The PNC Financial Services Group, Inc. v. Yanli Li
Claim Number: FA1311001528400
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 Yanli Li (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <pnconcmapus.com>, <pnconcamus.com>, <pnconcampos.com>, and <pnconampus.com>, registered with 1Api Gmbh.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 5, 2013; the National Arbitration Forum received payment on November 5, 2013.
On November 7, 2013, 1Api Gmbh confirmed by e-mail to the National Arbitration Forum that the <pnconcmapus.com>, <pnconcamus.com>, <pnconcampos.com>, and <pnconampus.com> domain names are registered with 1Api Gmbh and that Respondent is the current registrant of the names. 1Api Gmbh has verified that Respondent is bound by the 1Api Gmbh 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 November 14, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 4, 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@pnconcmapus.com, postmaster@pnconcamus.com, postmaster@pnconcampos.com, postmaster@pnconampus.com. Also on November 14, 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 December 10, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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 names be transferred from Respondent to Complainant.
A. Complainant
Policy ¶ 4(a)(i): Complainant’s Mark & Confusing Similarity of the Domain Names
Policy ¶ 4(a)(ii): Respondent Lacks Rights and Legitimate Interests
Policy ¶ 4(a)(iii): Respondent’s Bad Faith Use and Registration
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in banking, residential mortgage, asset management and student loan services.
2. Complainant registered the PNC mark with the United States Patent and Trademark Office ("USPTO") (e.g. Reg. No. 1,416,898 registered on November 11, 1986).
3. Respondent registered the disputed domain names on August 3, 2013.
4. Respondent has used the disputed domain names to promote commercial hyperlink advertisements to competing businesses.
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 first question that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant states that it uses the PNC mark to promote its banking, residential mortgage, and asset management services. Complainant claims that more than 140 active non-bank subsidiaries are associated with the PNC mark. Complainant also claims that it uses the PNC mark in connection with its student loan services, offered through the <pnconcampus.com> domain name. Complainant registered the PNC mark with the USPTO (e.g. Reg. No. 1,416,898 registered on November 11, 1986). The Panel finds that USPTO registration satisfies Complainant’s Policy ¶ 4(a)(i) obligation to show rights in the mark, regardless of where Respondent is actually domiciled. See, e.g., Scripps Networks, LLC v. chen wenjie, FA 1523127 (Nat. Arb. Forum Nov. 12, 2013) (“The Panel finds that Complainant’s USPTO registration establishes Complainant’s rights in the mark under Policy ¶ 4(a)(i), even despite the fact that Respondent appears to reside out of the United States.”).
The second question that arises is whether the disputed domain names are identical or confusingly similar to the PNC mark. Complainant submits that Respondent registered the confusingly similar <pnconcmapus.com>, <pnconcamus.com>, <pnconcampos.com>, and <pnconampus.com> domain names. Complainant argues that the domain names all incorporate the PNC mark along with various misspellings of the phrase “on campus.” Complainant believes that the addition of the gTLD “.com” to each of the domain names is not relevant. The Panel agrees that gTLDs are not considered as distinctive under the Policy. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel also agrees that including typo-ridden variants on the phrase “oncampus” is indicative of confusing similarity. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Am. Online, Inc. v. Amigos On Line RJ, FA 115041 (Nat. Arb. Forum Aug. 28, 2002) (finding that the <aolrj.com> domain name was confusingly similar to the complainant’s AOL mark because “…the addition of a string of indiscriminate letters to a famous mark in a second level domain does not differentiate the domain name from the mark.”). The Panel thus concludes that all of the disputed domain names are confusingly similar to the PNC mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s PNC trademark, and add the expression “on campus” with various spelling alterations in formulating the domain names, thus giving the false impression that the domain names are official domain names of Complainant and that they will lead to official websites of Complainant;
(b) Respondent has used the disputed domain names to promote commercial hyperlink advertisements to competing businesses;
(c) Respondent has engaged in these activities without the consent or approval
of Complainant;
(d) Complainant submits that Respondent is not now, nor has it ever been, known by any of the <pnconcmapus.com>, <pnconcamus.com>, <pnconcampos.com>, or <pnconampus.com> domain names. Complainant states that the WHOIS information does not suggest a connection between Respondent and the names. Complainant asserts that it has not otherwise expressly or suggestively permitted, licensed, or authorized Respondent’s use of the PNC mark in domain names. The Panel notes that Respondent is indicated as “Yanli Li” in the WHOIS record for each of the domain names. In St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007), the panel declined to make Policy ¶ 4(c)(ii) findings when the record was scant of a basis for relating the respondent’s name to the name of the disputed domain. The Panel here agrees that Respondent is not known by any of the <pnconcmapus.com>, <pnconcamus.com>, <pnconcampos.com>, or <pnconampus.com> domain names pursuant to Policy ¶ 4(c)(ii);
(e) Complainant also attests that Respondent is using all of the disputed domain names to promote commercial hyperlink advertisements to competing businesses. Complainant points out that Respondent’s domain names include hyperlinks ranging from “PNC Online Banking” to “Private Parent Student Loans” and connect to pages associated with Complainant’s competitors, such as Bank of America, Capitol One, Lending Tree, etc. See Amended Compl., at Attached Ex. 9. Previous panels have found no Policy ¶ 4(c)(i) bona fide offering, or Policy ¶ 4(c)(iii) legitimate noncommercial or fair use when domain names are used to send Internet users to competing enterprises. See, e.g., H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[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 [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services). The Panel finds that in the present case, Respondent’s decision to use the disputed domain names to promote competing hyperlink advertisements evinces neither a Policy ¶ 4(c)(i) bona fide offering of goods or services, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant claims that Respondent’s decision to host competing hyperlink advertisements through the <pnconcmapus.com>, <pnconcamus.com>, <pnconcampos.com>, and <pnconampus.com> domain names’ websites evidences unfair commercial disruption of Complainant’s business under the PNC mark. The Panel again takes note of the hyperlinks on the disputed domain names, which while labeled in generic terms take the Internet user to competing lenders. See Amended Complaint at Attached Ex. 9. As the Panel agrees that the hyperlinks are sufficiently competitive, the Panel imputes upon Respondent a finding of Policy ¶ 4(b)(iii) bad faith through commercial disruption. See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (“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).”).
Secondly, Complainant next argues that Respondent uses the <pnconcmapus.com>, <pnconcamus.com>, <pnconcampos.com>, and <pnconampus.com> domain names to profit from the likelihood that Internet users will confuse Complainant as the source, sponsor, affiliate, or endorser of the hyperlink advertisements viewable through the domain names’ websites. The Panel again notes that Respondent has monetized the domain names with click-through hyperlink advertisements. See Amended Complaint. at Attached Ex. 9. In Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arab. Forum Nov. 19, 2003), the panel agreed that there was bad faith through a likelihood of confusion when a confusingly similar domain name was used to promote competing hyperlink advertisements which generated commercial revenues for the respondent. The Panel here likewise finds that Respondent acted in Policy ¶ 4(b) (IV) bad faith in registering and using these confusingly similar domain names to host profit-generating hyperlinks.
Thirdly, Complainant also argues that Respondent’s typosquatting behavior is in itself evidence of Respondent’s bad faith. Complainant notes that Respondent’s domain names all incorporate typographical errors that Internet users may enter when seeking Complainant’s PNC student loan services available through the <pnconcampus.com> domain name. Ordinarily, typosquatting has been defined as errors made to a trademark so as to capitalize on mistakes that Internet users would make in typing the full trademark into their search bar. See, e.g., Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005) (finding that the respondent’s registration and use of the <nextell.com> domain name was in bad faith because the domain name epitomized typosquatting in its purest form); see also Internet Movie Database, Inc. v. Temme, FA 449837 (Nat. Arb. Forum May 24, 2005) (“Respondent's registration of the domain names in dispute constitutes bad faith because the domain names are merely typosquatted versions of the [complainant’s] IMDB mark.). However, although the Panel notes that the underlying phrase “pnc on campus” refers to a domain name held by Complainant and not to any trademark, the Panel nevertheless finds that Respondent has effectively engaged in typosquatting and the Panel views such conduct as a part of the totality of circumstances leading to a finding of Policy ¶ 4(a)(iii) bad faith.
Fourthly, Complainant claims that Respondent is on both constructive and actual notice of Complainant’s rights in the PNC mark. Complainant states that actual notice is inferred through the use of the PNC marks explicitly in the advertisements found on the websites. Complainant maintains that constructive notice is implied through Complainant’s PNC trademark registrations. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Fifthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain names using the PNC mark and in view of the conduct that Respondent has engaged in when using the domain names, Respondent registered and used the domain names in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <pnconcmapus.com>, <pnconcamus.com>, <pnconcampos.com>, and <pnconampus.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: December 13, 2013
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page