The PNC Financial Services Group, Inc. v. hsk, hsk
Claim Number: FA1502001603548
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 hsk, hsk (“Respondent”), South Korea.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pncibk.com>, registered with Whois Networks Co., Ltd.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 5, 2015; the Forum received payment on February 5, 2015. The Complaint was submitted in both English and Korean.
On February 5, 2015, Whois Networks Co., Ltd. confirmed by e-mail to the Forum that the <pncibk.com> domain name is registered with Whois Networks Co., Ltd. and that Respondent is the current registrant of the name. Whois Networks Co., Ltd. has verified that Respondent is bound by the Whois Networks 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 February 16, 2015, the Forum served the Korean language Complaint and all Annexes, including a Korean Written Notice of the Complaint, setting a deadline of March 9, 2015 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@pncibk.com. Also on February 16, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On March 17, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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’s Contentions
1. Complainant owns the PNC mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,416,898, registered Nov. 11, 1986). Complainant uses the PNC mark in connection with its retail banking, corporate and institutional banking, residential mortgage banking, and asset management services. The <pncibk.com> domain name is confusingly similar to the PNC mark. The domain name includes a descriptive acronym “ibk” and adds a generic top-level domain (“gTLD”) “.com” to the domain name.
2. Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, as the WHOIS record for the disputed domain name does not reflect that Respondent is commonly known by the disputed domain name. Further, Complainant has never authorized Respondent to use the PNC trademark. Respondent’s lack of rights or legitimate interests in the <pncibk.com> domain name is made evident by Respondent’s failure to use the disputed domain name in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Respondent uses the <pncibk.com> domain name to impersonate Complainant and attempts to pose as a Korean subsidiary of Complainant.
3. Respondent has engaged in bad faith registration and use of the <pncibk.com> domain name. Respondent has engaged in a pattern of bad faith registration and use of domain name under Policy ¶ 4(b)(ii). Further, Respondent’s registration and use of the disputed domain name disrupts Complainant’s business by misleading Complainant’s consumers. Additionally, Respondent uses the domain name to intentionally attract, for commercial gain, Internet users through a likelihood of confusion with Complainant. Finally, Respondent had knowledge of Complainant’s rights in the PNC mark when it registered the disputed domain name, which is further evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii).
B. Respondent’s Contentions
1. Respondent did not submit a response.
LANGUAGE OF THE PROCEEDINGS
The Registration Agreement is written in Korean, thereby making Korean the language of the proceedings. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Korean language Complaint and Commencement Notification, and, absent a Response, concludes that the remainder of the proceedings may be conducted in English.
1. Respondent’s <pncibk.com> domain name is confusingly similar to Complainant’s PNC mark.
2. Respondent does not have any rights or legitimate interests in the <pncibk.com> domain name.
3. Respondent registered or used the <pncibk.com> domain name 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 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 owns the PNC mark through its registration with the USPTO (e.g., Reg. No. 1,416,898, registered Nov. 11, 1986). Complainant states that it uses the PNC mark in connection with its retail banking, corporate and institutional banking, residential mortgage banking, and asset management services. Prior panels have concluded that registration of a mark with a trademark authority is sufficient to establish rights in the mark pursuant to Policy ¶ 4(a)(i), even when respondent does not reside in the country where the mark is registered. 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 Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). Accordingly, even though Respondent reportedly resides in Seoul, South Korea, the Panel finds that Complainant’s USPTO registration is sufficient under Policy ¶ 4(a)(i).
Complainant asserts that the <pncibk.com> domain name is confusingly similar to the PNC mark. The domain name includes a descriptive acronym “ibk” and adds the gTLD “.com” to the domain name. Complainant reasons that the acronym “ibk” presumably stands for “Investment Bank of Korea.” Past panels have found that the addition of a descriptive word or acronym does not sufficiently distinguish the disputed domain name from the registered mark. Further, past panels have also found that the addition of a gTLD does nothing to negate confusing similarity. See Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007) (“The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).”). As such, this Panel determines that the disputed domain name is confusingly similar under Policy ¶ 4(a)(i).
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 asserts that Respondent has no rights or legitimate interests in the disputed domain name. Specifically, Complainant argues that Respondent is not commonly known by the disputed domain name, as the WHOIS record for the disputed domain name does not reflect that Respondent is commonly known by the disputed domain name. The Panel notes that the WHOIS information for the disputed domain name lists “hsk” as the registrant of record. See Compl., at Attached Ex. 2. Further, Complainant argues it has never authorized Respondent to use the PNC trademark. The Panel agrees that these contentions are sufficient to establish Respondent’s lack of rights to the disputed domain name under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant asserts that Respondent’s lack of rights or legitimate interests in the <pncibk.com> domain name is made evident by Respondent’s failure to use the disputed domain name in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Respondent uses the <pncibk.com> domain name to impersonate Complainant and attempts to pose as a Korean subsidiary of Complainant. According to Complainant, Respondent attempts to pass itself off as Complainant or an affiliate of Complainant by displaying web content such as “PNC Investment & Capital Inc.” and “”PNC Capital Co.” on its resolving website. See Compl., at Attached Ex. 8. Past panels have held that a respondent’s attempt to pass itself off as complainant’s business does not constitute a bona fide offering of goods or services. See Crow v. LOVEARTH.net, FA 203208 (Nat. Arb. Forum Nov. 28, 2003) (“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 . . . .”). The Panel concludes that Respondent’s actions here are not a bona fide offering of goods or services under Policy ¶ 4(c)(i). Further, the Panel agrees that as Respondent here presumably attempts to profit through consumer confusion, there can logically be no “noncommercial or fair use” pursuant to Policy ¶ 4(c)(iii). The Panel therefore concludes that Respondent has no rights or legitimate interests in the <pncibk.com> domain name under Policy ¶¶ 4(c)(i) or (c)(iii).
Complainant contends that Respondent has engaged in bad faith registration and use of the <pncibk.com> domain name and has engaged in a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii). According to Complainant, Respondent has been involved in at least one prior UDRP decision that resulted in a finding of bad faith or transfer. Specifically, Complainant asserts that “hsk, hsk” is actually “Daniel Lee,” a respondent in a previous action brought by Complainant where Complainant prevailed. In the present matter, “Daniel Lee” is the “ President and Chief Executive Officer” of the business associated with <pncibk.com>. See Compl., at Attached Ex. 9. Previous panels have found that having a pattern of prior UDRP decisions that result in findings of bad faith or transfer indicate a respondent’s bad faith registration. See TRAVELOCITY.COM LP v. Aziz, FA 1260783 (Nat. Arb. Forum June 16, 2009) (“These previous [UDRP] decisions demonstrate a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii).”). The Panel believes that such evidence represents a pattern of behavior by Respondent, and that “hsk, hsk” is actually “Daniel Lee” as argued by Complainant, and the Panel finds that Respondent has engaged in bad faith under Policy ¶ 4(b)(ii).
Further, Complainant argues that Respondent’s registration and use of the disputed domain name disrupts Complainant’s business by misleading Complainant’s consumers pursuant to Policy ¶ 4(b)(iii). Complainant asserts that the fraudulent use of the disputed domain name tarnishes the PNC mark and misleads consumers into doing business with Respondent when they mistakenly believe they are being offered services by Complainant. Past panels have agreed that this behavior is disruptive to Complainant’s business and is evidence of bad faith registration and use. See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). The Panel finds that Respondent’s disruptive use of the disputed domain name competes with Complainant and is evidence of bad faith under Policy ¶ 4(b)(iii).
Additionally, Complainant asserts that Respondent uses the domain name to intentionally attract, for commercial gain, Internet users through a likelihood of confusion with Complainant. Complainant argues that Respondent’s resolving website seeks to impersonate Complainant and suggests that the website is maintained, sponsored, or affiliated with Complainant. Prior Panels have held that this type of fraudulent “passing off” activity constitutes bad faith pursuant to Policy ¶ 4(b)(iv). See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark). As Respondent here purports to offer the same services as Complainant under Complainant’s registered mark, the Panel finds that Respondent has engaged in bad faith use under Policy ¶ 4(b)(iv).
Finally, Complainant contends that Respondent had knowledge of Complainant’s rights in the PNC mark when it registered the disputed domain name, which is further evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii). According to Complainant, Respondent uses Complainant’s street address, website URL, and e-mail contact information on its resolving website. See Compl., at Attached Ex. 8. Complainant asserts that Respondent acted in bad faith under Policy ¶ 4(a)(iii). The Panel here finds that any arguments of bad faith based on constructive notice are irrelevant, however, because UDRP case precedent declines to find bad faith as a result of constructive knowledge. 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."). The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and find that actual knowledge is adequate evidence of bad faith registration under Policy ¶ 4(a)(iii). See Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Nat. Arb. Forum Mar. 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <pncibk.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: March 30, 2015
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page