Complainant is Public Service Electric & Gas Company of Newark, New Jersey, United States of America, represented by Lowenstein Sandler PC, United States.
Respondent is ryan roettger of Paramus, New Jersey, United States. 2. The Domain Name and Registrar
The disputed domain name (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 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 the 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 30, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was April 19, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 23, 2012.
The Center appointed Douglas M. Isenberg as the sole panelist in this matter on April 27, 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
Complainant states that it is the owner of the trademark PSEG, which it has used since at least as early as 1970 in connection with electric and gas public utilities. Complainant further states that it recognized more than $11 billion in revenue for PSEG-branded services in the United States in 2010, and more than USD 5.8 billion for such services in the first half of 2011. Complainant further states that it spent approximately USD 12 million on marketing and promotion of the PSEG brand in the United States in 2009, and USD 4 million in 2010.
Complainant states, and provides evidence in support thereof, that it owns approximately 14 federal trademark applications and registrations for the PSEG trademark in the United States, including U.S. Reg. No. 1626321 for the mark PSEG (first used in commerce on May 1, 1986; registered on December 4, 1990) for use in connection with “electric and gas public utility services.” These trademarks are referred to collectively hereafter as the “PSEG Trademark.”
Complainant states, and has provided evidence to support, that the Disputed Domain Name has been used in connection with a monetized parking page, which, according to a website printout dated February 28, 2012, included such links as “Best NJ Energy Rates”, “Solar Panels (Pay No $)” and “Pay Your Bills Online Now”. Complainant further states that it sent a demand letter to Respondent regarding the Disputed Domain Name and, as shown in an e-mail from Respondent included by Complainant as an exhibit to the Complaint, Respondent stated, in part: “I removed all information and disabled the website” and “if you would like to purchase the domain name for what I paid for it for the domain fees and webmaster fees[] [y]ou can have it.”
The Disputed Domain Name was created on April 20, 2010. 5. Parties’ Contentions A. Complainant
Complainant contends, in relevant part, as follows:
- The Disputed Domain Name is confusingly similar to the PSEG Trademark because its contains the PSEG Trademark entirety plus the words “my” and “bill”, words that do not reduce – and may increase – the likelihood of confusion.
- Respondent has no rights or legitimate interests in the Disputed Domain Name because Respondent is not commonly known by the Disputed Domain Name, Respondent has not been granted any rights to the PSEG Trademark and is in no way associated or affiliated with Complainant, Respondent is not making a legitimate non-commercial or fair use of the Disputed Domain Name, and “[w]here, as here, Complainant’s marks and name are so widely recognized, and have been used in connection with electric and gas public utilities for so many years, there can be no legitimate use by Respondent.”
- The Disputed Domain Name was registered and is being used in bad faith because numerous decisions have found bad faith where, as here, Respondent has used the Disputed Domain Name in connection with a monetized parking page; Respondent’s subsequent non-use of the Disputed Domain Name constitutes passive holding that arises to bad faith under the landmark decision Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; and “it is impossible to conceive of a good faith reason for Respondent’s registration and use of the Disputed Domain Name.” B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the 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. Policy, paragraph 4(a). A. Identical or Confusingly Similar
Based upon the trademark registrations cited by Complainant, it is apparent that Complainant has rights in and to the PSEG Trademark.
As to whether the Disputed Domain Name is identical or confusingly similar to the PSEG Trademark, the relevant comparison to be made is with the second-level portion of the domain name only (i.e., “mypsegbill”), as it is well-established that the top-level domain name (i.e., “.com”) should be disregarded for this purpose. See WIPO Overview 2.0, paragraph 1.2 (“The applicable top-level suffix in the domain name (e.g., ‘.com’) would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark.”).
The Panel agrees with Complainant that the addition of the words “my” and “bill” to the Disputed Domain Name do nothing to diminish confusing similarity. This is consistent with previous decisions under the Policy, including, notably, Public Service Electric & Gas Company v. SamIngram,WIPO Case No. D2011-1803 (transfer of and ). See also Microsoft Corporation v. DOMAeN.com,WIPO Case No. D2005-0613 (transfer of ).
Accordingly, the Panel finds that Complainant has proven the first element of the Policy. B. Rights or Legitimate Interests
Complainant has argued that, inter alia, Respondent has no rights or legitimate interests in the Disputed Domain Name because Respondent is not commonly known by the Disputed Domain Name, Respondent has not been granted any rights to the PSEG Trademark and is in no way associated or affiliated with Complainant, Respondent is not making a legitimate non-commercial or fair use of the Disputed Domain Name, and “[w]here, as here, Complainant’s marks and name are so widely recognized, and have been used in connection with electric and gas public utilities for so many years, there can be no legitimate use by Respondent.”
Under the Policy, “a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” See WIPO Overview 2.0, paragraph 2.1.
Accordingly, as a result of Complainant’s allegations and without any evidence from Respondent to the contrary, the Panel is satisfied that Complainant has proven the second element of the Policy. C. Registered and Used in Bad Faith
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant has 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 the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).
In this case, Complainant argues that bad faith exists pursuant to paragraphs 4(b)(iii) and 4(b)(iv). However, Complainant does not explain how Respondent is a “competitor” as required under paragraph 4(b)(iii), so the Panel does not make a judgment in this respect.
Repeatedly under the Policy, panels have found that use of a domain name in connection with a monetized parking page, under the circumstances present here, amounts to bad faith. See, e.g., Wal-Mart Stores, Inc. v. Whois Privacy, Inc.,WIPO Case No. D2005-0850. Further, and without passing judgment on the relevance, if any, of Respondent’s decision to cease using the Disputed Domain Name in connection with a monetized parking page following notice from Complainant, this Panel agrees that bad faith also exists under the doctrine of passive holding set forth in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, given the strength of the PSEG Trademark in light of its long history, the marketing and promotion investment that Complainant has expended on it and the revenue Complainant has received in connection with it and further given the lack of evidence of any actual or contemplated good faith use.
Accordingly, the Panel is satisfied that Complainant has proven the third element 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 the Complainant.
Douglas M. Isenberg
Sole Panelist
Dated: May 11, 2012
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