PC Connection, Inc. v. MG Traders Ltd.
Claim Number: FA0810001227237
Complainant is PC Connection, Inc. (“Complainant”), represented by Peter
C. Lando, of Lowrie, Lando & Anastasi, LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pcconnection.net>, registered with Getyourdotcom.com.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 1, 2008; the National Arbitration Forum received a hard copy of the Complaint on October 2, 2008.
On October 1, 2008, Getyourdotcom.com confirmed by e-mail to the National Arbitration Forum that the <pcconnection.net> domain name is registered with Getyourdotcom.com and that Respondent is the current registrant of the name. Getyourdotcom.com has verified that Respondent is bound by the Getyourdotcom.com 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").
15, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
November 4, 2008
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 firstname.lastname@example.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 7, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 makes the following assertions:
1. Respondent’s <pcconnection.net> domain name is identical to Complainant’s PC CONNECTION mark.
2. Respondent does not have any rights or legitimate interests in the <pcconnection.net> domain name.
3. Respondent registered and used the <pcconnection.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, PC Connection, Inc., is a nationally recognized provider of IT solutions to business, governments, educational institutions, and consumers. Complainant operates under the PC CONNECTION mark (Reg. No. 1,721,844 issued October 6, 1992). Complainant has owned and operated the <pcconnection.com> domain name since 1994.
Respondent registered the <pcconnection.net> domain name on June 18, 2008, and is using the disputed domain name to host a website that displays links and advertisements for Complainant’s direct competitors.
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."
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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.
The Panel finds that Complainant’s registration of the PC CONNECTION mark with the USPTO constitutes sufficient evidence of Complainant’s rights in the mark in order to grant standing under the UDRP and Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.").
that the <pcconnection.net>
domain name is identical to its PC CONNECTION mark, regardless of the fact
that the disputed domain name adds the generic top-level domain (“gTLD”)
“.net.” Previous panels have found that
the addition of a gTLD is irrelevant under the UDRP. Therefore, the Panel finds that the disptued domain name is identical to
Complainant’s mark under Policy ¶ 4(a)(i). See
Katadyn N. Am. v.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has asserted that Respondent lacks rights and legitimate interests in the disputed domain name. Once Complainant sets forth a prima facie case supporting its allegations, as it has here, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”).
The record does not include any evidence that suggests Respondent is commonly known by the disputed domain name. The WHOIS information lists Respondent as “MG Traders Ltd.,” and Respondent has failed to allege authorization to use Complainant’s mark. Indeed, Complainant specifically contends that Respondent lacks such authorization. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
The disputed domain name resolves to a website that displays commercial links to Complainant’s direct competitors, which the Panel presumes profits Respondent via the receipt of some type of referral fee. The Panel aligns itself with previous UDRP precedent in finding that such a use fails as a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s identical disputed domain name resolves to a
website designed to profit off of diverting Internet users to Complainant’s
competitors in return for referral fees.
The Panel therefore finds that Respondent has engaged in bad faith
registration and use under Policy ¶ 4(b)(iii) because
Respondent has created actual or potential disruption to Complainant’s
business. See EBAY, Inc. v.
MEOdesigns, D2000-1368 (WIPO
The Panel also finds that Respondent has engaged in bad
faith registration and use under Policy ¶ 4(b)(iv) by
intentionally creating a likelihood of confusion for commercial gain as to
Complainant’s affiliation with Respondent’s identical disputed domain name and
corresponding website. See
Allianz of Am. Corp. v. Bond,
FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith
registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting
Internet users searching for the complainant to its own website and likely
profiting); see also
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <pcconnection.net> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: November 24, 2008
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