The PNC Financial Services Group, Inc. v. Mengjiang Cai
Claim Number: FA2105001944581
Complainant is The PNC Financial Services Group, Inc. ("Complainant"), represented by Jonathan Uffelman of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, District of Columbia, USA. Respondent is Mengjiang Cai ("Respondent"), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pncstadium.com>, registered with GoDaddy.com, LLC.
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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 11, 2021; the Forum received payment on May 11, 2021.
On May 11, 2021, GoDaddy.com, LLC confirmed by email to the Forum that the <pncstadium.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 May 12, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 1, 2021 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@pncstadium.com. Also on May 12, 2021, the Written Notice of the Complaint, notifying Respondent of the email 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 June 3, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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
Complainant is one of the largest national diversified financial service organizations in the United States, providing retail banking, corporate and institutional banking, and asset management services. Complainant's assets total more than $467 billion, including deposits of $365 billion. Complainant has more than 50,000 employees and provides services to more than 9 million consumers. Complainant and its predecessors in interest have PNC and related marks in connection with this business since at least as early as 1976. Complainant promotes its marks, inter alia, via high-profile sponsorships such as the naming rights to the stadium of the Pittsburgh Pirates Major League Baseball team, PNC Park; the Pirates' home games are broadcast live on television, and more than 35 million spectators have attended Pirates' home games in person since the stadium opened in 2001. Complainant also owns naming rights to the PNC Arena in Raleigh, North Carolina. Complainant owns United States trademark registrations for PNC, PNC ARENA, PNC PARK, and other related marks, all in standard character form and some also in stylized form, and asserts that the PNC marks have become famous as a result of extensive use and promotion.
Respondent registered the disputed domain name <pncstadium.com> in September 2017. Complainant states that when accessed from a mobile browser the domain name resolves to a website consisting of pay-per-click links related to Complainant's business (e.g., "Pnc Account," "Banking Account," and "Stadium Seats"), and when accessed from a computer browser, it resolves to a page hosted by the registrar stating that the domain name has been parked. (When the Panel accessed the website to confirm this description, it appeared as a registrar-generated page containing related pay-per-click links regardless of the device type or viewing mode.) Complainant states further that Respondent is not commonly known by the disputed domain name and has not been authorized to use Complainant's marks.
Complainant contends on the above grounds that the disputed domain name <pncstadium.com> is confusingly similar to its PNC mark and other related marks; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
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 Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to "produce clear evidence to support its subjective allegations").
The disputed domain name <pncstadium.com> incorporates Complainant's registered PNC trademark, adding the generic term "stadium" (likely a reference to one or more of the stadiums in which Complainant has naming rights) and the ".com" top-level domain. These additions do not substantially diminish the similarity between the domain name and Complainant's mark. See, e.g., The PNC Financial Services Group, Inc. v. Hildegard Gruener, FA 1620119 (Forum July 14, 2015) (finding <pnc-bank-online.com> and similar domain names confusingly similar to PNC); The PNC Financial Services Group, Inc. v. hsk, hsk, FA 1603548 (Forum Mar. 30, 2015) (finding <pncibk.com> confusingly similar to PNC); loanDepot.com, LLC v. Roger Quandt, FA 1936861 (Forum Apr. 15, 2021) (finding <loandepotstadium.com> confusingly similar to LOANDEPOT, used for consumer financial services and promoted under partnership with Major League Baseball); Allianz SE v. Registration Private, Domains By Proxy, LLC / Syed Naqi, D2017-1714 (WIPO Oct. 30, 2017) (finding <allianzstadium.com> confusingly similar to ALLIANZ, used for financial and other services and promoted under naming agreements for Allianz Arena and other stadiums); State Farm Mutual Automobile Insurance Co. v. dahlcolor c/o Robert Dahl, FA 1233291 (Forum Dec. 23, 2008) (finding <statefarmstadium.com> confusingly similar to STATE FARM, used for insurance and financial services). The Panel considers the disputed domain name to be confusingly similar to a mark in which Complainant has rights.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's registered mark without authorization, and it is being used for what appear to be registrar-maintained parking pages consisting of pay-per-click links, at least some of which relate to Complainant's business or competitors of Complainant. Such use does not give rise to rights or legitimate interests under the Policy. See, e.g., State Farm Mutual Automobile Insurance Co. v. dahlcolor c/o Robert Dahl, supra (finding lack of rights or interests in similar circumstances).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and is being used in bad faith. Under paragraph 4(b)(i) of the Policy, bad faith may be shown by evidence that a domain name was acquired "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 [Respondent's] documented out-of-pocket costs directly related to the domain name." Under paragraph 4(b)(iii), bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent registered a domain name that combines Complainant's registered mark with a related generic term, and is using the domain name to display pay-per-click links related to Complainant's business. Respondent having failed to come forward with any alternative explanation for the selection and use of the domain name, the Panel infers that Respondent intentionally targeted Complainant or its mark, and more specifically that Respondent intended to attract users for commercial gain by creating a likelihood of confusion with Complainant's mark, and possibly to disrupt Complainant's business or to profit by selling the domain name to Complainant or a competitor. See, e.g., State Farm Mutual Automobile Insurance Co. v. JH Kang, FA 1886146 (finding bad faith registration and use in similar circumstances). The Panel finds that the disputed domain name was registered and is being used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <pncstadium.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: June 4, 2021
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