The PNC Financial Services Group, Inc. and PNC Bank, N.A. v. James Wilkerson d/b/a Iclicks Network
Claim Number: FA0201000104111
The Complainants are The PNC Financial Services Group, Inc., and PNC Bank, N.A., Pittsburgh, PA (“Complainants”) represented by Mark S. Sommers, of Finnegan, Henderson, Farabow, Garrett & Dunner. The Respondent is James Wilkerson d/b/a Iclicks Network, San Jose, CA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pnccs.com>, registered with Go Daddy Software, Inc. (“Go Daddy”).
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.
Jonathan Hudis is the sole Panelist for this matter.
In accordance with the Uniform Domain Name Dispute Policy, adopted by the Internet Corporation for Assigned Names and Numbers (“ICANN”) on August 26, 1999, and approved by ICANN on October 24, 1999 (the “Policy”) and the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), adopted by ICANN on August 26, 1999, and approved by ICANN on October 24, 1999, and the National Arbitration Forum (the “Forum”) Supplemental Rules (“Supp. Rules”), Complainants submitted a Complaint to the Forum electronically on January 25, 2002; the Forum received a hard copy of the Complaint on January 29, 2002.
On January 31, 2002, Go Daddy confirmed by e-mail to the Forum that the domain name <pnccs.com> is registered with Go Daddy and that the Respondent is the current registrant of this domain name. Go Daddy has verified that Respondent is bound by the Go Daddy registration agreement and has thereby agreed to resolve domain name disputes brought by third parties in accordance the “Policy.
On January 31, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 20, 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.
On February 15, 2002, the Forum received a document dated February 14, 2002, entitled “Complaint Response for Domain Name pnccs.com.” The document bears the name of Wes Mayder, CEO, WeDirect, Inc. On February 20, 2002, the Forum received Complainant’s Reply, which the Forum deemed timely and in conformity with the Forum’s Supplemental Rules. Also on February 20, 2002, the Forum received an additional document by e-mail entitled “In Response to Complaints [sic] Reply”. The Forum deemed Respondent’s supplemental submission to be timely and in conformity with the Forum’s Supplemental Rules.
On February 18, 2002, pursuant to Complainants’ request to have the dispute decided by a single-member Panel, the Forum solicited the interest of the undersigned to be the sole Panelist who would decide this matter. On February 20, 2002, after clearing potential conflicts of interest, the undersigned accepted the Forum’s invitation. The Forum has appointed Jonathan Hudis as Panelist. On February 21, 2002, the Forum forwarded electronic and hard copy versions of the case file to the undersigned.
Complainants request that the domain name be transferred from Respondent to Complainants.
According to the Complaint, The PNC Financial Services Group, Inc. (formerly known as PNC Bank Corp.) (“PNC”) is a Pennsylvania corporation located and doing business in Pittsburgh, Pennsylvania. PNC Bank, N.A. (“PNC Bank”) is a Delaware national banking association having its principal place of business also in Pittsburgh, Pennsylvania. PNC is a publicly traded bank holding company; and PNC Bank is the principal bank subsidiary of PNC. PNC was founded in 1983, and claims it is one of the largest national diversified financial service organizations in the United States.
PNC asserts ownership in a family of PNC-formative marks. Collectively, Complainants assert that they offer, both on-line and in the general marketplace, a full range of banking and financial services to individuals and businesses. Complainants’ main web sites are located at the domain names <pncbank.com> and <pnc.com>.
Complainants assert that, having been widely promoted to members of the general consuming public for decades, the PNC mark and trade name symbolize substantial goodwill associated with Complainants. Complainants assert that the PNC mark and trade name are famous.
Complainant previously owned the domain name <pnccs.com>, which they assert stands for “PNC Consumer Service” since August 25, 2000. Complainants purport to have used the <pnccs.com> domain name for a banking customer service web site from the prior registration date until it inadvertently lapsed for non-payment of the renewal fee. Complainants were unable to re-register the <pnccs.com> domain name because, by the time Complainants had learned that their domain name registration had lapsed, Respondent registered it on January 18, 2002.
Complainants assert ownership in a number of registered marks containing the initials “PNC”. Based upon their ownership and common law uses of these marks, Complainants assert ownership in famous family of “PNC…” marks.
According to exhibits annexed to the Complaint, Wesley Mayder is a part owner of Respondent Iclicks Network and is also part owner of Western Capital Mortgage, whom Complainants allege is one of Complainants’ competitors as a licensed mortgage broker in New York State. The named Respondent, Iclicks Network, is an Internet advertising company. Mr. Mayder also is the owner of another Internet advertising company, WeDirect.com. Complainants assert that WeDirect.com was previously involved in an unrelated domain name dispute [Edmunds.com v. Polaski, Case No. D2001-0928 (WIPO Sept. 16, 2001)]. Further, WeDirect.com is alleged to be the owner of “at least one trademark related domain name,” <viagraxenicalpropecia.com>.
Complainants assert that Respondent registered the <pnccs.com> domain name with actual and constructive knowledge of Complainants’ rights in the “PNC…” marks. Complainants further assert that Respondent acted in bad faith by breaching its registration contract with the domain name registrar Go Daddy, because it allegedly “falsely represented that its registration of the domain name <pnccs.com> did not infringe the rights of any third party.” Complainants further assert (without support) that “Respondent makes a business practice of registering domain names that are recently deleted.”
Complainants submitted evidence that, as of January 23, 2002, the <pnccs.com> domain name did not resolve to an active web site. Also on January 23, 2002, Complainant’s counsel sent a cease-and-desist letter to Respondent demanding the transfer of the domain name and offering to reimburse Respondent for its registration expenses.
On January 24, 2002, a representative of Respondent, “Doug Ridley,” and Plaintiff’s counsel had a telephone conversation to discuss this matter. Mr. Ridley, it is alleged, claimed to never have heard of PNC and that his company, Iclicks, has never sold any domain names. Mr. Ridley, on behalf of his company, refused to return the <pnccs.com> domain name to Complainants.
On January 24, 2002, web site content began appearing at the URL http://www.pnccs.com. At least as early as February 14, 2002, more substantial-looking commercial content appeared at the web site resolving to the <pnccs.com> domain name under the banner “Prime National Car Cost Service.” This web site purports to be a price-quoting service for cars and trucks for the 2001 and 2002 model years. Complainants assert that this web site content is merely a sham, recently established under the <pnccs.com> domain name in an effort to persuade the Panel that Respondent has a legitimate interest in the contested domain name.
Finally, because Mr. Mayder responded in the name of WeDirect, Inc. and not in the name of Iclicks Network, Complainants assert that Respondent should be held in default for failing to answer Complainants’ UDRP Complaint.
Respondent’s Answer to the UDRP Complaint, indeed, was submitted by Wes Mayder, CEO of WeDirect, Inc. Mr. Mayder asserts that WeDirect, Inc. is the owner of Iclicks and thus the owner of the <pnccs.com> domain name. Respondent registered the contested domain name through the Go Daddy registrar for an automobile site named “Prime National Car Cost Service.” The nature of the web site is described above.
Respondent asserts that Complainants’ contention that Respondent purchased the contested domain name knowing that it was owned by PNC Bank “is absurd.” Respondent further asserts that PNC Bank offered to purchase the contested domain name for $15,000. After Respondent accepted Complainants’ proposal, says Respondent, communications between the parties ceased. Complainant contends that the parties’ communications ended because “title” to the domain name could not be verified. In any event, Respondent denies ever approaching Complainants about selling them the contested domain name.
Further, Respondent points out that Complainants do not have a trademark (which the Panel believes Respondent means a trademark “registration”) for PNCCS or PNCCS.COM. Respondent asserts that Complainants do not and cannot have rights to any domain name beginning with the letter string “P-N-C.”
Respondent further asserts that it purchased the contested domain name in good faith and has spent thousands of dollars designing a web site for it. Further, says Respondent, it developed an expensive web site under the contested domain name having content completely unrelated to the industry in which Complainants operate. Respondent asserts that it never had knowledge that the <pnccs.com> domain name was previously owned by PNC Bank. Respondent devotes much of its Answer denying the allegations of bad faith asserted by Complainants.
In its further Response, Respondent submitted a Bloomberg news story dated February 20, 2002, reporting on an investigation opened by the Securities and Exchange Commission into the accounting practices of PNC Financial Services Group. This article is irrelevant to the issues presently before the Panel.
In the substantive portion of its further Response, Respondent spends most of its time again denying Complainants’ allegations, asserting that Complainants’ allegations are false, and contending that Complainants engaged in trickery during the parties’ brief communications with one another.
FINDINGS AND DISCUSSION
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 Complainants 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 Complainants have 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.
In an administrative proceeding pursuant to policy, the Complainant must prove that each of these three elements are present. ICANN Policy ¶4(a).
The following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) Circumstances indicating that the registrant registered or 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;
(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 it is shown that the registrant has engaged in a pattern of such conduct; or
(iii) The registrant registered the domain name primarily for the purpose of disrupting the business of the competitor; or
(iv) By using the domain name, the registrant has intentionally attempted to attract, for commercial gain, internet users to his 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 the registrant’s web site or location of a product or service on his web site or location.
On the other hand, any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate the registrant’s rights or legitimate interests to the domain name:
(i) Before any notice to the registrant of the dispute, its use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name, in connection with the bona fide offering of goods or services; or
(ii) The registrant (as an individual, business, or other organization) has been commonly known by the domain name, even if the registrant has acquired no trade mark or service mark rights; or
(iii) The registrant is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
It is the Complainants that have the burden of proving all three elements of Paragraph 4(a) of the Policy. Complainant’s failure to prove any one of these three elements is fatal to their claim. See, e.g., EMoney Group, Inc. v. Eom San Sik, FA96337 (Nat. Arb. Forum Mar. 26, 2001); J.L. Wilson Co., Inc. v. Ultraviolet Resources Intl., Case No. FA97148 (Nat Arb. Forum June 18, 2001). Further, as the explanatory history to the Policy states: “excepting cases involving ‘abusive registrations’ made with bad-faith intent to profit commercially from others’ trademarks, (e.g., cyber-squatting and cyber-piracy), the adopted policy leaves the resolution of disputes to the courts …. The adopted policy establishes a streamlined inexpensive administrative dispute-resolution procedure intended only for the relative narrow class of cases of ‘abusive registrations.’ Thus, the fact that the Policy’s administrative dispute-resolution procedure does not extend to cases where a registered domain name is subject to a legitimate dispute (and may ultimately be found to violate the challenger’s trademark) is a feature of the Policy….” ICANN Staff Report, http://www.icann.org/udrp/udrp-second-staff-report-24oct99-htm.
In their Reply, Complainants assert that “the domain name holder, Mr. Wilkerson, having not responded, has defaulted. In its submission, WeDirect does not explain its relationship with Mr. Wilkerson, nor does it explain Mr. Wilkerson’s employment with any entity. WeDirect’s colorable claim of ownership does not constitute a procedurally accurate response on Mr. Wilkerson’s behalf.”
Complainants’ request for an entry of default against Respondent is denied. By Complainants’ own submissions, they have shown common dominion and/or control through Wesley Mayder of Respondent IClicks and WeDirect.com/WeDirect, Inc., in whose name Mr. Mayder submitted a Response. Mr. Mayder is not a lawyer and apparently did not appreciate the technicalities of responding in name of the exact party against whom the domain name proceeding was brought.
Each party to this proceeding provided two set of submissions each to the Forum so that the Panel could decide this matter. The Forum deemed all parties’ submissions to be timely and in accordance with the Rules and the Forum’s Supplemental Rules. Under the circumstances, it would be unfair to decide the present dispute based upon a mere technicality when the dispute should be decided on the merits of the parties’ submissions.
Identical and/or Confusingly Similar
It is Complainants’ burden to show that the contested domain name is identical or confusingly similar to trademark(s) or service mark(s) in which Complainants have rights. Policy ¶4(a)(i)
Complainants assert that they hold rights in a family of “PNC…” marks through registrations with the United States Patent and Trademark Office. Complainants submitted, as attachments to their Complaint, an on-line database search report and an in-house report of “PNC…” marks allegedly owned by Complainants (with Amended Articles of Incorporation). Reports of this type have previously been held to be of little evidentiary value. Lloyd’s Food Products, Inc. v. Eli’s, Inc., 987 F.2d 766, 768 (Fed. Cir. 1993). The Panel would have preferred Complainants’ submission of (i) status-and-title copies of the registered marks showing the current owner; or (ii) soft copies of the registrations with an accompanying declaration of one of Complainants’ officers (or other authorized representative) attesting to the current subsistence and ownership of the registered marks; or, at the very least (iii) TESS and TARR database printouts from the records available on-line of the U.S. Patent and Trademark Office accompanied by the assignment records (if any) filed with the U.S. Patent and Trademark Office. If the submission of this type of documentation was all that would have been necessary to fill the holes in the evidentiary record, the Panel would have entered an interim order (under Rule 12) requesting the additional documentation, and, upon Complainants’ compliance, this would have resolved the matter. However, because of additional outstanding disputed factual issues noted below, the mere submission of this documentation would not assist Complainants.
Respondent asserts that, while Complainants may hold rights in trademarks including the letters “PNC…,” Complainants have not been granted exclusive rights to all domain names containing the letters “PNC….” There is merit to Respondent’s contention in this respect. See, B2BWorks, Inc. v. Venture Direct Worldwide, Inc., FA97119 (Nat Arb. Forum June 5, 2001) (holding that Complainant did not have exclusive rights to use of the terms “B2B” and “Works” in association with other words, even with a registered trademark for “B2Bworks); see also, ISL Marketing AG, and the Fed’n Int’l de Football Assn. v. Chung, Case No. D2000-0034 (WIPO Apr. 3, 2000) (finding that, although one may argue that “WC” is an abbreviation of WORLD CUP, it is not likely the meaning most people would give to those letters).
True, Complainants purportedly once maintained a web site under the URL http://www.pnccs.com while PNC was the named registrant for the <pnccs.com> domain name. However, all that Complainants submitted was a copy of stored content for the home page of the former <pnccs.com> web site. Complainant provided very few details about the nature of the business conducted under the former <pnccs.com> web site, the number of “hits” (either monthly or annually) on the web site for the period of time that the domain name was in Complainants’ control, the specifics of the types of services provided under the former web site, and at the very least, the length of time those services were offered for the period that the domain name was in Complainants’ control (purportedly August 25, 2000 until January 2002).
At the very least, whether the <pnccs.com> domain name is identical and/or confusingly similar to trademark(s) or service mark(s) in which Complainants have rights is an open evidentiary issue precluding the Panel from definitively ruling for Complainants under ¶4(a)(i) of the Policy.
Rights or Legitimate Interests
Complainants assert that, through one of Respondent’s related businesses, Respondent is a competitor of Complainants. As such, Complainants contend that Respondent’s use of the disputed domain name is not a bona fide offering of goods or services pursuant to Policy ¶4(c)(i), nor a legitimate non-commercial or fair use pursuant to the Policy ¶4(c)(iii). Rather, Respondent’s actions allegedly were undertaken to disrupt Complainants’ business or otherwise to unfairly compete with Complainants. Complainants further assert that Respondent’s registration of the disputed domain name soon after Complainants’ registration expired indicates that Respondent has no rights or legitimate interests in the contested domain name. Finally, Complainants assert that Respondent’s willingness to sell the domain name to Complainants suggests that Respondent has no rights or interest in the domain name.
Respondent vigorously disputes Complainant’s contentions, asserts that Respondent has been preparing a web site to be hosted under the disputed domain name, and indeed has been hosting a web site at the disputed domain name, and that Respondent’s asserted “interests in selling the domain name” was a circumstance procured by Complainants’ trickery.
Complainants assert that any recent development by Respondent of a web site under the contested domain name constitutes a sham perpetrated by Respondent for purposes of unduly influencing this Panel’s decision.
The Panel finds that disputed factual issues exist which, under the necessarily truncated evidentiary record of a UDRP proceeding, precludes a finding for Complainants under ¶4(a)(ii) of the Policy.
Registration and Use in Bad Faith
Regarding the circumstances of bad faith use and registration, there equally are disputed factual issues which cannot be resolved in a truncated UDRP proceeding. Complainants assert that Respondent registered the <pnccs.com> domain name primarily for the purpose of selling it back to Complainants. Respondent asserts, on the other hand, that any evidence of Respondent’s intention to sell the domain name to Complainants was obtained by way of trickery. Whether Respondent registered the contested domain name for the purpose of selling it to Complainants for an excessive sum cannot be decided within the context of a UDRP proceeding on the present record.
Complainants have, by their own submissions, shown that they have been able to register several domain names incorporating the initials “PNC”. So, Respondent has not prevented Complainants from reflecting their “PNC…” mark(s) in a corresponding domain name. Moreover, Complainants have not provided sufficient evidence that Respondent has engaged in a “pattern” of such conduct.
Complainants vigorously assert that Respondent registered the contested domain name primarily for the purpose of disrupting Complainants’ business as a competitor. Respondent vigorously denies this claim. There is insufficient evidence for the Panel to conclude that Respondent registered the contested domain name for the purpose of disrupting Complainants’ business as competitors.
Finally, the parties strenuously argue in support of their respective positions regarding whether Respondent registered the <pnccs.com> domain name to intentionally attempt to attract, for commercial gain, Internet users to Respondent’s web site by creating a likelihood of confusion with Complainants’ mark(s). There simply are too many outstanding factual issues remaining for the Panel to decide in Complainants’ favor under ¶4(a)(iii) of the Policy.
The Panel empathizes with Complainants, in that they purport to have conducted a commercial business under the disputed domain name, only to have the on-line link to that business evaporate by inadvertently allowing their domain name registration to expire – permitting a third party to register the domain name when it became available. Unfortunately, the expeditious nature of the UDRP process prevents the Panel from reviewing a fuller evidentiary record, taking testimony, and assessing the credibility of the parties and their respective positions. The Panel cannot rule in Complainants’ favor on the present record. Complainants, however, are not without alternative remedies. Complainants are domestic United States banking corporations, and Respondent is located within the United States. Based upon a more extensive evidentiary record, Plaintiffs may take advantage of the protections afforded by the United States Trademark Act, 15 U.S.C. §§1114(1) and 1125(a), as well as the Anti-Cybersquatting Consumer Protection Act, 15 U.S.C. §1125(d).
For the foregoing reasons, the Panel herein DENIES the relief requested in Complainants’ Complaint.
Hudis, Sole Panelist
Dated: March 13, 2002
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