WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Public Service Enterprise Group, Inc. and its affiliates and subsidiaries v. Vito Insinga
Case No. D2013-1380
1. The Parties
Complainant is Public Service Enterprise Group, Inc. and its affiliates and subsidiaries of New Jersey, United States of America, represented by Lowenstein Sandler PC, United States of America.
Respondent is Vito Insinga of New York, United States of America.
2. The Domain Name and Registrar
The disputed domain name <pseglongisland.com> is 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, Respondent sent an e-mail communication to the Center regarding the disputed domain name. On August 5, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 6, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name that differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on August 9, 2013 providing the registrant and contact information disclosed by the Registrar, and requesting Complainant to submit an amendment to the Complaint. Also in response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amended Complaint on August 13, 2013.
The Center verified that the Complaint and 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”).
Respondent submitted a pre-commencement email communication to the Center on August 5, 2013, described below. In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on August 16, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was September 5, 2013. Respondent submitted no formal response or further communications to the Center. The Center notified Respondent of the Commencement of the Panel Appointment Process on September 6, 2013.
The Center appointed Jeffrey D. Steinhardt as sole panelist in this matter on September 12, 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.
4. Factual Background
Public Services Enterprise Group, Inc. Corporation owns numerous registrations for marks that include the term “pseg,” including for example, United States Trademark registration No. 2870349 (design plus words), registered August 3, 2004 in International Classes 35, 36, 37, 39, 40 and 42, with a first use in commerce of February 2, 2004.
The disputed domain name was registered May 26, 2013 and presently routes to a parking page that includes commercial listings routing to third parties, including links to other businesses in the energy sector.1
5. Parties’ Contentions
Complainant avers that it is a large energy supplier and utility ranking within the top 276 companies in the United States with 2012 market capitalization of approximately 17 billion USD, and that its PSEG trademark is well known. Complainant also avers that its affiliate PSEG Long Island LLC was appointed by the Long Island Power Authority in 2011 to manage transmission and distribution of electricity.
In allegations under the Policy, Complainant contends that (1) the disputed domain name is similar to Complainant’s PSEG trademarks, which are well known; (2) Respondent has no rights or legitimate interests in the disputed domain name; and (3) the disputed domain name was registered and is being used in bad faith.
Complainant avers that its attorney contacted Respondent requesting transfer of the disputed domain name; in response, Respondent allegedly offered to sell it to Complainant.2
Complainant seeks transfer.
Respondent did not submit a formal Response to Complainant’s contentions. On August 5, 2013, however, Respondent emailed the Center alleging that the disputed domain name “was purchased to form a[n] educational web site for parents & students. There was no intention to infringe on there mark or miss direct people.”
Respondent’s August 5 email continued:
“I am the owner of over 65 domain names and belong to Godaddy's domain club. When I purchase domains they automatically go into a cash parking spot which is part of the service Godaddy offers to members like myself. When I was informed that this domain name was in a place holder page I immediately had it removed. Upon responding to [Complainant’s lawyer], informing her that the holding page has been remove she then said great, now transfer the name to them. I was a bit shocked in her response to just give her the name. I said I would gladly sell it to you as I had pay for it and wasn't infringing on your customer name or mark intentionally.
They had considerable amount of time to buy this domain name in it's most common form, .com, but didn't. I also feel there are unjustly targeting me as there is a similar domain name available sitting out on the world wide web, “www.psegli.com” which they are not targeting. If your from Long Island or the surrounding boroughs or tri-state region of New York as I am, everyone know LI stand for Long Island.”
6. Discussion and Findings
The Panel must render its Decision on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Rules, paragraph 15(a). Complainant must establish each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Complainant must establish these elements even if Respondent does not submit a formal Response. See, e.g., The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064. In the absence of a response, the Panel may also accept as true the reasonable factual allegations in the Complaint. E.g., ThyssenKrupp USA, Inc. v. Richard Giardini, WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).
A. Identical or Confusingly Similar
The Panel agrees with Complainant that the disputed domain name is confusingly similar to a trademark in which Complainant has rights.
The Complaint is brought on behalf of Public Service Enterprise Group, Inc. and an undisclosed list of “its affiliates and subsidiaries,” yet the United States PSEG family of marks are registered to an entity named “Public Service Enterprise Group, Inc. Corporation.” The Complaint fails to disclose this entity’s exact legal relationship to the Complainant group. However, in light of the widespread use of the trademarks in question by various members of the corporate family and other indicia of trademark interests (such as the public listing of Public Service Enterprise Group, Inc. on the New York Stock Exchange), the Panel finds that Complainant has sufficient trademark interests in the PSEG family of marks for purposes of this proceeding.
UDRP panels generally disregard the gTLD suffix in determining whether a disputed domain name is identical or similar to a complainant’s marks. See e.g., HUK-COBURG haftpflicht-Unterstützungs-Kasse kraftfahrender Beamter Deutschlands A.G. v. DOMIBOT (HUK-COBURG-COM-DOM), WIPO Case No. D2006-0439; VAT Holding AG v. Vat.com, WIPO Case No. D2000-0607; Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc., WIPO Case No. D2006-1315.
The Panel determines that the predominant characteristic of the PSEG (design plus words) trademark, and the other marks in Complainant’s PSEG family of marks, is the term “pseg” itself (the abbreviated name for Complainant, minus “Inc.”). Without the gTLD suffix, the disputed domain name consists of the combination of the distinctive PSEG portion of Complainant’s trademarks, with the added geographical term “longisland.”
The Panel concludes that the addition of the descriptive term “longisland” does not negate the confusion created by Respondent’s complete inclusion of the PSEG trademark in the disputed domain name. See e.g., Sanofi-aventis, Sanofi-Aventis Deutschland GmbH v. Andrey Mitrofanov, WIPO Case No. D2007-1772; Giata Gesellschaft für die Entwicklung und Vermarktung interaktiver Tourismusanwendungen mbH v. Keyword Marketing, Inc., WIPO Case No. D2006-1137; Hoffmann-La Roche Inc. v. Aneko Bohner, WIPO Case No. D2006-0629.
In fact, as the Complaint 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 term “longisland” to Complainant’s trademark in the disputed domain name simply increases the confusion that Internet users would experience. Cf. 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 therefore concludes that the first element of paragraph 4(a) of the Policy is established.
B. Rights or Legitimate Interests
The Panel also concludes that Respondent has no rights or legitimate interests in the disputed domain name.
The Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a disputed domain name. The list includes: (1) using the domain name in connection with a bona fide offering of goods or services; (2) being commonly known by the domain name; or (3) making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers. Policy, paragraphs 4(c)(i)-(iii).
Complainant must establish a prima facie case that Respondent lacks rights or legitimate interests. See e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455 (citing De Agostini S.p.A. v. Marco Cialone, WIPO Case No. DTV2002-0005). The absence of rights or legitimate interests is established if a prima facie case is established and Respondent does not rebut that prima facie case.
Complainant avers that Respondent is not commonly known by the disputed domain name, and that Respondent’s use of the name is not authorized by Complainant. In the absence of a response, the Panel accepts as true these undisputed factual averments by Complainant.
The Panel also agrees with Complainant that Respondent is not making a legitimate non-commercial or fair use of the disputed domain name. As shown in exhibits to the Complaint, Respondent’s website parking page displays links to third-party websites. The diversion of traffic to third parties and their products demonstrates that Respondent is using the disputed domain name for commercial purposes. See, e.g., The Bear Stearns Companies Inc. v. Darryl Pope, WIPO Case No. D2007-0593 (“[t]he Panel is free to infer that Respondent is likely receiving some pecuniary benefit …in consideration of directing traffic to that site” (citing COMSAT Corporation v. Ronald Isaacs, WIPO Case No. D2004-1082)). See also Fat Face Holdings Ltd v. Belize Domain WHOIS Service Lt, WIPO Case No. D2007-0626; Sanofi-aventis v. Montanya ILtd, WIPO Case No. D2006-1079.
In short, the Panel agrees with Complainant that Respondent is seeking to attract Internet users through Complainant’s mark for Respondent’s own commercial purposes. The Panel therefore finds that the use of the disputed domain name demonstrates Respondent’s lack of a legitimate non-commercial interest in, or fair use of, the disputed domain name. See e.g., Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784. The Panel also finds that the Complainant makes out a prima facie case.
Respondent’s email to the Center stated that he intended to create an educational website using the disputed domain name; however Respondent refrained from submitting a formal Response or any evidence to support his alleged purpose.
Therefore, the Panel finds that Respondent has not rebutted Complainant’s prima facie case or invoked any of the circumstances of paragraph 4(c) of the Policy to support the existence of its “rights or legitimate interests” in the disputed domain name.
Accordingly, the Panel concludes that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
The Panel finds that the third element of paragraph 4(a) of the Policy, bad faith registration and bad faith use, is also established, as elaborated below.
Although both parties confirm that there was discussion about a sale to Complainant of the disputed domain name, the record is devoid of evidence bearing on whether Respondent’s offer was “for valuable consideration in excess of…documented out-of-pocket costs directly related to the domain name.” Therefore the Panel will not consider further the application of Policy paragraph 4(b)(i).
Using a domain name to intentionally attract Internet users, for commercial gain, by creating a likelihood of confusion, may also be evidence of bad faith registration and use. Policy, paragraph 4(b)(iv). See, e.g., L´Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623. UDRP panels may draw inferences about bad faith registration or use in light of the circumstances, including passive holding and the failure to reply to a complaint. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
Respondent’s choice of a domain name confusingly similar to Complainant’s trademark is strong evidence of bad faith. The Panel finds that Respondent, living in the same geographic region where Complainant maintains its highly visible business with millions of customers, was undoubtedly aware of Complainant’s PSEG mark. The Panel infers that Respondent deliberately mimicked the mark in his <pseglongisland.com> domain name to create confusion and attract Internet users to his website for commercial gain. Therefore, the Panel concludes that Respondent registered the disputed domain name in bad faith. See, e.g.,Société Nationale des Chemins de fer Français - SNCF v. Damian Miller / Miller Inc., WIPO Case No. D2009-0891.
The website to which Internet users are routed shows that the disputed domain name is used, among other things, to promote offerings of Complainant’s competitors in the energy field. The Panel concludes that this activity evidences bad faith use. See, e.g., mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141; Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784 (citing Google, Inc. v. wwwgoogle.com and Jimmy Siavesh Behain, WIPO Case No. D2000-1240; Casio Keisanki Kabushiki (Casio Computer Co., Ltd.) v. Jongchan Kim, WIPO Case No. D2003-0400; Downstream Technologies, LLC v. Bartels System GmbH, WIPO Case No. D2003-0088); DaimlerChrysler Corporation and DaimlerChrysler Service North America LLC v. LaPorte Holdings, Inc., WIPO Case No. D2005-0070, (citing Royal Bank of Canada v. Henry Chan, WIPO Case No. D2003-0031).
Respondent has also averred that Respondent previously removed the parking page with sponsored links; however, the Panel can still view today the website containing sponsored links. Since the parking page still displays sponsored link advertising using the disputed domain name, the Panel concludes that Respondent’s brief email submitted on August 5, 2013 is self-serving and not credible. The absence of a formal Response to the Complaint and Respondent’s failure to submit any evidence in support of its claims that Respondent planned to launch an education website using the disputed domain name provide further support for the Panel’s finding of bad faith.
The Panel concludes therefore that, in addition to having registered the disputed domain name in bad faith, Respondent is also using the domain name in bad faith.
For 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 <pseglongisland.com> be transferred to Complainant.
Jeffrey D. Steinhardt
Date: September 25, 2013
1 The Panel has undertaken limited research by visiting the web pages to which the disputed domain name routes. See paragraph 4.5 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview 2.0”). The webpages displayed screens that are consistent with those submitted as exhibits to the Complaint.
2 Although both parties refer to the offer, there is no mention of the price proposed by Respondent.