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 Definitive Sports Management LLC of Phoenix, Arizona, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, 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 GoD, LLC a request for registrar verification in connection with the disputed domain name. On March 26, 2012, GoD, 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 28, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was April 17, 2012. Respondent did not submit any response. Accordingly the Center notified Respondent’s default 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
Complainant is an energy company based in the State of New Jersey, United States. In its last fiscal year it had revenues of more than USD 11 billion from its United States 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 .
Little is known about Respondent other than the contact details furnished by the Registrar, which indicate an address in Phoenix, Arizona. Respondent registered the disputed domain name in September 2008. According to a screen shot annexed to the Complaint, on February 27, 2012 the disputed domain name resolved to a registrar-generated page of hyperlinks and advertisements for the registrar’s services; the Panel found this to be the case on April 29, 2012.
Complainant, through counsel, sent a cease-and-desist letter to Respondent on December 29, 2011, but never received a reply. 5. Parties’ Contentions A. Complainant
Complainant contends as follows:
Complainant has rights in its PSEG marks by reason of registration in the USPTO. Adding an everyday word such as “solutions” 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. In the circumstances of this case, use of the disputed domain name since registration for a parking page is not legitimate or bona fide for Policy purposes. “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 of the fame of the PSEG marks the Panel may presume bad faith; “registration of a domain name incorporating a widely recognized mark is itself evidence of bad faith registration.” Further, Respondent had “years of constructive notice” of Complainant’s marks and actual notice since December 29, 2011. Respondent’s use is commercial, as it profits from pay-per-click revenues generated by the links on the webpage at the disputed domain name. Pay-per-click sites are themselves evidence of bad faith. Respondent’s failure to reply to Complainant’s cease-and-desist letter is also evidence of bad faith. Respondent is seeking a free ride on the renown attaching to Complainant’s marks by misleading Internet users into believing that Respondent is somehow endorsed by or affiliated with Complainant - “a classic case of initial-interest confusion.” B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
In this Policy proceeding Complainant bears the burden of proof, by a preponderance of the evidence, to demonstrate each of the following Policy elements:
(i) the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect to the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
As in any default case under the Policy and unlike civil litigation in the United States, Respondent’s failure to reply to the Complaint does not constitute an admission of any factual matter pleaded in the Complaint or result automatically in a transfer of the disputed domain name. Complainant must prove up each Policy element. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.6. A. Identical or Confusingly Similar; Rights or Legitimate Interests
Complainant has clearly made its case under the first two Policy heads. Complainant holds many USPTO-registered trademarks for PSEG, the dominant feature of the disputed domain name. Confusing similarity is obvious. The record reveals and the Panel could find no basis for finding that Respondent has rights or a legitimate interest in the disputed domain name. B. Registered and Used in Bad Faith
Complainant offers little direct evidence of bad faith – really no more than the parking page to which the disputed domain name resolves. This is not surprising; in a Policy proceeding, without provision for discovery and live testimony, a complainant has little or no opportunity to obtain evidence routinely available in civil litigation but ordinarily within the control of the respondent. For this reason bad faith may be proven inferentially. Net2phone Inc v. Delta Three Inc.,WIPO Case No. D2007-0644; see especially text accompanying footnotes 5-11 for examples of inferential proof. For the Panel to make the necessary inferences Complainant must put forward evidence from which the Panel finds it more likely than not that Respondent registered and used the disputed domain name with knowledge of Complainant’s mark and an intent (“targeting”) to take advantage of the fame of the mark for its own commercial purposes. See, e.g., Kellwood Company v. Onesies Corporation,WIPO Case No. D2008-1172.
The hyperlinks page at the disputed domain name annexed to the Complaint might suffice to establish use in bad faith. Several of the links are energy-related, though none refers to Complainant or any of Complainant’s competitors, and one of the real estate links (a category commonly included in registrar-generated pay-per-click pages) refers to a town in New Jersey, the state in which Complainant is based. The fact that the New Jersey links were absent when the Panel accessed the disputed domain name might similarly support an inference of use in bad faith. The Panel need not decide whether this proof is enough, however, as Complainant’s evidence does not demonstrate that Respondent registered the disputed domain name in bad faith, a matter that in a Policy proceeding must be proven separately from use in bad faith.
Unlike civil litigation in the United States, in a Policy proceeding constructive notice (an American doctrine under which knowledge of a USPTO-registered mark is presumed as a matter of trademark law), standing alone, rarely suffices as a basis for inferring actual knowledge. As stated in the WIPO Overview 2.0, paragraph 3.4, “Panels have mostly declined to introduce the US concept of constructive (deemed) notice per se into the UDRP.” Exceptions to that approach almost always include many other indicia of typical cyber squatting, e.g., Research In Motion Limited v. Privacy Locked LLC/Nat Collicot,WIPO Case No. D2009-0320 (typo squatting); a famous mark, e.g., Twitter, Inc. v. Geigo, Inc,WIPO Case No. D2011-1210 (Twitter), or case-specific facts from which actual knowledge may be inferred, such as prior dealings between the parties or competition between the parties, e.g., Teresa Christie, d/b/a The Mackinac Island Florist v. James Porcaro, d/b/a Weber’s Mackinac Island Florist,WIPO Case No. D2001-0653, or a patently self-serving statement that defies common sense, e.g., Salt River Community Gaming Enterprises (d/b/a Casino Arizona) v. Fort McDowell Casino,WIPO Case No. D2007-0416 (denial of knowledge of principal competitor’s business name).
Complainant duly pleads (several times, in fact) that its PSEG marks are famous. While Complainant furnishes evidence of active and widespread use of these marks, this Panel declines to find them famous in the trademark sense.1 Its initials are hardly the household words or phrases such as “Victoria’s Secret”, “Nike”, or “Pfizer”, to name three brands at issue in cases cited by Complainant, or undeniably trademark-famous initials such as IBM, BBC, or NYSE. A quick Internet search reveals several other entities that use the initials PSEG as commercial identifiers. While a later hyperlinks page, as Complainant alleges, can support an inference of earlier knowledge of the trademark at issue, that conclusion does not automatically follow. Hyperlink pages are not always illegitimate or evidence of bad faith, see WIPO Overview 2.0, paragraph 2.6; Havanna S.A. v. Brendhan Hight, Mdnh Inc.,WIPO Case No. D2010-1652. The cases Complainant cites in support of its contentions all included other persuasive evidence of actual knowledge, such as a respondent located near the complainant or a famous mark.
Evidence that Respondent should have known of Complainant or its PSEG marks in 2008 is absent from the record. Complainant’s business is to some extent regional, centered in the Middle Atlantic state of New Jersey; Respondent is based in Arizona.2 Relying solely upon its allegation of constructive knowledge, Complainant neither alleges nor supplies evidence to indicate particular circumstances from which the Panel could find actual knowledge or targeting in 2008. The parties apparently never did business with each other. There is no evidence to show or suggest, and no allegation, that Respondent was then in the energy field, and thus more likely than not to be aware of Complainant. There is no evidence to show, and no allegation, that Respondent is a domain name aggregator, as to which special rules might apply. See WIPO Overview 2.0, paragraph 3.4, section entitled “Willful Blindness,” and cases there cited. There is no evidence to show, and no allegation, that Respondent makes a regular practice of profiting from others’ trademarks. See Policy, paragraph 4(b)(ii).
In short, there is no evidence from which to infer Respondent’s actual knowledge of Complainant or its seeking to target the PSEG marks at the time of registration. Upon the evidence, the Panel finds it just as likely that Respondent chose a four-letter string of initials with no particular meaning as that it targeted Complainant or its marks. Complainant has not proven Respondent’s bad faith in registration or use of the disputed domain name. 7. Decision
The Policy’s requirements are conjunctive; all must be proven for the Panel to order transfer of the disputed domain name. For the foregoing reasons, the Complaint is denied.
Richard G. Lyon
Sole Panelist
Dated: May 4, 2012
1 Complainant contends that its marks have been “recognized” in other Policy proceedings. Indeed they have been found to satisfy the “standing requirement” (WIPO Overview 2.0, paragraph 1.2) of Policy paragraph 4(a)(i), as found in this case by this Panel, but the case cited by Complainant, Public Service Electric & Gas Company and its affiliates and subsidiaries v. SamIngram,WIPO Case No. D2011-1803, does not include a finding that they are trademark-famous. A noteworthy factual distinction between that case and this one is that the respondent in that case resided in New Jersey.
2 The Panel, who lived in a state adjacent to Complainant’s headquarters for fifteen years and was well aware of Complainant’s name, did not learn of its PSEG marks until his reading of the Complaint.
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