The PNC Financial Services Group Inc. et al v. Paksys Consulting Inc.
Claim Number: FA0201000103523
The Complainant is The PNC Financial Services Group, Inc. et. al., Pittsburgh, PA (Complainant) represented by Mark S. Sommers, of Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P.. The Respondent is Paksys Consulting, Inc., Woodbridge, NJ (Respondent).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pncinsurance.com>, registered with Stargate Communications, Inc.
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.
Robert T. Pfeuffer, Senior District Judge.
Complainant submitted a Complaint to the National Arbitration Forum (the Forum) electronically on January 2, 2002; the Forum received a hard copy of the Complaint on January 3, 2002.
On January 3, 2002, Stargate Communications, Inc. confirmed by e-mail to the Forum that the domain name <pncinsurance.com> is registered with Stargate Communications, Inc. and that the Respondent is the current registrant of the name. Stargate Communications, Inc. has verified that Respondent is bound by the Stargate Communications, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the Policy).
On January 3, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the Commencement Notification), setting a deadline of January 23, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to email@example.com by e-mail.
Respondent submitted an e-mail to the Forum on January 14, 2002, which was not in compliance with UDRP Rule 5 or the Forum=s Supplemental Rule 5.
Complainant submitted a timely Additional Submission on January 18, 2002, pursuant to the Forum’s Supplemental Rule 7.
On February 5, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed ROBERT T. PFEUFFER as Panelist.
The Complainant requests that the domain name be transferred from the Respondent to the Complainant.
Complainant is a Pennsylvania corporation doing business in Pittsburgh, Pennsylvania where it asserts it and predecessors-in-interest have done business for nearly 150 years. It and its other financial holdings have used the PNC name and mark in identifying its businesses, including PNC BANK, PNC Insurance Services, Inc., and PNC Insurance Corp. The dispute arose when Respondent registered the domain name <pncinsurance.com>. Complainant alleges violation of ICANN Policy para. 4(a)(ii) no rights or legitimate interests and Policy para. 4(a)(iii) bad faith by Respondent’s actions, among others.
On January 14, 2002 Respondent attempted to submit a Response that did not conform to the procedural requirements set out in UDRP Rule 5 of the Forum’s Supplemental Rule 5. The Panel finds the Respondent is in default and will not consider the Response of January 14, 2002.
C. Additional Submissions
On January 18, 2002, Complainant filed an additional submission in a timely manner, complying with The Forum’s supplemental Rule #7, which is fully considered.
Respondent filed an intent-to-use trademark application with the U.S. Patent and Trademark Office after it was informed of Complainant’s objection to Respondent’s use of the disputed domain name. Ample authority exists to deny Respondent’s assertion that its trademark application proves it has any rights or legitimate interests under Policy para. 4(a)(ii). Respondent’s trademark application was rejected by the USPTO because it was found to be confusingly similar to Complainant’s marks. Respondent asserts that it is known as and does business as Pakistan Network Consulting for Insurance. Its failure to offer proof that such an entity exists further demonstrates that Respondent has no actual rights to the disputed domain name.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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.
Identical and/or Confusingly Similar
In its original Complaint and its Supplemental Response to Respondent’s attempted submission, Complainant has furnished numerous items of evidence demonstrating its use of the mark PNC. See attachments to Complainant’s Reply and its attachments to its original complaint. These include their web sites at <pnc.com>, and <pncbank.com> set out in exhibit 4 of its original complaint, along with exhibit 5 (PNCINSURANCE) found at <pncinsuranceonline.com>. It should be noted that the United States Patent and Trademark Office refused to register the mark on the basis that it was confusingly similar to more than twenty of Complainant’s PNC-FORMATIVE APPLICATIONS AND REGISTRATIONS.
Rights or Legitimate Interests
Respondent claims to be known as Pakistan Network Consulting for Insurance, however, its failure to provide proof of the existence of such an entity is evidence that it does not actually have rights or interests in the disputed domain name. In addition, Respondent’s filing of an intent-to-use trademark application with the U.S. Patent and Trademark Office was done after Complainant had informed Respondent of the infringement caused by the disputed domain name. Because Respondent had been put on notice of Complainant’s assertion, a trademark application under these circumstances, will not suffice to provide rights or legitimate interests under Policy para. 4(a)(ii).
Registration and Use in Bad Faith
Complainant asserts that Respondent has previously registered domain names that infringed upon Complainant’s trademarks and attempted to sell them to Complainant. The Panel so finds and considers this as evidence of bad faith under Policy para. 4(b)(i). It is further found that Respondent’s history of registering infringing domain names suggests a bad faith pattern of behavior calculated to prevent Complainant from registering domain names that reflects its marks. It is further found that Respondent’s unauthorized use of Complainant’s trademarks to redirect users to its own commercial web site provides further evidence of bad faith under Policy para. 4(b)(iv). This Panel further finds that Complainant’s marks are so unique and well known in the business world that there could be no use of them by Respondent that would constitute a good faith use. Looking to the totality of the circumstances, Respondent was clearly acting in bad faith in registering the disputed domain name.
The facts presented to the Panel in this cause reflect clearly that:
1. Respondent has not been using and had not prepared to use the domain name to offer bonafide goods or services;
2. Respondent has not been commonly known as the domain name;
3. The Respondent has not made fair use of Complainant’s PNC and PNC INSURANCE marks;
4. The domain name <pncinsurance.com> is confusingly similar to Complainant’s PNC and PNC INSURANCE marks;
5. Respondent has no legitimate interest in the domain name; and
6. Respondent registered and used the domain name in bad faith pursuant to section 4(b) of the UDRP.
The Panel therefore finds that the domain name <pncinsurance.com>should be transferred immediately to PNC FINANCIAL SERVICES GROUP, INC.
ROBERT T. PFEUFFER, Panelist
Dated: February 12, 2002
2002 National Arbitration Forum.
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