The PNC Financial Services Group, Inc. v. Daniel Lee / Danie Lee
Claim Number: FA1312001533525
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 Daniel Lee / Danie Lee (“Respondent”), Korea.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <pncib.com> and <capitalofpnc.com>, registered with YESNIC CO. LTD.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 6, 2013; the National Arbitration Forum received payment on December 6, 2013. The Complaint was received in both Korean and English.
On December 9, 2013, YESNIC CO. LTD. confirmed by e-mail to the National Arbitration Forum that the <pncib.com> and <capitalofpnc.com> domain names are registered with YESNIC CO. LTD. and that Respondent is the current registrant of the names. YESNIC CO. LTD. has verified that Respondent is bound by the YESNIC CO. LTD. 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 December 16, 2013, the Forum served the Korean language Complaint and all Annexes, including a Korean language Written Notice of the Complaint, setting a deadline of January 6, 2014 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@pncib.com, postmaster@capitalofpnc.com. Also on December 16, 2013, the Korean language 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 January 13, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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.
In the instant proceedings, Complainant claims the entities which control the domain names at issue are the same person. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant claims the same person registered the disputed domain names. The street addresses and e-mail contact information for both domain names are identical. The spelling discrepancy between “Daniel” and “Danie” is minimal. It is common knowledge Danie is a diminutive for Daniel. The Panel finds there is a single Respondent.
Pursuant to Rule 11(a), the Panel determines the language requirement has been satisfied through the Korean language Complaint and Commencement Notification, and, absent a Response, determines the remainder of the proceedings may be conducted in English.
Complainant requests the domain names be transferred from Respondent to Complainant.
A. Complainant
A. BACKGROUND FACTS
a) PNC and its Products and Services
1. With roots in commercial banking that date back to the 1800s, PNC 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.
2. PNC is a publicly traded bank holding company, with PNC Bank as the principal bank subsidiary. PNC also has more than 140 active nonbank subsidiaries. A Fortune 200 company, PNC employs approximately 56,000 employees in the U.S. and abroad.
3. As of December 31, 2012, PNC’s consolidated assets totaled more than $305 billion, and its total deposits were $213 billion.
4. PNC offers a full range of banking and financial services to individuals and businesses under its PNC Marks. PNC has approximately 2,900 branch locations and 40 brokerage offices in 19 states and the District of Columbia, reaching one-third of the U.S. population and the corporate headquarters of half of the Fortune 500. PNC has approximately 6,500,000 checking account customers.
5. PNC has used its PNC Marks, and variations thereof, since at least as early as 1976. As such, PNC has amassed substantial common-law rights in and to the PNC Marks.
6. PNC has received extensive public recognition and has won numerous awards, including “Bank of the Year in the United States” from The Banker magazine in 2010, and “Most Admired Companies” from Fortune magazine in 2012.
7. PNC owns the domain names pnc.com, pnccapital.com, pnccapitaladvisors.com, and pncbank.com, which PNC registered on July 19, 1993, February 6, 1996, November 5, 2008, and November 25, 1995, respectively.
8. PNC extensively promotes, and has promoted for years, its products and services under the PNC Marks on the Internet, both at its main website located at www.pnc.com and at its PNC Capital Advisors website at www.pnccapitaladvisors.com (the “PNC Websites”).
9. PNC spends significant amounts of money each year to advertise and promote PNC and its PNC Marks. PNC’s promotion of its PNC Marks includes several high-profile sponsorships, such as ownership of the naming rights to the stadium of the PITTSBURGH PIRATES major league baseball team, which is identified by the mark PNC PARK.
b) PNC’s Trademark Holdings
10. In connection with its rights in and to the PNC Marks, PNC owns several United States trademark registrations, including the following registrations for the marks PNC, PNC CAPITAL MARKETS, and PNCBANK, each of which is incontestable:
i. Registration No. 1,416,898 for the mark PNC in standard characters, first used April 15, 1976, filed June 28, 1985, issued November 11, 1986, covering “data processing services; financial recordkeeping services” in International Classes 35; “commercial, international, consumer and mortgage banking services; credit card and debit card services; fiduciary and custodial services; cash management and financial consulting services; electronic funds transfer services; investment advisory services; underwriting securities for others; financial transaction processing for financial intermediaries” in International Class 36; and “transmission of business data for others” in International Class 38;
ii. Registration No. 2,508,843 for the mark PNC (and Design), first used March 15, 2000, filed January 7, 2000, issued November 20, 2001, and covering “a full line of financial and banking services” in International Class 36;
iii. Registration No. 2,162,648 for the mark PNC CAPITAL MARKETS in standard characters, first used September 10, 1996, issued June 2, 1998, and covering “financial services, namely, investment banking, securities brokerage services, and loan and leasing administration” in International Class 36”; and
iv. Registration No. 1,863,311 for the PNCBANK mark, first used February 8, 1993, filed December 16, 1992, issued November 15, 1994, and covering “financial services” in International Class 36.
PNC also owns federal trademark registrations for other marks in its family of PNC-formative marks including, for example, PNC POINTS, PNC INSURANCE, PNC LEASING, PNC MERCHANT SERVICES, and PNC PARK.
11. PNC’s incontestable registrations for the PNC Marks on the Principal Register constitute “conclusive” evidence of the validity of those Marks and PNC’s exclusive right to use its PNC Marks throughout the United States (15 U.S.C. § 1057(b)).
12. By virtue of the arbitrary nature and hence the inherent strength of the PNC Marks as applied to PNC’s goods and services, and PNC’s extensive use, promotion, and registration of its Marks, the PNC Marks have become famous.
c) Respondent’s Infringing Activities
13. Respondent registered the Domain Names on November 17, 2013 and June 29, 2013 – long after PNC registered and began using its PNC Marks in the U.S. and elsewhere.
14. PNC has recently learned that Respondent is using the Domain Names to direct internet users to a website located at www.pncib.com where Respondent holds itself out to investors as a legitimate subsidiary of PNC. This website clearly demonstrates that Respondent is attempting to pass himself off as PNC because his website reflects the same street address information as PNC’s own New York office at 340 Madison Avenue. In addition, Respondent even went so far as to display the website URL for PNC’s own website (www.pnc.com) on the initial “parked” page of his website in order to further his fraudulent scheme. This parked page also reflected the same e-mail contact information (pca@pnc.com) for Complainant’s PNC Capital Advisors division as shown on its own website at www.pnccapitaladvisors.com. In fact, the html source code embedded within the current version of Respondent’s website still reflects Respondent’s fraudulent claims of a business connection with PNC and its legitimate subsidiaries - PNC Bank, N.A. and PNC Capital Advisors - and continues to direct users to the pca@pnc.com e-mail address.
15.
Respondent’s
representations are literally false and grossly misleading. By impersonating
legitimate PNC personnel through the use of this website, Respondent is
attempting to deceive consumers into engaging in fraudulent financial
transactions, based on their mistaken belief that they are actually transacting
with PNC. Respondent does so under the guise of duplicating PNC’s service
offerings and contact information, all the while attempting to mislead
investors into believing Respondent is a bona fide business entity legitimately
affiliated with PNC and its financial service offerings. In fact, Respondent’s
false claims of an affiliation with PNC have been discovered through other
third-party channels. For example, Respondent presumably posted an information
listing on the Korean website, JobKorea, describing its alleged business
profile. (PNC notes that the JobKorea website is a recruiting information
service company and does not generate information or data on its own.
Therefore, PNC believes that Respondent is responsible for posting this false
content.) A link to this posting is available at the following URL:
www.jobkorea.co.kr/List_GI/GI_Info_Read.asp?C_ID=pncib340
A basic English translation of this content reads:
PNC CAPITAL CO. (피엔씨케피탈(주))
Overview: PNC Capital Co. is incorporated in 2013 and the paid-in contribution amount is KRW 500,004,000,000. The sales revenue is KRW 35,000,000,000. The employees are 5. This company is a foreign investment company. It is located on Daechi-dong, Gangnam-gu in Seoul. It is involved in financial services business.
Homepage: www.pnc.com
Representative: Daniel Lee
Date of Incorporation: July 11, 2013
As noted above, this listing fraudulently reflects PNC’s own website at www.pnc.com.
16. Finally, Respondent’s website also slavishly copies text and information from other third-party financial and investment sites in order to bolster its credibility as a legitimate source of investment services. For instance, Respondent’s website plagiarizes an entire section from the website for JPMorgan & Chase in which the company describes the “Global Health Investment Fund”, a social benefit investment fund structured by JPMorgan Chase in partnership with the Bill & Melinda Gates Foundation. Although this fund is actually managed by LHGP Asset Management, a London-based investment advisory firm, Respondent features the description of this fund prominently on its website homepage, with no indication whatsoever that this fund is managed by another entity entirely. In fact, it appears that much of the content on Respondent’s website is nothing more than a wholesale copying of financial information freely available on the Internet. For example, Respondent’s page on the Standby Letter of Credit is copied almost entirely from a consumer information website located at www.creditmanagementworld.com. Another paragraph on Respondent’s “Asset Management - About Us” page is copied identically from an executive biography from UBS Global Asset Management. In short, it appears that Respondent’s website is nothing more than a collection of plagiarized investment-related content, cobbled together for the purpose of making Respondent appear as a legitimate business entity.
B. LEGAL GROUNDS
a) The Domain Names are Confusingly Similar to Complainant’s PNC Marks
17. Each of the Domain Names are confusingly similar to Complainant’s PNC Marks because they each comprise Complainant’s PNC mark, the generic terms “capital” or “ib” (presumably an abbreviation of “investment bank”), and the non-distinguishing gTLD “.com.” Combining Complainant’s PNC mark with generic or descriptive terms is not sufficient to distinguish the Domain Names from PNC’s marks. Further, the addition of the generic or descriptive terms CAPITAL or IB to Complainant’s PNC mark in the Domain Names heightens the confusing similarity because those terms describe the services PNC offers its customers in the financial services and capital markets industry as shown at the PNC Website. UDRP Panels have consistently held that a domain name comprising a mark and a generic or descriptive term is confusingly similar to the mark at issue, and that gTLDs are inconsequential when conducting an analysis of confusing-similarity. See, e.g., Marriott v. Seocho (NAF FA0303000149187) (finding the domain name <marrriott.com> confusingly similar to Complainant’s MARRIOTT mark); Marriott v. Kyznetsov (NAF FA0009000095648) (“The infringing domain name [<marriotrewards.com>] is nearly identical and confusingly similar to the Complainant’s marks MARRIOTT and MARRIOTT REWARDS. Respondent has registered a domain name that deletes the second letter ‘t’ from the Complainant’s marks. This small change does not create a term that is distinct from the Complainant’s mark.”); Yahoo! v. Deiana (NAF FA0410000339579) (finding the domain name <ayhoooshopping.com> among others confusingly similar to complainant’s YAHOO! mark); Nortel Networks v. Buymebuyme.com (NAF FA0604000671847) (finding the domain names <nortelphones.com> and <norstarphones.com> confusingly similar to complainant’s NORTEL and NORSTAR marks because “the addition of generic terms, particularly those with a direct connection to Complainant’s business, fails to sufficiently distinguish Respondent’s domain names from Complainant’s marks pursuant to Policy ¶4(a)(i).”).
18. Moreover, the use of the generic term “capital” or the acronym “ib” in the Domain Names is specifically intended to be confusingly similar to Complainant’s PNC marks because they further Respondent’s scheme of posing as financial services personnel from PNC in order to lure potential investors into participating in Respondent’s phony business scheme. In fact, Respondent’s internal investigation reveals that reports are circulating within various media channels that Complainant will be investing 6.5 billion dollars in Yeongjong, South Korea for the construction of an integrated casino resort. Such reports are false and PNC has no such involvement in these investments. However, PNC has learned that several such reports have already been published by a number of media outlets, due solely to Respondent’s fraudulent attempts to pose as PNC to attract would-be investors.
19. The use of these generic, financial terms with Complainant’s PNC Mark is intended to deceive the public into believing Respondent is a bona fide subsidiary of PNC in order to disguise his investment solicitations and dupe consumers into taking part in such fraudulent scheme. UDRP Panels have consistently held that the combination of such generic terms with a trademark to form a domain name (especially when done with the intent of illegally impersonating the trademark owner) renders the disputed domain name confusingly similar to the trademark at issue. See, e.g., Retail Royalty Company, and AEO Management Co. v. Marcus Roland (FA1012001364000) (finding that the addition of the generic term “hr” - meaning human resources - and the gTLD “.com” to the <ae-hr.com> domain name (used for fraudulent job postings) was confusingly similar to Complainant’s AE mark); Continental Airlines Inc. v. Carolyn Reeves (FA0805001183179) (finding that the use of an abbreviated version of Complainant’s mark, combined with a generic term - “careers” - and the gTLD “.com” in the disputed domain <continentalaircareers.com> (also used for fraudulent job postings) was confusingly similar to Complainant’s mark).
b) Respondent Has No Rights Or Legitimate Interest In The Domain Name
20. Respondent clearly has no rights or legitimate interest in the Domain Names for the following reasons.
21. First, Respondent’s registration and use of the Domain Names to pose as a non-existent subsidiary of PNC does not, and cannot, constitute a bona fide offering of goods or services pursuant to Section 4(c)(i) of the UDRP. Numerous Panel decisions have held that a domain registrant’s attempts to impersonate a brand owner for fraudulent activities does not constitute a bona fide offering of goods or services. Finally, Respondent’s activities cannot constitute fair use under the UDRP. See Emaar Properties PJSC v. Castillos / Hector Castillos (NAF FA1211001472933) (“The Panel finds that Respondent’s use of the disputed domain name to attempt to pass itself off as Complainant is 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 Am. Int’l Group, Inc. v. Busby (NAF FA156251) (“In effect, Respondent attempted to pass itself off as Complainant online. Such blatant unauthorized use of Complainant’s mark is evidence that Respondent has no rights or legitimate interests in the disputed domain name.”); see Allianz of Am. Corp. v. Bond (NAF FA690796) (respondent’s use of ALLIANZCORP.BIZ domain name to fraudulently acquire personal information of Internet users was not bona fide offering of goods or services or legitimate noncommercial or fair use of disputed domain name pursuant to Policy); Juno Online Servs., Inc. v. Nelson (NAF FA241972) (using a domain name in fraudulent scheme to deceive Internet users into providing personal information is not bona fide offering of goods or services or legitimate noncommercial or fair use); see, Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. n/A a/k/a james valdeshi and Serified Systems a/k/a ozkiegb (NAF FA0808001220460) (“Complainant asserts that the disputed domain names resolve to websites that imitate sections of Complainant’s <toshiba.co.uk> website, in an attempt to ‘recruit individuals for a money-laundering scam.’ The Panel finds that the imitation of Complainant’s website, designed so that Respondent may pass itself off as Complainant for fraudulent commercial gain, utterly 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).”); Century 21 Real Estate LLC v. David Stevens (FA1208001456741) (finding no bona fide offering of goods or services where Respondent used the domain name to pose as Complainant through an e-mail address associated with the disputed domain name (i.e., jobs@century21-hr.com) to send internet users personal information questionnaires and job descriptions; Blackstone TM L.L.C. v. Mita Irelant Ltd. (FA1314998) (“The Panel finds that Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”); See Vivendi Universal Games v. Ballard (NAF FA146621) (stating that where the respondent copied the complainant’s website in order to steal account information from the complainant’s customers, the respondent’s “exploitation of the goodwill and consumer trust surrounding the BLIZZARD NORTH mark to aid in its illegal activities is prima facie evidence of a lack of rights and legitimate interests in the disputed domain name”); see also Crow v. LOVEARTH.net (NAF FA203208) (“It is neither a bona fide offerings [sic] of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶4(c)(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant…”).
22. In addition, Respondent is not - and has not been - commonly known by the Domain Names. Nothing in Respondent’s WHOIS information or the record demonstrates that Respondent is commonly known by the Domain Names, and Complainant has not authorized Respondent to use its PNC Marks. Indeed, given the fame of Complainant’s PNC Marks, Respondent could not be known by the Domain Name. See, e.g., PNC v. Paksys Consulting (NAF FA0201000103523) (finding Complainant’s PNC and PNC BANK marks “are so unique and well known in the business world that there could be no use of them by [respondent] that would constitute a good faith use.”); H-D Michigan v. Registrant (NAF FA0711001109413) (holding respondent had no rights or legitimate interests under Section 4(c)(ii) because the WHOIS information does not indicate respondent is commonly known by the disputed domain name and because complainant did not authorize respondent to use its mark); Twentieth Century Fox Film Corporation v. Leverett Consulting (NAF FA0410000338370) (holding respondent did not establish rights or legitimate interests in the disputed domain names because there was no proof in the record that respondent was known by the domain names and because complainant did not authorize or license respondent to use its FOX SPORTS RADIO and FOX SPORTS marks).
c) Respondent’s Registration and Use of the Domain Name in Bad Faith
23. Respondent’s registration and use of the Domain Names squarely meet the grounds of bad faith outlined in UDRP Section 4(b), as well as additional grounds of bad faith defined in previous UDRP decisions.
24. First, Respondent’s registration and use of the Domain Names meet the bad-faith element set forth in Section 4(b)(iv) of the UDRP. Specifically, Respondent uses the Domain Names to intentionally attract internet users for commercial gain by creating a likelihood of confusion with Complainant and its PNC Marks as to the source, sponsorship, affiliation, and endorsement of Respondent’s services. Indeed, as discussed above, Respondent’s website seeks to impersonate PNC and falsely suggest that the website was maintained by, sponsored by or affiliated with Complainant. UDRP Panels have consistently held that such fraudulent activities constitute bad faith. See Am. Int’l Group, Inc. v. Busby (NAF FA156251) (finding that disputed domain name was registered and used in bad faith where respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”); see Morgan Stanley v. Morgan Stanley IT Tech c/o Andries deHaan (NAF FA1212001476237) (“Such false association and passing off in violation of Complainant’s intellectual property rights is further evidence of bad faith use and registration of the disputed domain name.”); see Continental Airlines Inc. v. Carolyn Reeves (FA0805001183179) (Respondent is using the <continentalaircareers.com> domain name to pass itself off as Complainant by imitating Complainant’s official employment website and creating a likelihood of confusion in order to obtain personal information from unknowing Internet users for Respondent’s commercial gain. The Panel finds such use constitutes bad faith registration and use pursuant to Policy ¶4(b)(iv).”); see also Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. ICN-Toshiba (WIPO D2004-0941) (“The [r]espondent’s use of the disputed domain name has all the hallmarks of bad faith. The incorporation of the trademark in the domain name, the use of the mark on the website and the website layout similar to Toshiba’s authorized websites, the use of the business name, are together calculated to create confusion or deception as to the existence of some connection by way of sponsorship, endorsement, sanction or control between the Complainant and the website to which the disputed domain name resolves (see Paragraph 4(b)(iv) of the Policy)”).
25. Second, Respondent’s registration and fraudulent use of the Domain Names meet the bad-faith element set forth in Section 4(b)(iii) of the UDRP because Respondent is unfairly disrupting PNC’s business, tarnishing the PNC Marks, and duping consumers into transacting business with Respondent when they believe they are in fact being offered investment services through PNC. Specifically, Complainant has learned of at least one instance where a high net-worth entity sought to enter into an investment transaction with Respondent, believing that Respondent was a legitimate subsidiary of PNC, only to learn later that Respondent has no such connection with PNC and that Respondent falsified various documents (including letters of credit) to induce this entity into transacting with Respondent. PNC has fielded and responded to inquiries from individuals and entities whom Respondent attempted to defraud by masquerading as a legitimate PNC subsidiary. Respondent’s imposter activities constitute clear evidence of bad faith use and registration of the Domain Names. See, e.g., Continental Airlines Inc. v. Carolyn Reeves (FA0805001183179) (“The Panel finds that Respondent’s use of the <continentalaircareers.com> domain name in association with fraudulent e-mails to participate in phishing activities is further evidence of bad faith registration and use.); Juno Online Servs., Inc. v. Iza (NAF FA245960) (finding that using a domain name that “is confusingly similar to Complainant’s mark, redirects Internet users to a website that imitates Complainant’s billing website, and is used to fraudulently acquire personal information from Complainant’s clients” is evidence of bad faith registration and use); Capital One Fin. Corp. v. Howel (NAF FA289304) (finding bad faith registration and use because the respondent used the domain name to redirect Internet users to a website that imitated the complainant’s website and to fraudulently acquire personal information from the complainant’s clients); American International Group, Inc. v. Busby (NAF FA0304000156251) (holding respondent’s use of the domain name <aig-ma.com> for a website “giving every appearance of being associated or affiliated with [c]omplainant’s business” thereby “perpetrat[ing] a fraud” constitutes bad faith); Yahoo! Inc. v. Richard Dank (NAF FA0310000203169) (finding the respondent’s use of the disputed domain name for an information theft scam and illegal commercial gain constituted bad faith); Goldfinger Bullion Reserve Corp. v. no c/o Raymond DeYoung (NAF FA0304000155893) (ordering the domain name transferred on the basis of the complainant’s uncontradicted evidence that the domain name was used in bad faith for a theft scam).
26. In addition, there is no question that Respondent had knowledge of Complainant’s rights in the PNC Marks when he registered and used the Domain Names because Respondent has been using PNC’s street address, website URL, and e-mail contact information on his own fraudulent website. By registering the Domain Names with knowledge of Complainant’s rights in its PNC Marks, and then making infringing use of the PNC Marks on his fraudulent website, Respondent acted in bad faith. Registration of a domain name with knowledge of the trademark owner’s rights has been consistently found to constitute bad faith under the UDRP. See Morgan Stanley v. Morgan Stanley IT Tech c/o Andries deHaan (NAF FA1212001476237) (finding that Respondent had actual notice of Complainant's mark based upon Respondent’s copying of Complainant’s logo, phishing, and providing false contact information to impersonate Complainant.”); see Johnson Financial Group, Inc. v. Janssen (NAF FA0311000214465) (holding “[R]espondent’s attempt to pass itself off as [c]omplainant by copying graphics and text from [c]omplainant’s website demonstrates [r]espondent’s bad faith registration and use of the <johnsonsgroup.net> and <johnson-latin.com> domain names under Policy ¶4(a)(iii).”); MO Media LLC v. NeXt Age Technologies LTD (NAF FA031200022031) (holding respondent’s use of the domain names for wholesale copied versions of complainant’s websites “creates a likelihood of confusion in the minds of Internet users as to whether [c]omplainant sponsors [r]espondent’s websites, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”); see The PNC Financial Services Group v. Online Management (NAF FA1309001517908) (“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).”); PNC v. Unasi (NAF FA0508000535925) (finding respondent registered the domain name <pnccredit.com> among others in bad faith because “Complainant has acquired substantial goodwill in its marks, causing the public to associate the PNC, PNCBANK and PNCBANK.COM marks with Complainant’s goods and services. In light of these circumstances, the Panel finds that Respondent chose the disputed domain names due to the fame of Complainant’s marks. Respondent’s registration of domain names that contain Complainant’s marks despite Respondent’s knowledge of Complainant’s rights in the marks is evidence of bad faith registration and use pursuant to Policy ¶4(a)(iii).”); PNC v. MMC - Millennium Marketing Concepts (NAF FA0502000425400) (finding respondent “chose the disputed domain name [<pncbankartscenter.com>] based on the distinctive and well-known qualities of Complainant’s mark” and registered the domain name in bad faith because “Respondent’s use of several of Complainant’s PNC-related marks on its website and Complainant’s registration of its PNCBANK.COM mark and numerous other marks with the USPTO suggests that Respondent had knowledge of Complainant’s rights when Respondent registered the domain name.”); PNC v. Khan (WIPO D2002-0701) (holding respondent registered the domain name <pncpark.com> in bad faith due to “the widely used and well-known character of the PNC mark”).
27. Finally, Respondent registered the Domain Names nearly three decades after the issuance of PNC’s federal registration for its PNC mark. Complainant’s federal registrations for its PNC mark constituted constructive notice of its rights in the PNC mark, as did the registration of Complainant’s other federally-registered PNC Marks. Respondent’s registration of domain names nearly thirty years after Complainant’s first use date of its PNC mark constitutes bad faith registration. See Orange Glo Int’l v. Blume (NAF FA118313) (“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO, a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof.”); see also Digi Int’l v. DDI Sys. (NAF FA124506) (holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”).
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 Complainant to prove the following three elements to obtain an order cancelling or transferring a domain name:
(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 is one of the largest national diversified financial service organizations in the United States. Complainant provides retail banking, corporate and institutional banking, residential mortgage banking, and asset management services. Complainant has rights in the PNC mark pursuant to Policy ¶4(a)(i). Complainant registered the PNC mark with the United States Patent & Trademark Office (“USPTO”) (Reg. No. 1,416,898 registered November 11, 1986). Prior panels have continuously found providing evidence of a registration for a mark with the USPTO is normally sufficient to demonstrate rights in a given mark. 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.”). This Panel agrees and finds the USPTO registration is sufficient evidence of Policy ¶4(a)(i) rights in the PNC mark, even though Respondent lives in Korea. See, e.g., W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶4(a)(i)] rights even when Respondent lives or operates in a different country.”).
Complainant claims Respondent’s <pncib.com> and <capitalofpnc.com> domain names are confusingly similar to Complainant’s PNC mark under Policy ¶¶4(a)(i). Respondent’s <pncib.com> disputed domain name contains Complainant’s PNC mark in its entirety, with the addition of the generic terms “ib” (possibly standing for “investment bank”, a description of one of Complainant’s businesses). Respondent includes the gTLD “.com.” Similarly, Respondent’s <capitalofpnc.com> domain name is confusingly similar to Complainant’s PNC mark because it adds the generic term “capital” and “of.” Respondent includes the gTLD “.com” in the second disputed domain name. Respondent’s use of the generic words “capital” and “ib” are specifically intended to be confusingly similar to Complainant’s PNC marks because they are associated with financial services Complainant provides. Adding generic words and a gTLD is an insufficient method for escaping a finding of confusingly similar under Policy ¶4(a)(i). See Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the subject domain name incorporates the VIAGRA mark in its entirety, and deviates only by the addition of the word “bomb,” the domain name is rendered confusingly similar to the complainant’s mark). The Panel finds Respondent’s <pncib.com> and <capitalofpnc.com> domain names are confusingly similar to Complainant’s PNC mark under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has 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 claims Respondent has no rights or legitimate interests in the <pncib.com> and <capitalofpnc.com> domain names and Respondent is not commonly known by these disputed domain names. Nothing in Respondent’s WHOIS information or anywhere else on the record suggests Respondent is commonly known by the disputed domain names. The WHOIS information for Respondent’s <pncib.com> and <capitalofpnc.com> domain names lists “Danie Lee” or “Daniel Lee” (respectively) as registrant. Complainant has not authorized Respondent to use its PNC mark in any way. A respondent is not commonly known by a disputed domain name where it is not authorized by complainant to use complainant’s mark, the WHOIS information show no relationship to the disputed domain names, and there is no other evidence the respondent is commonly known by the disputed domain name. See 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 Panel finds Respondent is not commonly known by the disputed domain names under Policy ¶4(c)(ii).
Secondly, Complainant claims Respondent is not making a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the <pncib.com> and <capitalofpnc.com> domain names under Policy ¶4(c)(i) or ¶4(c)(iii). Respondent registered the disputed domain names to pose as a non-existent subsidiary of Complainant to deceive consumers (and prospective customers) into engaging in fraudulent financial transactions. Respondent’s disputed domain names resolve to a website displaying Complainant’s own street address and the website URL for Complainant’s owns official website. Respondent also uses the same e-mail shown on Complainant’s own website for Complainant’s PNC Capital Advisors division. Respondent copied Complainant’s business plan from Complainant’s official website, as well as text and information from various other third-party financial and investment websites. Complainant claims Respondent is attempting to pass itself off as Complainant to engage in fraudulent activity. The Panel agrees. Using a disputed domain name to pass off one’s self as someone else is not a bona fide offering of goods or services, or a legitimate noncommercial or fair use of a domain name. See Mortgage Research Center LLC v. Miranda, FA 993017 (Nat. Arb. Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for a bona fide offering of goods or services pursuant to Policy ¶4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”). The Panel finds Respondent has no rights or legitimate interests in the <pncib.com> and <capitalofpnc.com> domain names under Policy ¶4(c)(i) or ¶4(c)(iii).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent has registered and is using the <pncib.com> and <capitalofpnc.com> domain names in bad faith under Policy ¶4(b)(iii). Respondent unfairly disrupts Complainant’s business by attempting to pass itself off as Complainant. Respondent is luring Complainant’s clients away by impersonating a legitimate subsidiary of Complainant (when Respondent is not a subsidiary at all). Respondent uses the same street address and contact information as Complainant’s real business. It is bad faith when a respondent uses a confusingly similar domain name to operate a competing website, because it disrupts a complainant’s lawful business. See Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶4(b)(iii) by redirecting Internet users to the respondent’s competing website). The Panel finds Respondent has registered and is using the <pncib.com> and <capitalofpnc.com> domain names in bad faith under Policy ¶4(b)(iii).
Respondent registered and is using the <pncib.com> and <capitalofpnc.com> domain names in bad faith under Policy ¶4(b)(iv). Respondent uses the disputed domain names attempts to confuse Internet users and attract them to Respondent’s resolving website for commercial gain. Respondent’s resolving website impersonates Complainant by providing contact information identical to Complainant’s actual contact information in order to pass itself off as Complainant’s subsidiary, which it is not. Respondent has gone so far as to falsify various documents including letters of credit to induce Complainant’s clients into transactions with Respondent. Impersonating a complainant constitutes bad faith use and registration of a domain name under Policy ¶4(b)(iv). 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). The Panel finds Respondent registered and is using the <pncib.com> and <capitalofpnc.com> domain names in bad faith under Policy ¶4(b)(iv).
Respondent had knowledge of Complainant’s rights in the PNC marks when it registered the disputed domain names. Respondent registered the disputed domain names three decades after the issuance of Complainant’s registration with the USPTO. Respondent used the same street address as Complainant as well as the same website URL and e-mail contact information on its website. Respondent copied text from Complainant’s web site. It is clear Respondent had actual knowledge of Complainant's rights in the mark. The conclusion Respondent registered the disputed domain names in bad faith under Policy ¶4(a)(iii) is inescapable. See 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).
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <pncib.com> and <capitalofpnc.com> domain names be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Monday, January 20, 2014
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page