The PNC Financial Services Group, Inc., v. Kang Hyun Choi
Claim Number: FA1309001519498
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 Kang Hyun Choi (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pnccapital.net>, registered with Register.com.
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.
Hon. Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 13, 2013; the National Arbitration Forum received payment on September 13, 2013.
On September 16, 2013, Register.com confirmed by e-mail to the National Arbitration Forum that the <pnccapital.net> domain name is registered with Register.com and that Respondent is the current registrant of the name. Register.com has verified that Respondent is bound by the Register.com 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 16, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 7, 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@pnccapital.net. Also on September 16, 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 November 19, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (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" 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.
i. Respondent is not—and has not been—commonly known by the domain name.
ii. Respondent registered and is using the domain name for a commercial pay-per-click website that features sponsored-link advertisements to directly competing websites.
iii. Respondent’s activities constitute passing off.
i. Respondent disrupts Complainant’s business by using the domain name for a website featuring click-through advertisements and sponsored links directed to competing third-party websites.
ii. Respondent uses the 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.
iii. Respondent is using the domain name to pass itself off as Complainant for Respondent’s fraudulent commercial gain.
iv. There can be no question that Respondent had knowledge of Complainant’s rights in the PNC marks when it registered and used the domain name because Respondent’s pay-per-click website contains text and links referring to the financial services industry, including many directed towards Complainant’s competitors.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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.”).
Complainant argues that it is one of the largest national diversified financial services organizations in the United States, providing retail banking, corporate and institutional banking, residential mortgage banking, and asset management services. Complainant asserts that it is the owner of trademark registrations with the USPTO for the PNC mark (e.g., Reg. No. 1,416,898, registered November 11, 1986). Accordingly, because Respondent is located in the United States, the Panel finds that Complainant’s registration of the PNC mark with the USPTO sufficiently demonstrates its rights in the mark pursuant to Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Complainant alleges that Respondent’s domain name <pnccapital.net> is confusingly similar to Complainant’s PNC mark because it is comprised of Complainant’s PNC mark, the generic term “capital,” and the non-distinguishing gTLD “.net.” The Panel holds that Respondent’s inclusion of a generic term does not differentiate the disputed domain name from Complainant’s mark under Policy 4(a)(i). See Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element). The Panel finds that Respondent’s addition of a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis. See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (holding that attaching a gTLD is “unable to create a distinction capable of overcoming a finding of confusing similarity”). Thus, the Panel concludes that Respondent’s <pnccapital.net> domain name is confusingly similar to Complainant’s PNC mark under Policy ¶ 4(a)(i).
Complainant has proven this element.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant contends that Respondent is not, and has not, been commonly known by the <pnccapital.net> domain name. Complainant alleges that nothing in Respondent’s WHOIS information or the record demonstrates that Respondent is commonly known by the disputed domain name, and that Complainant has not authorized Respondent to use its PNC marks. The Panel notes that the WHOIS record for the domain name identifies “Kang Hyun Choi” as the registrant of the disputed domain name. The Panel finds that there is no evidence showing that Respondent is commonly known by the disputed domain name and holds that Respondent is not commonly known by the <pnccapital.net> 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).
Complainant claims that Respondent registered and is using the <pnccapital.net> domain name for a commercial pay-per-click website that features sponsored-link advertisements to directly competing websites. The Panel notes that Respondent’s disputed domain name resolves to a commercial website, featuring hyperlinks to Respondent’s competitors, such as “Vanguard Funds,” “Top 5 Fixed Income Funds,” “Investment Strategies,” and other financial service websites. In H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008), the panel found that, because “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [complainant’s] mark,” respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use. The Panel determines that Respondent is not using the <pnccapital.net> domain name for a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Complainant claims that Respondent’s activities constitute passing off. The Panel notes that Respondent’s <pnccapital.net> domain name contains competing links titled “Trade Architect by TD,” “Financial Planning,” “Online Financial Planning,” and more. The Panel finds that Respondent’s use of the confusingly similar domain name to provide competing links shows that Respondent has attempted to pass itself off as Complainant. The Panel holds that Respondent is not using the <pnccapital.net> domain name in connection with a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name).
Complainant has proven this element.
Complainant argues that Respondent disrupts Complainant’s business by using the <pnccapital.net> domain name for a website featuring click-through advertisements and sponsored links directed to competing third-party websites. The Panel notes that Respondent uses its disputed domain name to host hyperlinks to Complainant’s competitors in the financial industry. In Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008), the panel held that “Respondent’s disputed domain name resolves to a parking website which provides click through revenue to Respondent and which displays links to travel-related products and services that directly compete with Complainant’s business. Accordingly, Respondent’s competing use of the disputed domain name is additional evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).” Therefore, the Panel finds that Respondent’s use of the <pnccapital.net> domain name to provide competing links disrupts Complainant’s business in bad faith under Policy ¶ 4(b)(iii).
Complainant alleges that Respondent uses the <pnccapital.net> 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. The Panel notes that Respondent uses its <pnccapital.net> domain name to provide links to Complainant’s competitors, such as “Find a Financial Planner,” “Best Investments,” “Chase Private Client,” and others. The Panel notes that Respondent presumably commercially gains through its use of the disputed domain name by collecting click-through fees. Prior panels have concluded that a respondent’s use of a domain name to provide competing links for which it commercially gains evidences bad faith under Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”). Thus, the Panel holds that Respondent registered and is using the <pnccapital.net> domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant asserts that Respondent is using the <pnccapital.net> domain name to pass itself off as Complainant for Respondent’s fraudulent commercial gain. The Panel notes that Respondent has been using the disputed domain name to provide links to financial services, such as “Edward Jones Investments,” “Wells Fargo Advisors,” and others. The Panel finds that Respondent’s use of the disputed domain name to provide competing links at a confusingly similar web address evidences Respondent’s attempt to pass itself off as Complainant and the Panel determines that Respondent has registered and is using the <pnccapital.net> domain name in bad faith under Policy ¶ 4(a)(iii). See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith).
Complainant claims that there can be no question that Respondent had knowledge of Complainant’s rights in the PNC marks when it registered and used the domain name because Respondent’s pay-per-click website contains text and links referring to the financial services industry, including many directed towards Complainant’s competitors. Further, Complainant contends that Respondent registered the <pnccapital.net> domain name nearly three decades after the issuance of Complainant’s federal registration for its PNC mark. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also 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").
Complainant has proven this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <pnccapital.net> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: November 25, 2013
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