WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Public Service Enterprise Group, Inc. and its affiliates and subsidiaries v. Douglas Kirk
Case No. D2013-1378
1. The Parties
Complainant is Public Service Enterprise Group, Inc. and its affiliates and subsidiaries of Newark, New Jersey, United States of America, represented by Lowenstein Sandler PC, United States of America.
Respondent is Douglas Kirk of East Northport, New York, United States of America, self-represented.
2. The Domain Names and Registrar
The disputed domain names <lipseg.com>, <lipseg.info>, <psegli.co>, <psegli.info>, <psegli.net> and <psegli.org> (the “Domain Names”) are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 2, 2013. On August 5, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name <psegli.net >. On August 6, 2013, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. Upon Complainant’s request, the proceedings were formally suspended on August 9, 2013. These proceedings were further suspended on September 6, 2013, pursuant to Complainant’s request. On September 12, 2013, Complainant requested to re-institute the current proceedings and filed an amended Complaint requesting to add 5 additional disputed domain names to these proceedings. On September 13, 2013, the Center acknowledged receipt of Complainant’s email communication.
On September 16, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names <lipseg.com>, <lipseg.info>, <psegli.co>, <psegli.info> and <psegli.org>. On the same day, the Registrar 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 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 Respondent of the Complaint, and the proceedings commenced on September 18, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was October 8, 2013. Respondent did not file a Response by the specified due date. Accordingly, the Center notified Respondent’s default on October 10, 2013.
On October 10, 2013, Respondent submitted a Response. On October 11, 2013, the Center acknowledged receipt of this late submission, and informed Respondent that the Panel upon appointment would decide in its sole discretion whether to consider its late submission in deciding the case, and whether to order further procedural steps, if any.
A Supplemental Filing was received from Complainant on October 11, 2013, of which the Center acknowledged receipt on October 14, 2013. A Supplemental Filing was then submitted by Respondent on October 18, 2013, for which the Center acknowledged receipt on October 22, 2013. These Supplemental Filings were submitted by the Parties both in this case and in WIPO Case No. D2013-1379, which is a dispute between the same parties concerning the domain name <psegli.com>, as explained below.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on October 21, 2013. 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.
The Rules provide for the submission of the Complaint by Complainant and the Response by Respondent. In this case, Respondent filed a late Response while claiming he was confused because he thought his Response submitted in another case ( WIPO Case No. D2013-1379) covered “the entire set of complaints.” The Panel determines that it will accept the late filed Response without making any assessment on Respondent’s excuse for the delay in submitting it.
Further, no express provision is made in the Rules for Supplemental Filings by either party, except in response to a deficiency notification or if requested by the Center or the Administrative Panel. Paragraphs 10 and 12 of the Rules in effect grant the Panel sole discretion to determine the admissibility of supplemental filings received from either party. In this case, considering that both Parties have submitted Supplemental Filings, and in an effort to give full consideration to the Parties’ respective views, the Panel decides that it will admit and consider these filings.
4. Factual Background
Complainant is a public service electric & gas company, a company organized under the laws of New Jersey. Complainant is one of the largest combined electric and gas companies in the USA, with over USD 10 billion in revenue for PSEG-branded services.
Complainant is the owner the trademark “PSEG”, as well as a long list of marks containing the PSEG term, all registered in the USA, in some cases since the year 1972, and predating the registration of the Domain Names.
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.
On December 15, 2011, it was publicly announced that PSEG Long Island, a subsidiary of Complainant, was awarded a 10 year contract to manage the Long Island Power Authority’s (LIPA) electric transmission and distribution system. The contract included targets to improve customer satisfaction and provide safe and reliable service for 1.1 million LIPA customers.
Respondent Douglas Kirk has identified himself as a director of the business, Total Graphics, Inc., which is located in the center of Long Island, New York. The registration details for the Domain Names provide an address for Douglas Kirk that is in East Northport, New York, which is also located on Long Island.
Respondent registered the Domain Names on January 17 and 18, 2012. During the relevant period prior to filing the Complaint, the Domain Names were linked to a webpage linked to the domain name <psegli.com>, which links to a parking page that includes commercial listings routing to third parties.
Respondent also registered the domain name <psegli.com> on January 17, 2013. Complainant in this case has filed a separate UDRP complaint against Respondent concerning that domain name ( WIPO Case No. D2013-1379), challenging that it was registered and used in bad faith. That case is currently pending.
5. Parties’ Contentions
Identical or Confusingly Similar
Complainant contends that its PSEG mark is a well-known mark with considerable goodwill for electric and gas public utilities services. Indeed, as a result of this strength, worldwide use, and high consumer recognition, Complainant contends the PSEG mark is famous. Complainant states that it vigorously polices its rights in the PSEG mark.
Complainant further contends that the Domain Names are confusingly similar to Complainant's PSEG mark, with the only difference being that each of the Domain Names adds the term "Ll," either at the beginning or end of the Domain Names. Upon information and belief, Complainant asserts that Respondent included the term "LI" as an abbreviation for Long Island. This belief is based on the fact that in 2011, PSEG Long Island was selected by the Long Island Power Authority to manage its electric transmission and distribution system.
Complainant argues that it has been established in numerous decisions made under the Policy that if a domain name incorporates a distinctive mark, such as Complainant's, in its entirety, it is confusingly similar to that mark despite the addition of a geographic term. Complainant refers to prior cases where this issue was decided in Complainant's favor in Public Service Electric & Gas Company and its affiliates and subsidiaries v. Samingram, WIPO Case No. D2011-1803 ("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") and Public Service Enterprise Group, Inc. and its affiliates and subsidiaries v. Vito Insinga, WIPO Case No. D2013-1380 (the disputed domain name <pseglongisland.com> was held to be confusingly similar to a trademark in which complainant has rights).
Complainant contends that, in the instant case, the fact that the Domain Names include Complainant's registered trademark PSEG in its entirety and the term "LI" does not preclude a finding of confusing similarity. Internet users are likely to believe that the Domain Names are related to, associated with, or authorized by Complainant. Complainant urges that it is precisely because of this association with Complainant's PSEG family of marks that Respondent registered the Domain Names.
Rights or Legitimate Interests
Complainant contends that Respondent cannot demonstrate any legitimate interest in the Domain Names. Respondent registered the Domain Names well after Complainant had established rights in the PSEG family of marks. Further, Respondent is not commonly known by the Domain Names and has never conducted a legitimate offline business under the Domain Names. Respondent has been granted no license or other rights to use Complainant's marks as part of any domain name or for any other purpose. Complainant is in no way associated or affiliated with Respondent.
Complainant alleges that Respondent currently uses the Domain Names to re-direct to a landing page featuring pay-per-click links to third party sites. Upon information and belief, Complainant states that either Respondent or another entity receives payment for every user that is directed through the pay-per-click links. The links also interfere with Complainant's business in that the links direct users seeking Complainant's services to other websites not affiliated with Complainant, and which may be competitors of Complainant.
Complainant maintains that Respondent is not making a legitimate noncommercial or fair use of the Domain Names and the only possible use of the Domain Names is to misleadingly attract customers to Respondent's website for its own commercial gain. The use of a domain name that is identical or confusingly similar to a trademark as a parking page that generates click through revenue typically does not give rise to rights or legitimate interests. It is well-established that operating a link farm parking page using a distinctive trademark in a domain name and providing connection to goods and/or services competitive with the trademark owner, does not establish rights or legitimate interests. Complainant asserts that this is exactly the case here.
Complainant argues that Respondent registered the Domain Names solely for deceptive purposes. This inference is drawn, in part, from the following facts. First, as noted above, Respondent has no known connection or affiliation with Complainant, which has not consented to Respondent's use of the Domain Names. Second, Respondent is not commonly known as the Domain Names. Third, Respondent is not using the Domain Names for the bona fide offering of goods or services, nor making a legitimate noncommercial or fair use of the Domain Names. Where, as here, Complainant's marks and name are so widely recognized and have been used in connection with electric and gas public utilities services for so many years, there can be no legitimate use by Respondent. Because Respondent has no rights or legitimate interests in the Domain Names, Complainant states that it satisfies the requirements under paragraph 4(a)(ii) of the Policy.
Registered and Used in Bad Faith
Complainant contends that bad faith should be found when it appears more likely than not from the evidence offered by Complainant that Respondent has registered the Domain Names in a deliberate attempt to attract Internet users to its website for commercial gain due to confusion with Complainant's mark. According to Complainant, this is exactly the case here, where it is no coincidence that Respondent registered the Domain Names approximately one month following Complainant’s press announcement regarding its new contract with the Long Island Power Authority.
Complainant argues 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. Even if, as Respondent alleges, Respondent is not receiving payment through the links on Respondent's website, numerous decisions made under the Policy have found bad faith use of a disputed domain name even where the disputed domain name is passively held by a respondent. Where a disputed domain name does not resolve to a website at all, bad faith can still be found based on the particular circumstances of the case. For example, bad faith has been found where a complainant's trademark had a strong reputation, the respondent had provided no evidence of actual or contemplated good faith use, the respondent had taken active steps to conceal its true identity, and it was not possible to conceive of any plausible actual or contemplated active use of the domain name by the respondent that would not be illegitimate. Here, Complainant states that Respondent appears aware of Complainant's trademark rights and the Long Island Power Authority contract, as well as the attendant concern PSEG would have upon discovering that the Domain Names would interfere with Complainant's legitimate business interests. Complainant urges that its trademark has a strong reputation and it is not possible to conceive of any plausible actual or contemplated active use of the Domain Names by Respondent that would not be illegitimate. Complainant is a Fortune 500 company that has been providing electric or transportation services for more than a century.
Moreover, Complainant asserts that the registration of a domain name incorporating a widely recognized mark is itself evidence of bad faith registration. Respondent's Domain Names incorporate Complainant's mark in its entirety and simply adds the letters "LI," reinforcing the implication that Respondent's website is associated with the PSEG I Long Island Power Authority contract. According to Complainant, Respondent registered and is using the Domain Names with the intent of diverting Internet traffic of end users seeking to find the website of Complainant, to capitalize on consumers' assumption that the Domain Names are Complainant's, and/or to suggest to potential customers that Complainant is somehow related to or affiliated with Respondent. In any case, Respondent's registration and use is disruptive of and damaging to Complainant's business and such registration and use was undertaken in bad faith.
Complainant states this is also a classic case of initial-interest confusion. Initial-interest confusion arises when a junior user adopts a senior user's mark to gain attention in a crowded field in the hope of attracting a “first look." Such confusion is actionable under U.S. trademark law and is further evidence of bad faith.
Complainant emphasizes that in a prior UDRP case, Complainant established that the respondent there used the disputed domain name in bad faith by showing it resolved to a website featuring sponsored links and pop-up advertisements. Public Service Electric & Gas Company and its affiliates and subsidiaries v. Samlngram, WIPO Case No. D2011-1803.
Finally, Complainant states that it is impossible to conceive of a good faith reason for Respondent's registration and use of the Domain Names. Respondent has no authorization from Complainant to use Complainant's famous trademarks. When a mark is well known, in the absence of any license or permission from the complainant to use any of its trademarks or to apply for or use any domain name incorporating those trademarks, it is clear that no actual or contemplated bona fide or legitimate use of the domain name can be claimed by a respondent. Respondent has had years of constructive notice of Complainant's registered trademarks under U.S. law 15 U.S.C. § 1072. All of these facts indicate that Respondent has registered and is using the Domain Names in bad faith within the meaning of the Policy.
Respondent’s Response in this case was filed late; however, the Panel has decided to accept Respondent’s Response. Respondent noted that it had amended the response submitted in WIPO Case No. D2013-1379 so that it could serve as Respondent’s Response for this case as well.
Identical or Confusingly Similar
Respondent acknowledges that Complainant is an energy company located outside of New York, but states that the letters “psegli” accurately represent Respondent and what it does in a completely unrelated field of business on Long Island, which is a distinct geographic location. Respondent argues that Complainant makes an inference of bad faith on Respondent’s part, rather than making any attempt to verify Respondent’s claim of geographic and industry separation. Whether Complainant is coming to Long Island or not, Respondent urges that it has been located there for over seven years.
Respondent contends that Complainant has co-opted the letters “pseg” for any application, even though Complainant is an energy utility. Respondent, on the other hand, states that it has a “Print, Sign, Embroidery and Graphic” business on Long Island, in that order of emphasis. Respondent urges that this is why it wanted to operate under <psegli.com> and secured the Domain Names.
Respondent states that it understands Complainant is entering the Long Island area on a temporary contract. Hence, Respondent asks, can Complainant come in on a temporary basis and knock out a bona-fide business here? Respondent also asks whether Complainant can attach the PSEG letters of its name to every town, village and county in the USA and claim ownership. By comparison, if the matter in dispute were “psegnj” and Respondent was in any way associated with the energy business, the matter would be different.
Rights or Legitimate Interests
Respondent states that its business, Total Graphics, has owned the Domain Names and has been developing content for a new marketing channel for a year and a half without challenge. Total Graphics has been around for seven years and specializes in print, signs, embroidery and graphics, in that order of emphasis. Respondent has no interest in the electrical or gas business, nor would it benefit Respondent to confuse consumers.
Respondent claims it has a logo and marketing content to show that it was using the Domain Names in connection with a bona fide offering of goods or services. Respondent also states it is active in local charities and with the area chamber of commerce. Respondent acknowledges that it has not been commonly known by the Domain Names, but states the brand has been in development as a new marketing channel, with several thousand dollars invested in developing this channel.
Respondent re-emphasizes that no connection can be made between Respondent and Complainant and what they each do. Respondent asserts the businesses are so different that no consumer would be confused.
Registered and Used in Bad Faith
Respondent states it had no interest in selling or renting the Domain Names and owned them for over year and a half prior to this case. While Respondent’s domain names are in development, Respondent claims all relate to its printing business on Long Island and the charitable groups in which Respondent is active in its community. Respondent states that it is not a competitor with Complainant and has no interest in the electrical or gas business, and no interest in disrupting Complainant’s business.
Respondent argues that Complainant makes multiple assertions and draws inferences that Respondent intends to deceive users and is currently receiving compensation for pay-per-click usage of the Domain Names. However, Respondent avers that there are no pay-per-click schemes involving the Domain Names. Further, on the website linked to the Domain Names, there are no hyperlinks to businesses in the gas or electric business that might benefit from the association with Respondent’s intended “Print, Sign, Embroidery or Graphic” business. There is no factual basis for any of Complainant’s claims. Respondent argues that although Complainant is a large company, the PSEG brand is not a widely recognized on Long Island.
Finally, Respondent indicates that it is open to any reasonable offers, but that it has already invested several thousand dollars in the development of this marketing channel and it will additionally cost more to develop another one.
C. Complainant’s Supplemental Filing
Complainant states that it sent a letter on July 29, 2013, to inform Respondent that Complainant had become aware Respondent had registered the domain name <psegli.com> in early January 2013, several weeks after Complainant had publicly announced it would be managing the electric transmission and distribution system for the Long Island Power Authority, in an area where Respondent maintains his residence and place of business. The letter also indicated that Respondent did not have permission to use Complainant’s PSEG trademark in a domain name, that such registration was unauthorized, and that any use of a domain name containing the PSEG mark would create confusion among the public. Complainant advised that the matter could be handled amicably by transfer of the <psegli.com> domain name and any domain names owned by Respondent that include the PSEG trademark.
During August and September 2013, Complainant’s counsel had conversations with Respondent and became aware that Respondent had not only registered the domain name <psegli.com>, but also the Domain Names that are subject to this Complaint including <lipseg.info>, <psegli.co>, <psegli.info>, <lipseg.com> and <psegli.org>. Complainant states that Respondent had registered a total of seven unauthorized domain names containing the PSEG trademark combined with the commonly used abbreviation for Long Island, "LI".
According to Complainant’s counsel, Respondent admitted he was aware of Complainant's PSEG trademark, which is protected by numerous federal trademark registrations and is a mark well known in the New Jersey I New York metropolitan region as well as throughout much of the USA. Further, Complainant’s counsel states that Respondent, as a resident of Long Island, “had heard of” Complainant’s election to manage the transmission of electricity for the Long Island Power Authority. Respondent also allegedly indicated that he had noticed Complainant had not yet selected a domain name for use in connection with a website for the Long Island venture and thought he would register the domain name variations for the PSEG mark and the geographic Long Island (or LI) designation himself, and see what would happen. According to Complainant, Respondent made reference to his registrations of these Domain Names in a joking manner, apparently aware of the PSEG name and mark.
Complainant refers to Respondent’s contention (in the Response) that he uses the designation PSEG in connection with his print shop business to signify "Print, Sign, Embroidery and Graphic". Complainant argues there is no merit to this argument. Respondent’s printing business is called Total Graphics. All proper due diligence was performed in this matter and Respondent holds no state trade name, business registrations or trademarks for PSEG, PSEGLI, or “PRINT, SIGN, EMBROIDERY and GRAPHIC”, or any similar designation. Moreover, Respondent does not claim any in his Response. Complainant states that it was only well into Complainant counsel's communications with Respondent that Respondent suddenly claimed to be using the PSEG designation and claimed a right to PSEGLI because his business is on Long Island.
Complainant also refers to the claim that Respondent included in the Response evidence of a "logo" and "marketing content." Complainant contends that what Respondent actually attached was a fabricated paper sign bearing PSEGLI taped to the inside of his Long Island-based Total Graphics print shop. This can be viewed as nothing more than an obvious effort to fabricate some type of business use for the PSEGLI term. During his conversations with counsel, when Respondent was still purporting to cooperate to transfer the Domain Names to Complainant, Respondent inquired if Complainant would be amenable to using his business for printing services. When asked for marketing collateral, trade name filings and other such materials related to his business and his alleged use of PSEGLI, Respondent delayed and ultimately provided no evidence other than a digital image copy of what turned out to be same paper sign taped inside his Total Graphics store front. Complainant urges that Respondent must not be allowed to subvert these proceedings and have his bad faith actions rewarded by acceptance of an untruthful and late filed Response.
Complainant argues that this is a case where Respondent believes it can leverage its unauthorized Domain Name registrations for compensation from Complainant. Complainant states that Respondent at first represented to Complainant's counsel that he did not wish to engage in a trademark dispute and he would transfer the Domain Names so long as he was released from legal liability. Complainant was willing to provide a release and went to the time and expense of drafting a document for Respondent’s consideration. Complainant sought suspension of the proceedings in this case, as well as in WIPO Case No. D2013-1378, on the good faith belief that Respondent would transfer the Domain Names. In multiple conversations and emails with Complainant's counsel, Respondent went through the motions of preparing to transfer the various domain names, but he did not complete the transfers. Respondent then delayed in responding to Complainant's efforts to resolve the transfer issues, ultimately escalating his demands for monetary compensation until Complainant could no longer expect that a settlement would be achieved. Finally, Complainant asserts that Respondent had actual notice of Complainant’s PSEG mark. Respondent’s actions surpass the threshold requirement of a prima facie showing of bad faith registration.
D. Respondent’s Supplemental Filing
In his supplemental filing, Respondent seeks to distinguish the facts of this case from another UDRP case in which Complainant here was also the complainant there, Public Service Enterprise Group, Inc. and its affiliates and subsidiaries v. Vito Insinga, WIPO Case No. D2013-1380. In that case, the disputed domain name, <pseglongisland.com>, was transferred to Complainant. Respondent urges that the respondent in that case was not a bona fide business, whereas Respondent here is “exactly what we say we are; a print, sign embroidery and graphic business.” Further, the respondent in Public Service Enterprise Group, Inc. and its affiliates and subsidiaries v. Vito Insinga, WIPO Case No. D2013-1380 was shown to be accepting compensation via pay-per-click links, whereas Respondent here states that he has never done so. Similar to the other case, Respondent argues that Complainant should have moved to protect its rights a lot sooner than it did. The delay of a year and a half was time that Respondent used to invest in the PSEGLI marketing channel.
Respondent asserts that while Complainant alleges an attempt was made to amicably settle the matter, Respondent’s experience was to the contrary. Respondent states that as to phone calls which Complainant alleges show bad faith, Respondent would welcome evidence of the content of these calls, and claims it has multiple voice mails that serve to contradict Complainant’s claims.
Respondent states that he does not hold any trademarks because his business is small and family owned and operated. With respect to Complainant’s assertion that the creation of Respondent’s PSEGLI sign was a last ditch effort to fabricate use for the PSEGLI term, Respondent responds, “we create signs! That’s what we do!” Respondent takes exception to the highly subjective outlook of Complainant on this point.
Respondent argues it is pure supposition for Complainant to allege Respondent had no intent to use the PSEGLI term. Respondent replies that he was developing its new marketing channel long before Complainant showed any interest in the Domain Names. Respondent further states that it is in the midst of a merger with a small embroidery business, which is moving into Respondent’s shop and that this deal has been “a year in the works.” Respondent asks what does his location on Long Island have to do with whether he knew about Complainant’s trademark rights? Respondent asserts that he had no knowledge of Complainant nor was he acting in bad faith. Respondent states that he did not make any request for compensation, as alleged by Complainant. However, Respondent was offered compensation by Complainant, which was unsolicited. This was in exchange for the legal release that Complainant was preparing, which never materialized.
Finally, Respondent states that in consideration of all disputes regarding the Domain Names in this case and the disputed domain name in WIPO Case No. D2013-1379, Respondent would be willing to surrender all of the Domain Names in this case in exchange for a quit claim from further harassment regarding the domain name, <psegli.com>, in WIPO Case No. D2013-1379.
6. Discussion and Findings
The required elements of the Policy are well understood and have been discussed in many prior UDRP decisions. In order to succeed in its claim, Complainant must demonstrate that the three elements enumerated in paragraph 4(a) have been satisfied. These elements are that:
(i) the Domain Names registered by Respondent are identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights to or legitimate interests in respect of the Domain Names; and
(iii) Respondent has registered and is using the Domain Names in bad faith.
A. Identical or Confusingly Similar
Complainant has demonstrated rights, both registered and unregistered, in its PSEG family of trademarks, as evidenced by the trademark registrations submitted with the Complaint and evidence of Complainant’s long-standing use of the PSEG mark in commerce.
The threshold test for confusing similarity under the Policy involves a comparison between the trademark and the domain name itself to determine the likelihood of user confusion. 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 the common or descriptive term typically being regarded as insufficient to prevent the likelihood confusion. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2. Moreover, the addition of merely generic, descriptive, or geographical wording to a trademark in a domain name would normally be insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP. UDRP panels have usually found the incorporated trademark to constitute the dominant component of the domain name. See WIPO Overview 2.0, paragraph 1.9.
In this case, Respondent in its filings made no direct submission regarding whether the Domain Names are identical or confusingly similar to Complainant’s PSEG trademark. The Panel, however, finds that the Domain Names are confusingly similar to the Complainant’s PSEG marks. The term PSEG (the abbreviated name for Complainant) is the dominant element of the Domain Names. Without the generic Top Level Domain (gTLD) suffix, the Domain Names consist of the combination of the distinctive PSEG portion of Complainant’s trademarks, with the added letters “LI” placed either before or after the PSEG mark. The “LI” in this context can be taken to refer to Long Island. As Complainant explains, in 2011, Complainant’s subsidiary was selected as the manager of electricity transmission and distribution for the Long Island Power Authority. Under these circumstances, the Panel finds that the addition of the letters “LI” to Complainant’s trademark in the Domain Name increases the confusion that Internet users would experience. See e.g., ACCOR, Société Anonyme à Directoire et Conseil de surveillance v. Tigertail Partners, WIPO Case No. D2002-0625 (“[c]onfusion is only heightened when the generic word added by Respondent is descriptive of the Complainant’s goods or services marketed in relation to the trademark…”).
The Panel determines that the Domain Names, <lipseg.com>, <lipseg.info>, <psegli.co>, <psegli.info>, <psegli.net> and <psegli.org>, are confusingly similar to a trademark in which Complainant has rights. Accordingly, the Panel therefore concludes that the first element of paragraph 4(a) of the Policy is established.
B. Rights or Legitimate Interests
A complainant is normally required to make out a prima facie case that a respondent lacks rights or legitimate interests in a disputed domain name. Once such prima facie case is made, respondent faces the burden of demonstrating rights or legitimate interests. If respondent fails to do so, complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.
In this case, the Panel finds that Complainant has made a prima facie showing that Respondent has no rights or legitimate interests in the Domain Names, based on the following points.
First, Respondent is not authorized to use Complainant’s PSEG trademarks in the Domain Names, is not associated or affiliated with Complainant, and is not making a legitimate noncommercial or fair use of the Domain Names.
Second, Complainant has shown that Respondent is not commonly known by the PSEG or PSEGLI names. The evidence submitted shows that Respondent operates a business called Total Graphics, Inc. Complainant performed due diligence to confirm that Respondent holds no trade name, business registrations or trademarks for PSEG, PSEGLI or “PRINT, SIGN, EMBROIDERY and GRAPHIC.” Moreover, Respondent has not claimed to hold any such designations.
Third, Complainant has alleged that Respondent registered the Domain Names for deceptive purposes and is not using them in connection with a bona fide offering of goods or services. Complainant has provided evidence that the Domain Names have been linked to a landing page featuring pay-per-click links to third party sites. Complainant claims that either Respondent or another entity receives payment for every user that is directed through the pay-per-click links. Complainant has asserted that the use of a domain name that is identical or confusingly similar to a trademark as a parking page that generates click through revenue typically does not give rise to rights or legitimate interests.
Fourth, Complainant has demonstrated prior longstanding rights in its PSEG family of trademarks. When the Domain Names were registered by Respondent in January 2012, Complainant’s marks were well established. Complainant has also submitted evidence, although not without challenge from Respondent, that Respondent admitted to being aware of Complainant and its agreement to manage the transmission of electricity for the Long Island Power Authority. Since Complainant’s rights in its trademarks long predate Respondent’s registration of the Domain Names, and given the evidence that the Domain Names were being used in connection with a parking page, the burden is on Respondent to establish rights or legitimate interests in the Domain Names. With all of these points taken together, the Panel finds that Complainant has made a prima facie showing that Respondent has no rights or legitimate interests in the Domain Names.
The Panel finds that, in response to Complainant’s prima facie case, Respondent has not met the burden of establishing any rights or legitimate interests the Domain Names. Paragraph 4(c) of the Policy provides a list of circumstances, any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a disputed domain name, including that a respondent has been commonly known by a domain name, or used it (or made demonstrable preparations to use it) in connection with a bona fide offering of goods or services. Although Respondent has claimed that there are no pay-per-click schemes involving the Domain Names, the evidence indicates that the Domain Names were linked to a parking page during the relevant period prior to this case. Moreover, the other domain name that was registered by Respondent and subject to challenge in WIPO Case No. D2013-1379 (<psegli.com>) also directs to the same parking webpage. Respondent, by its own admission, has had over a year and a half to use the Domain Names in connection with its business, but has not done so.
Respondent has acknowledged that it has not been commonly known by the Domain Names. Instead, Respondent has asserted that its business name is Total Graphics, through which Respondent has been operating on Long Island for seven years while specializing in “Print, Signs, Embroidery and Graphics”, in that order of emphasis. Respondent has stated that this is why it has wanted to operate under the Domain Names. Respondent claims that this brand has been in development for a year and a half as a new marketing channel, with several thousand dollars invested. Respondent also claimed that it has a logo and marketing content to show that it was using the Domain Names in connection with a bona fide offering of goods or services. In particular, Respondent submitted a picture of the front of its shop, which shows a very large sign on the top front of the building, which reads, “Total Graphics Print Shop” with smaller lettering below stating “Graphic Design & Marketing Studio.” However, in the corner of the front glass window of the shop, there appears to be attached on the inside of the window a small flyer with a logo and the letters “PSEG” on one line, with the letters “LI” placed just below.
The Panel finds that this evidence is insufficient to support Respondent’s claim that it has any right or legitimate interest in the Domain Names. Although Respondent claims that it had invested several thousand dollars in this new marketing channel, it provided no evidence to support this assertion. All that has been submitted is a picture of a small flyer attached to the front glass window of Respondent’s Total Graphics Print Shop. Further, in its Response, Respondent indicated that it has been in the “Print, Signs, Embroidery and Graphic” business for seven years, in this order of emphasis. However, in its Supplemental Filing, it contradicts this statement by asserting that for the past year it has been in the midst of a merger with a small embroidery business. This is not the only irregularity observed by the Panel in Respondent’s statements. Respondent made reference to using the PSEGLI term not only in relation to its printing business, but also in connection with charitable groups in which Respondent is active in its community. No evidence of this is submitted. Further, the Panel finds that Respondent has not provided any plausible reason for its registration of the Domain Names with their variations on the PSEG mark, all of which re-direct to a parking webpage, along with the <psegli.com> domain name that is the subject of the challenge in WIPO Case No. D2013-1379. The Panel observes that for several of these Domain Names, the letters “LI” have been positioned before the PSEG mark. The variations suggest possible typosquatting in relation to Complainant’s PSEG trademark. In light of all of this information and the submission from Complainant’s legal counsel that Respondent, in his communications, had admitted he was aware of Complainant and had heard of Complainant’s agreement with the Long Island Power Authority and that he registered the Domain Name variations for the PSEG mark with this in mind, the Panel finds that it is more likely than not Respondent registered all of the Domain Names for reasons other than to create a new marketing channel for his business.
Accordingly, the Panel concludes that the second element of paragraph 4(a) of the Policy is established.
C. Registered and Used in Bad Faith
The Panel concludes that Complainant has established bad faith registration and use of the Domain Names by Respondent under paragraph 4(b) of the Policy, based on the reasons discussed above. Complainant has alleged that it is no coincidence that Respondent registered the Domain Names approximately one month following Complainant’s press announcement regarding its new contract with the Long Island Power Authority. Respondent registered the six Domain Names that are the subject of this challenge, as well as the domain name <psegli.com> in WIPO Case No. D2013-1379, at the same time, all of which are a variation on the PSEG mark. Complainant’s legal counsel has indicated that Respondent admitted he was aware of Complainant and Complainant’s new arrangement with the Long Island Power Authority and registered the Domain Names with this in mind. The Panel has observed factual irregularities in Respondent’s statements and lack of any substantial evidence in support of his claims, although he had the opportunity to submit evidence. The Panel is persuaded by evidence that all of the Domain Names registered by Respondent (seven in total, including the Domain Names) are confusingly similar to Complainant’s PSEG family of trademarks and were used to link to a parking webpage, and that Respondent’s business is called Total Graphics, not “Print, Signs, Embroidery and Graphics.” All of this supports a finding that it is more likely than not that Respondent registered the Domain Names in an attempt to attract Internet users to a website for commercial gain due to confusion with Complainant's mark. For all of these reasons, the Panel finds bad faith registration and use.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names, <lipseg.com>, <lipseg.info>, <psegli.co>, <psegli.info>, <psegli.net> and <psegli.org> be transferred to Complainant.
Christopher S. Gibson
Date: November 6, 2013