find that any of the Policy’s stated safe harbors in paragraph 4(c) has been established. Respondent’s own statement, in its reply to Complainant’s cease-and-desist letter, that “the intent of owning the domain name that includes your trademark is not to infringe on your goodwill or reputation in any manner, but simply to expand our clientele to include PSEG utility,” makes clear that Respondent selected and used the disputed domain name for its trademark value, either to attract Internet users to its own website or to add a bargaining chip in its subsequent business proposal to Complainant. Neither such reason gives Respondent a right or legitimate interest in a domain name the dominant feature of which is Complainant’s mark. Complainant has carried its evidentiary burden under this Policy head.
D. Registered and Used in Bad Faith
Respondent’s use of the disputed domain name solely to redirect Internet users to Respondent’s own website is indicative of textbook bad faith under the Policy. Respondent’s admitted conduct fits within at least two of the four examples of evidence of bad faith in paragraph 4(b) of the Policy. As Complainant argues, it confuses Internet users by implying affiliation with Complainant (paragraph 4(b)(iv)). Re-direction alone causes this harm, regardless of the content of Respondent’s website or the legitimacy of Respondent’s business. And acquiring a domain name that features a prospective customer’s or partner’s mark to increase negotiating leverage comes within paragraph 4(b)(i) of the Policy, as it falls under “circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name.” The “valuable consideration” need not be cash; use of a domain name to foster a business relationship with the mark owner has been held to satisfy that definition. See Freddy Adu v. Frank Fushille, WIPO Case No. D2004-0682; see also Costco Wholesale Corporation and Costco Wholesale Membership Inc. v. Nick Matyas, WIPO Case No. D2010-1798 (respondent sought free lifetime Costco membership in exchange for transfer). Registration for this purpose, which Respondent admits, perforce reveals knowledge of Complainant and its marks, so Complainant has established bad faith in registration as well as use.
Whether to seek transfer of a disputed domain name or to have the domain name cancelled is a matter of Complainant’s choice, Rules, paragraph 3(b)(x); Policy, paragraph 4(i). Complainant’s election to seek transfer requires no supporting reasons. Group Kaitu LLC, Darkside Productions, Inc. v. Sunlane Media LLC, WIPO Case No. D2008-1831; ISL Marketing AG, and The Federation Internationale de Football Association v. J.Y. Chung, Worldcup2002.com, W Co., and Worldcup 2002, WIPO Case No. D2000-0034.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <psegrewards.com>be transferred to Complainant.
Richard G. Lyon
Date: May 11, 2012