Public Service Enterprise Group Incorporated v. Domain Administrator / Fundacion Privacy Services LTD
Claim Number: FA2103001935499
Complainant is Public Service Enterprise Group Incorporated (“Complainant”), represented by Vanessa A. Ignacio of Lowenstein Sandler LLP, New Jersey, USA. Respondent is Domain Administrator / Fundacion Privacy Services LTD (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <myenergypseg.com>, registered with Media Elite Holdings Limited.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 4, 2021; the Forum received payment on March 5, 2021.
On March 7, 2021, Media Elite Holdings Limited confirmed by e-mail to the Forum that the <myenergypseg.com> domain name is registered with Media Elite Holdings Limited and that Respondent is the current registrant of the name. Media Elite Holdings Limited has verified that Respondent is bound by the Media Elite Holdings Limited 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, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 29, 2021 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@myenergypseg.com. Also on March 9, 2021, 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 2, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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 is a publicly traded diversified energy company, engaged in the transmission and distribution of electricity and natural gas in New Jersey and other states. Complainant has rights in the PSEG trademark through Complainant’s registration of the trademark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,626,3221, registered December 4, 1990). Respondent’s <myenergypseg.com> is confusingly similar to Complainant’s PSEG trademark because it incorporates the entirety of the PSEG trademark, adding only the descriptive terms “my” and “energy.”
Respondent lacks rights or legitimate interests in the <myenergypseg.com> domain name. Respondent is not commonly known as PSEG nor has Complainant granted any license or other rights to Respondent to use the PSEG trademark as part of any domain name or for any other purpose. Further, Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use, as Respondent fails to make active use of the disputed domain name and instead redirects Internet users to different commercial websites.
Respondent registered and uses the <myenergypseg.com> domain name in bad faith. Respondent registered a confusingly similar domain name to divert Internet users who seek Complainant’s website. Additionally, Respondent had actual knowledge of Complainant’s business prior to registering the disputed domain name because Respondent copied Complainant’s subdomain in its entirety. Finally, Respondent registered the disputed domain name using a privacy service.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the following U.S. trademark registrations:
No. 1,626,321 PSEG (word), registered December 4, 1990 for services in class 39;
No. 2,798,318 PSEG GLOBAL (fig), registered December 23, 2003 for services in classes 35, 37, 39, 40 and 42;
No. 2,838,938 PSEG Fossil LLC (fig), registered May 4, 2004 for services in class 40;
No. 2,897,598 PSEG Power LLC (fig), registered October 26, 2004 for services in classes 36 and 40;
No. 2,769,665 PSEG Energy Resources & Trade LLC (fig), registered September 30, 2003 for services in class 36;
No. 2,877,794 PSEG We make things work for you (fig), registered August 24, 2004 for services in classes 35, 36, 37, 39, 40 and 42;
No. 2,948,459 PSE&G We make things work for you (fig), registered May 10, 2005 for services in classes 35, 36, 37, 39 and 42;
No. 2,769,666 PSE&G (fig), registered September 30, 2003 for services in classes 35, 36, 37, 39 and 42;
No. 3,123,964 PSEG Nuclear LLC (fig), registered August 1, 2006 for services in class 40;
No. 2,815,671 PSEG Energy Holdings (fig), registered February 17, 2004 for services in classes 35, 36, 37, 39, 40 and 42;
No. 2,870,349 PSEG (fig), registered August 3, 2004 for services in classes 35, 36, 37, 39, 40 and 42;
No. 4,615,119 PSEG LONG ISLAND (fig), registered September 30, 2014 for services in classes 35 and 37;
No. 4,615,120 PSEG LONG ISLAND We make things work for you (fig), registered September 30, 2014 for services in classes 35 and 37; and
No. 5,459,738 PSEG ENERGY SOLUTIONS (word), registered May 1, 2018 for services in class 35.
The disputed domain name <myenergypseg.com> was registered on January 15, 2021.
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 Complainant asserts rights in the PSEG trademark through Complainant’s registration of the trademark with the USPTO (e.g. Reg. No. 1,626,321, registered December 4, 1990). Registration of a trademark with the USPTO is sufficient to demonstrate rights in the trademark per Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Therefore, the Panel finds that Complainant has demonstrated rights in the PSEG trademark per Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <myenergypseg.com> is confusingly similar to Complainant’s PSEG trademark because it incorporates the entirety of the trademark, adding only the descriptive terms “my” and “energy”, along with the “.com” gTLD. Adding generic terms and a gTLD to a trademark fails to sufficiently distinguish a disputed domain name from a trademark per Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy); see also BBY Solutions, Inc. v Best Buy Online / M/S Best Buy Online, FA 1620654 (Forum July 2, 2015) (“The addition of the generic word ‘my’… does not prevent a finding that the disputed domain name and mark are identical or confusingly similar.”). Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark per Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
The Complainant contends Respondent lacks rights or legitimate interests in the <myenergypseg.com> domain name as Respondent is not commonly known as PSEG, nor has Complainant granted any license or other rights to Respondent to use the PSEG trademark as part of any domain name or for any other purpose. When a response is lacking, relevant WHOIS information, or use of a privacy service in lieu of registrant information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum Jan. 1, 2015) (“The Panel notes that the WHOIS information merely lists a privacy service as registrant. In light of Respondent’s failure to provide any evidence to the contrary, the Panel finds there is no basis to find Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).”); see also Tenza Trading Ltd. v. WhoisProtectService.net / PROTECTSERVICE, LTD., FA1506001624077 (Forum July 31, 2015) (“The WHOIS information lists ‘WhoisProtectService.net’ as the registrant of record for the disputed domain names. Accordingly, in the absence of a Response, there is no evidence to indicate that Respondent might be known by any of the domain names.”). Additionally, lack of authorization to use a complainant’s trademark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain name lists the registrant as “Fundacion Privacy Services LTD,” and Complainant argues there is no other evidence to suggest that Respondent was authorized to use the PSEG trademark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant further argues that Respondent fails to use the <myenergypseg.com> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent fails to make active use of the disputed domain name and instead redirects Internet users to different unrelated commercial websites. Failing to make active use of a disputed domain name in combination with redirecting Internet users seeking a complainant’s website may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy). As noted above, the Complainant argues that Respondent fails to make active use of the disputed domain name, but divert Internet users who seek Complainant’s PSEG trademark and access to Complainant’s MyEnergy portal to other commercial websites through the use of a domain name that is confusingly similar to Complainant’s Mark. Therefore, the Panel finds that Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
The Complainant contends that Respondent registered and uses the <myenergypseg.com> domain name in bad faith as Respondent registered a confusingly similar domain name to divert Internet users who seek Complainant’s website. Registering a confusingly similar domain name and diverting Internet users who seek a complainant can demonstrate bad faith per Policy ¶¶ 4(b)(iii) and 4(b)(iv). See PopSockets LLC v. san mao, FA 1740903 (Forum Aug. 27, 2017) (finding disruption of a complainant’s business which was not directly commercial competitive behavior was nonetheless sufficient to establish bad faith registration and use per Policy ¶ 4(b)(iii)); see also AOL LLC v. iTech Ent, LLC, FA 726227 (Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)). As noted above, the Complainant argues that Respondent uses the disputed domain name to divert Internet users who seek Complainant’s PSEG trademark and access to Complainant’s MyEnergy portal to other commercial websites through the use of a domain name that is confusingly similar to Complainant’s trademark. Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶¶ 4(b)(iii) and 4(b)(iv).
Next, Complainant contends that Respondent registered the <myenergypseg.com> domain name in bad faith as Respondent had actual knowledge of Complainant’s rights to the PSEG trademark prior to registration of the disputed domain name because Respondent copied Complainant’s subdomain in its entirety. A respondent’s domain name can demonstrate actual knowledge of a complainant’s rights in a trademark at registration and show bad faith. See InfoSpace, Inc. v. Greiner, FA 227653 (Forum Mar. 8, 2004) (“Respondent’s domain name is a simple and popular variation of a trademark commonly used by typosquatters – the addition of the “www” prefix to a known trademark, in this case the DOGPILE mark. Such a domain name evidences actual knowledge of the underlying mark prior to the registration of the domain name, and as Respondent failed to submit any evidence to counter this inferrence [sic], Respondent’s actions evidence bad faith registration of the disputed domain name.”). Here, Complainant argues that it is indisputable that Respondent knew of Complainant’s business because Respondent copied Complainant’s subdomain name in its entirety except for the period between “Myenergy” and “PSEG.com.” Therefore, the Panel finds that Respondent registered the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Finally, Complainant contends Respondent registered and uses the <myenergypseg.com> domain name in bad faith as Respondent registered the disputed domain name using a privacy service. Registering a disputed domain name using a privacy service may contribute to a finding of bad faith per Policy ¶ 4(a)(iii), especially if the disputed domain name is similar to another’s trademark. See Phoenix Niesley-Lindgren Watt v. Contact Privacy Inc., Customer 0150049249, FA 1800231 (Forum Sept. 6. 2018) (“In a commercial context, using a WHOIS privacy service raises the rebuttable presumption of bad faith registration and use of the disputed domain name. An honest merchant in the marketplace does not generally try to conceal the merchant’s identity. Good faith requires honesty in fact. Respondent did nothing to rebut this presumption of bad faith. Therefore, the Panel will find bad faith registration and use for this reason.”). Here, Complainant highlights that Respondent used a privacy services to mask its identity when registering the disputed domain name. Therefore, the Panel finds this contributes to any other findings that Respondent registered the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <myenergypseg.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: April 9, 2021
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