The PNC Financial Services Group, Inc. v. Online Management
Claim Number: FA1309001517908
Complainant is The PNC Financial Services Group, Inc. (“Complainant”), represented by Mark Sommers of Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., Washington, D.C., USA. Respondent is Online Management (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pncbenifits.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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 4, 2013; the National Arbitration Forum received payment on September 4, 2013.
On September 5, 2013, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <pncbenifits.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 September 12, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 2, 2013 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@pncbenifits.com. Also on September 12, 2013, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 4, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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" 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 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
Complainant contends as follows:
Complainant is one of the largest national diversified financial service organizations in the United States providing retail banking, corporate and institutional banking, residential mortgage banking, and asset management services to its customers. Complainant has about 2,900 branch locations and 40 brokerage offices in 19 states and Washington, D.C.
Complainant owns several registrations with the United States Patent and Trademark Office (“USPTO”) for the PNC mark including Reg. No. 1,416,898 registered November 11, 1986 and Reg. No. 2,508,843 registered November 20, 2001.
Respondent’s <pncbenifits.com> domain name is confusingly similar to Complainant’s PNC mark. Respondent’s disputed domain name contains Complainant’s PNC mark in its entirety with the addition of the misspelled term “benefits,” here, spelled “benefits.” Respondent also adds the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the <pncbenifits.com> domain name. Respondent is not, and will never be commonly known by the disputed domain name. Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.
Respondent’s disputed domain name resolves to a commercial website offering pay-per-click websites. Respondent is attempting to pass itself off as Complainant. Respondent features links and advertisements on its resolving website that directly compete with Complainant’s business.
Respondent registered and is using the disputed domain name in bad faith.
Respondent’s activity constitutes typosquatting because Respondent is taking advantage of those who mistype the intended domain name for Complainant’s company. Respondent’s use of the disputed domain name unfairly disrupts Complainant’s business by using the disputed domain name to pass itself off as Complainant for commercial gain. Respondent uses the disputed domain name to intentionally attract, for commercial gain, Internet users by creating a likelihood of confusion with complainant’s PNC marks as to the source, sponsorship, affiliation, and endorsement of Respondent’s website.
Respondent had knowledge of Complainant and its marks when it registered the domain name.
Respondent registered the disputed domain name nearly three decades after Complainant registered the PNC mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns USPTO registered trademarks for PNC.
Respondent is not affiliated with Complainant and is not authorized to use Complainant’s trademark mark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired trademark rights in the PNC mark.
Respondent’s domain name addresses a commercial website offering pay-per-click links some of which link to Complainant’s competition.
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(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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s registration of the PNC mark with the USPTO sufficiently demonstrates Complainant’s rights in a mark under Policy ¶ 4(a)(i). Complainant need not register its mark where Respondent operates to demonstrate such rights. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i)”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Respondent’s at-issue domain name domain name contains Complainant’s PNC mark in its entirety, adds the term benefits, misspelled as “benifits,” to the mark and appends the generic top level domain, “.com,” thereto. Under the Policy, these modifications, separately or together, fail to distinguish the at-issue domain name from Complainant’s trademark. In fact, the addition of the term “benefits,” which is phonetically identical to “benefit,” is suggestive of Complainant’s banking related business thus exacerbating any confusion between the mark and domain name. Therefore, the Panel concludes that Respondent’s <pncbenifits.com> domain name is confusingly similar to Complainant’s PNC trademark. See also Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark); see also Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”).
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of the at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
The WHOIS information for the PNC domain names identifies the domain name’s registrant as “Online Management” and the record before the Panel contains no evidence that tends to otherwise suggest that Respondent is commonly known by the <pncbenifits.com> domain name. The Panel therefore concludes that Respondent is not commonly known by the <pncbenifits.com> domain name for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent uses the confusingly similar domain name to address a commercial website featuring pay-per-click advertisements and links that directly compete with Complainant’s business. The website features links such as, “PNC,” “Medical Benefits,” “Health Care Benefits,” “PNC Bank Mortgage Rates,” “Employer Benefits,” “PNC Bank Credit Card,” “Low Fixed Mortgage Rates,” and “Capital One Credit Cards.” Displaying competing links on a website addressed by a confusingly similar domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use of the domain name 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)).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).
The at-issue domain name was registered and is being used in bad faith. As discussed below Policy ¶4(b) bad faith circumstances are present and there is additional non-Policy ¶4(b) evidence from which the Panel may also conclude that Respondent acted in bad faith pursuant to Policy ¶4(a)(iii).
Respondent’s use of the confusingly similar <pncbenifits.com> domain name disrupts complainant’s business in that the domain name addresses a website displaying links to third parties that compete with Complainant. Such use demonstrates Respondent’s bad faith pursuant to Policy ¶4(b)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”)
Additionally, Respondent uses the confusingly similar <pncbenifits.com> domain name to take advantage of Complainant’s PNC mark to attract Internet users to Respondent’s <pncbenifits.com> website. Upon arriving at the <pncbenifits.com> website wayward visitors are shown hyperlinks to third-parties, some of which directly compete with Complainant. The hyperlinks are undoubtedly pay-per-click links from which Respondent intends to commercially benefit. This use of the <pncbenifits.com> domain name demonstrates Respondent’s bad faith registration and use under Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (holding that respondent’s use of the at-issue domain name was evidence of bad faith pursuant to Policy ¶ 4(b)(iv) when the domain name provided links to complainant's competitors and respondent presumably commercially benefited from the misleading domain name by receiving click-through fees).
Finally, Respondent had actual knowledge of Complainant’s rights in the PNC trademark before it registered the <pncbenifits.com> domain name. Respondent’s prior knowledge is evident from the notoriety of Complainant’s PNC mark and from the fact that the <pncbenifits.com> domain name includes Complainant’s entire trademark and a misspelling of the suggestive term, “benefit.” Registering and using a confusingly similar domain with knowledge of a complainant’s rights in such domain name indicates bad faith registration and use pursuant to Policy ¶4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name.”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <pncbenifits.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: October 7, 2013
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