The Complainant is Public Service Electric & Gas Company of Newark, New Jersey, United States of America, represented by Lowenstein Sandler PC, United States.
The Respondent is Telos Chamir of Wanchai, Honkong, China. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with Key-Systems GmbH dba . 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 Key-Systems GmbH dba (the “Registrar”) a request for registrar verification in connection with the Disputed Domain Name. On March 27, 2012, the Registrar transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing the contact details. The Registrar indicated that the language of the registration agreement, as used by the registrant for the Disputed Domain Name was German. On March 28, 2012 the Center notified the Parties that the Complaint was filed in English but that according to the information received from the Registrar the language of the Registration Agreement is German. Accordingly, the Complainant submitted a request for English to be the language of the proceedings on March 29, 2012. The Respondent did not submit any reply. The Center thus informed the Parties that it accepts the Complaint as filed in English, that it would accept a Response filed in either language, and that the language of the proceeding would be decided by the Panel once appointed.
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 the Respondent of the Complaint, and the proceedings commenced on April 4, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was April 24, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 25, 2012.
The Center appointed Alexander Duisberg as the sole panelist in this matter on May 3, 2012. 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
Respondent, Telos Chamir, registered the Disputed Domain Name, , on July 1, 2011. According to the information provided by the Registrar, the contact address for the Respondent is a location in Hong Kong, China
Complainant, Public Service Electric & Gas Company, a New Jersey corporation, challenges the registration of the Disputed Domain Name by Respondent. The undisputed submissions brought forward and evidenced by Complainant that it recognized over USD 11 billion in revenue in 2010 and over USD 8.5 billion in 2011 for PSEG-branded services in the United States.
According to the undisputed allegations and exhibits provided by Complainant, Complainant currently owns approximately 14 United States federal trademark registrations and applications for the PSEG trademark and related trademarks. These trademarks include PSEG (“PSEG Trademark”), as 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 (“PSEG Family of Trademarks”). Complainant’s PSEG Trademark has been registered in the United States since at least December 1990 (Reg. No. 73649419). In 2009 and 2010, Complainant spent approximately USD 12 million and USD 4 million, respectively, on the marketing and promotion of the PSEG brand.
Complainant registered all of the trademarks referred to above before the Disputed Domain Name was registered in 2011.
According to Complainant’s undisputed allegations, Complainant currently owns numerous top-level and country code domain name registrations incorporating the PSEG Trademark, including, but not limited to, ; ; ; ; ; ; ; and . In 2010 and 2011, there have been approximately 6 to 8 million visitors to the “www.” website per year. 5. Parties’ Contentions A. Complainant
Complainant contends that the Disputed Domain Name is identical and confusingly similar to its PSEG Trademark, that Respondent lacks rights or legitimate interests in the Disputed Domain Name and that the Disputed Domain Name has been registered and is used in bad faith:
(a) Complainant is the owner of the PSEG Trademark and the PSEG Family of Trademarks registered at the United States Patent and Trademark Office. Moreover, Complainant contends that its PSEG Trademark is a famous and well-known brand and that the Disputed Domain Name is identical and confusingly similar to the PSEG Trademark as it incorporates Complainant’s distinctive trademark in its entirety. The Complainant asserts that the addition of “.info” in its capacity as a “.gTDL” does not remove the confusing similarity between the Disputed Domain Name and the Complainant’s PSEG Trademark and that this has been established by previous UDRP decisions that the “.gTDL” has no distinguishing capacity in the context of the domain name.
(b) Complainant argues that Respondent cannot demonstrate any legitimate interests in the Disputed Domain Name. Complainant contends that Respondent is not commonly known by the Disputed Domain Name and has not used the Disputed Domain Name in connection with a legitimate business. Complainant avers that Respondent is not making legitimate noncommercial or fair use of the Disputed Domain Name as it is using the Disputed Domain Name for the purpose of misleading and attracting customers to Respondent’s website for its own commercial gain (by using it as parking page for generating click through revenues).
(c) Finally, Complainant contends that that the Disputed Domain Name was registered and is 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. Complainant refers to previous UDRP decisions qualifying the use of a “cash parking” program (as used by Respondent) as an act in bad faith. Additionally, Complainant maintains that the registration of a domain name incorporating a widely recognized trademark is itself evidence of bad faith registration.
The Complainant requests a decision that the Disputed Domain Name be transferred to Complainant. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Procedural Matters
a) As a preliminary matter, the Panel notes that the Complaint has been filed in English while the Disputed Domain Name has been registered through a Registration Agreement written in German. Paragraph 11 of the Rules provides that the language of the proceeding is the language of the registration agreement, unless both parties agree otherwise, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding. However the Complainant submitted arguments along with the Complaint as to why the proceedings should proceed in English.
In certain situations including, for example, where a respondent can clearly understand the language of the complaint (or having been given a fair chance to object has not done so) and where the complainant would be disadvantaged by being forced to translate, it may be appropriate for the language of the proceeding to remain consistent with the language of the complaint, even where it is different from the language of the relevant Registration Agreement (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”, paragraph 4.3).
In this matter, the Center has furnished Respondent with an opportunity to object to Complainant’s request that English be the Language of the Proceeding, of which it was notified by the Center in both English and German. Respondent has not replied. The Center has thus accepted the Complaint in English and has invited Respondent to file its Response either in English or in German and all the communications from the Center to the parties have been submitted in English and German. However, Respondent has not filed a Response.
Complainant has indicated that translation would incur substantial costs and delay to the proceeding, that the parking page (see Exhibit 5) displayed at the Disputed Domain Name is written in English text, and further notes that the geographic location where Respondent maintains its public WhoIs listed address is in Hong Kong, where English is one of the two official languages (in addition to Cantonese). Complainant made reference to previous UDRP decisions involving Respondent (e.g. La Quinta Worldwide, L.L.C. v. Telos Chamir,WIPO Case No. D2012-0006 and InfoSpace, Inc. v. Telos Chamir,WIPO Case No. D2011-1256) where panels have decided that proceedings shall proceed in English.
It appears to the Panel that, as in these previous cases, Respondent must have intended to target an English-speaking audience, that Respondent is presumably familiar with the English language, and that Respondent would not likely be prejudiced by the issuance of a decision in English. These facts, in conjunction with the arguments put forth by Complainant, and in the interest of expediency, lead the Panel to conclude that the proper Language of the Proceeding in this case is English.
b) Respondent did not file any formal Response to the Complaint. As stated in the WIPO Overview 2.0 (paragraph 4.6), Respondent’s default does not automatically result in a decision in favor of the Complainant. In fact Complainant must establish each of the three elements required by paragraph 4(a) of the Policy. While a UDRP panel may draw negative inferences from Respondent’s default, paragraph 4 of the Policy requires Complainant to support its assertions with actual evidence in order to succeed in an UDRP proceeding (see The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064 and Consitex S.A., Lanificio Ermenegildo Zegna & Figli S.p.A., and Ermenegildo Zegna Corporation v. Varentinuo inc. reg by ,WIPO Case No. D2008-0186).
Pursuant to the requirements of paragraph 4(a) of the Policy, transfer of the Disputed Domain Name to Complainant may only be granted if Complainant demonstrates that each of the following three elements has been satisfied:
(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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. B. Identical or Confusingly Similar
The textual part of the Disputed Domain Name in this matter is “pseg”, which is identical to the Complainant’s registered PSEG Trademark and similar to the respective trademarks which form part of the PSEG Family of Trademarks. Complainant has demonstrated that it has registered numerous trademarks with the United States Patent and Trademark Office, and has used said trademarks for a period of time substantially preceding Respondent’s registration of the Disputed Domain Name in 2011.
According to established case law and previous decisions under the UDRP a TLD suffix, in this instance the gTLD suffix “.info”, is generally held to be irrelevant for the purposes of determining identity or confusing similarity under the Policy, see Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429; SANOFI-AVENTIS v. Britny Spears,WIPO Case No. D2006-0795 and the WIPO Overview 2.0 (paragraph 1.2). The Panel concurs with the underlying reasoning and confirms that the applicable top-level suffix in the domain name must usually be disregarded under the confusing similarity test as it is a technical requirement of registration.
As in this matter the Disputed Domain Name consists solely of Complainant’s registered PSEG Trademark, the Panel thus finds that the Disputed Domain Name is identical to Complainant’s PSEG Trademark and that Complainant has established the requirement of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
The Panel finds that Respondent has neither rights nor legitimate interests in respect of the Disputed Domain Name .
Complainant has asserted in its Complaint that Respondent is neither affiliated with nor authorized by Complainant in any way and has no business whatsoever with Complainant.
Furthermore, there is no indication for the assumption that the term “pseg” is a descriptive term, in which Respondent could have a legitimate interest. Respondent has not disputed Complainant’s assertion that it has no rights or legitimate interests in respect of the Disputed Domain Name nor has it provided any other information suggesting that Respondent has any rights or legitimate interests in respect of the Disputed Domain Name.
In particular, Respondent does not appear to use the Disputed Domain Name for any of the purposes, which demonstrates rights and legitimate interests in a domain name under paragraph 4(c) of the Policy. It cannot be established that Respondent uses the Disputed Domain Name in connection with a bona fide offering of goods or services, is commonly known by the domain name or is making a legitimate noncommercial or fair use of the domain name. According to previous UDRP decisions 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 (see e.g. United Consumers Club, Inc. v. Texas International Property Associates,WIPO Case No. D2007-0987) and using another’s well-known trademark to mislead users into accessing one’s website, which in turn provides diverting click-through opportunities to a search engine composed of sponsored links is not a bona fide offering of goods or services (see Early Times Distillers Company v. IP Admin / DNAV ASSOCS,WIPO Case No. D2007-1812).
Particularly in this case, where Respondent has offered no reason (and there appears to be no obvious reason) why Respondent’s commercial use should be considered bona fide or a fair use, the Panel finds that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name (MAACO Enterprises, Inc. v. IP Admin / DNAV ASSOCS,WIPO Case No. D2008-0009). D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out a number of illustrative circumstances which, if found by the Panel, are taken to be evidence of bad faith registration and use of a domain name.
One of them (paragraph 4(b)(iv) of the Policy) is circumstances showing that Respondent, by using the Disputed Domain Name, intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website.
Numerous cases have found bad faith in circumstances where the respondent intentionally diverted Internet users. See, for instance, F. Hoffmann-La Roche AG v. DOMIBOT,WIPO Case No. D2006-0327. Given the circumstances of this present case, there are sufficient reasons for the Panel to assume that Respondent takes commercial advantage if Internet users click on the links displayed on the website which is linked with the Disputed Domain Name because it receives revenue resulting from such pay-per-click or click-through activities of users who follow such links. Therefore, the Panel finds that Respondent is using the Disputed Domain Name to intentionally attempt to attract, for commercial gain, Internet users to the website, by creating a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of its website.
The fact that the webpage contains advertising links, from which Respondent likely benefits through a “Cash Parking” monetization program, supports the inference that the purpose of Respondent’s diversion of traffic from Complainant to himself is for Respondent’s own commercial gain (see in this context Ticketmaster Corporation v. Yong Li,WIPO Case No. D2003-0905; Costco Wholesale Membership, Inc., Costco Wholesale Corporation v. Henry Chan,WIPO Case No. D2004-0218; Costco Wholesale Membership, Inc., Costco Wholesale Corporation v. Yong Li, supra.
No evidence has been given by Respondent regarding the question whether or not the Disputed Domain Name was registered in bad faith.
For these reasons, the Panel finds that the Disputed Domain Name was registered and used in bad faith, in the way described in paragraph 4(b)(iv) of the Policy. 7. Decision
For 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 be transferred to Complainant.
Alexander Duisberg
Sole Panelist
Dated: May 22, 2012
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