Public Service Enterprise Group Incorporated v. Host Master / Transure Enterprise Ltd
Claim Number: FA2203001987256
Complainant is Public Service Enterprise Group Incorporated (“Complainant”), represented by Matthew Hintz of Lowenstein Sandler LLP, New Jersey, USA. Respondent is Host Master / Transure Enterprise Ltd (“Respondent”), Delaware, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <psegli.org>, (‘the Domain Name’) registered with Above.com Pty Ltd.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 7, 2022; the Forum received payment on March 7, 2022.
On March 7, 2022, Above.com Pty Ltd. confirmed by e-mail to the Forum that the <psegli.org> Domain Name is registered with Above.com Pty Ltd. and that Respondent is the current registrant of the name. Above.com Pty Ltd. has verified that Respondent is bound by the Above.com Pty Ltd. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 9, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 29, 2022 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@psegli.org. Also on March 9, 2022, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On April 1, 2022 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
A. Complainant
The Complainant’s contentions can be summarized as follows:
The Complainant is the owner of the mark PSEG registered in the USA for electricity services with first use recorded as 1986. Complainant is also registrant of numerous domain names incorporating the PSEG mark, including, but not limited to, <pseg.com>, <mypsegbill.com>, <psegliny.com>, <pseg.org>, <pseg-longisland.com>, <psegli.com>, <pseg-li.com>, and <psegny.com>. Complainant’s <pseg.com> domain was registered in 1993.
Complainant has prominently and extensively used, promoted, and advertised the PSEG Mark and associated domain names for decades. By virtue of these efforts, the PSEG Mark and associated domain names have become well-known and recognized by consumers as designating Complainant as the source of its services.
Complainant has millions of customers in Long Island. Long Island is commonly abbreviated as “LI.” Complainant’s website for its Long Island customers, with that “LI” abbreviation, is at <psegliny.com>.
The Domain Name registered in 2018 is confusingly similar to the Complainant’s registered trade mark, adding only ‘li’ the abbreviation for Long Island and a gTLD .org which does not prevent said confusing similarity. It is also identical to the Complainant’s psegli.com domain name save for the gTLD.
The Respondent does not have any rights or legitimate interests in the Domain Name, is not commonly known by it and is not authorized by the Complainant.
The Domain Name which has been used for pay per click links has been offered for sale generally neither of which is a bona fide offering of services or legitimate noncommercial fair use. The Respondent has registered the Domain Name with actual knowledge of the Complainant’s rights in order to sell the Domain Name for a sum in excess of registration costs which is registration and use in bad faith under the Policy.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the mark PSEG registered in the USA for electricity services with first use recorded as 1986. Complainant is also registrant of numerous domain names incorporating the PSEG including, but not limited to, <pseg.com>, <mypsegbill.com>, < psegliny.com>, <pseg.org>, <pseg-longisland.com>, <psegli.com>, <pseg-li.com>, and <psegny.com>. Complainant’s <pseg.com> domain was registered in 1993. Complainant has millions of customers in Long Island. Long Island is commonly abbreviated as “LI.” Complainant’s website for its Long Island customers, with that “LI” abbreviation, is at <psegliny.com>.
The Domain Name registered in 2018 has been used for pay per click links and has been offered for sale generally for a sum in excess of registration costs.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The Domain Name in this Complaint combines the Complainant’s PSEG mark (registered in the USA for electricity services with first use recorded as 1986) the generic abbreviation for ‘li’ meaning Long Island and the gTLD “.org”.
Panels have routinely held that the addition of a generic term to a complainant’s trade mark does not prevent confusing similarity between a domain name and the complainant’s mark. See Abbott Laboratories v. Miles White, FA 1646590 (Forum Dec. 10, 2015) (holding that the addition of generic terms do not adequately distinguish a disputed domain name from complainant’s mark under Policy 4(a)(i).). Accordingly the Panel agrees that the addition of the generic abbreviation ‘li’ to the Complainant's mark does not prevent confusing similarity between the Domain Name and the Complainant's trade mark pursuant to the Policy.
The gTLD “.org” does not serve to distinguish the Domain Name from the Complainant’s mark. See Red Hat Inc. v. Haecke, FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel finds that the Domain Name is confusingly similar to a mark in which the Complainant has rights for the purpose of the Policy.
Rights or Legitimate Interests
The Respondent has not answered this Complaint to explain the background to the registration of the Domain Name and is not authorized by the Complainant. The Respondent does not appear to be commonly known by the Domain Name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).
The Domain Name containing the Complainant’s mark has been offered for sale generally for a sum in excess of registration costs which is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Twentieth Century Fox Film Corporation v. Diego Ossa, FA1501001602016 (Forum Feb. 26, 2015).
The Domain Name has also been used for pay per click links. See Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017) (”Respondent’s use of <edcorlando.xyz> also does not qualify as a bona fide offering… the <edcorlando.xyz> domain name resolves to a site containing pay-per-click hyperlinks and advertisements… Since these kinds of advertisements generate revenue for the holder of a domain name, they cannot be non-commercial; further, they do not qualify as a bona fide offering.”).
As such the Panel finds that the Respondent does not have rights or a legitimate interest in the Domain Name and that the Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
The Respondent has not answered this Complaint and has not explained why it should be entitled to register a domain name including the Complainant’s mark which has a reputation for electricity services and reflecting the Complainant’s domain names containing the generic abbreviation ‘li’ meaning Long Island and a gTLD.
The Domain Name containing the Complainant’s marks has been offered for sale generally for a sum in excess of costs of registration of the Domain Name. See Capital One Financial Corp. v. haimin xu, FA 1819364 (Forum Jan. 8, 2019) (“A general offer to sell a domain name can be evidence the respondent intended to make such an offer at the time it registered the name, supporting a finding of bad faith per Policy ¶ 4(b)(i).”) See Deutsche Lufthansa AG v. Kenechukwu Okoli, FA 1821759 (Forum Jan. 13, 2019) (“The domain name’s website listed the domain name for sale for $9,150. Respondent also contacted Complainant directly to offer the domain name for sale. Doing so suggests bad faith registration and use of the <lufthansamiles.com> domain name pursuant to Policy ¶ 4(b)(i).”).
Use for pay per click links also indicates bad faith being disruptive of the Complainant’s business and diverting customers for commercial gain and can indicate actual knowledge of the Complainant and its business. In the opinion of the panelist the use made of the Domain Name is confusing and disruptive in that visitors to the site might reasonably believe they are connected to or approved by the Complainant. Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating likelihood of confusion with the Complainant's trade mark as to the source, sponsorship, affiliation or endorsement of the web site or services offered on it likely to disrupt the business of the Complainant. See Health Republic Insurance Company v. Above.comLegal, FA 1506001622088, (Forum July 10, 2015) re diversion to pay per click links.
As such, the Panelist believes that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under 4(b)(i), (iii) and (iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <psegli.org> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: April 4, 2022
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page