The PNC Financial Services Group, Inc. v.
MMC-Millennium Marketing Concepts
Claim Number: FA0502000425400
Complainant is The PNC Financial Services Group, Inc. (“Complainant”),
represented by Mark Sommers, of Finnegan Henderson Farabow Garrett &
Dunner L.L.P., 901 New York Avenue Nw, Washington, DC 20001. Respondent is MMC-Millennium Marketing Concepts (“Respondent”), PO Box 232, Sea
Girt, NJ 08750.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <pncbankartscenter.com>,
registered with Network Solutions.
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.
Judge
Harold Kalina (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on February
18, 2005; the National Arbitration Forum received a hard copy of the Complaint
on February 21, 2005.
On
February 22, 2005, Network Solutions confirmed by e-mail to the National
Arbitration Forum that the domain name <pncbankartscenter.com>
is registered with Network Solutions and that Respondent is the current
registrant of the name. Network Solutions has verified that Respondent is bound
by the Network Solutions registration agreement and has thereby agreed to
resolve domain-name disputes brought by third parties in accordance with
ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On
February 24, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of March 16, 2005 by which Respondent could file a Response to the
Complaint, was transmitted to Respondent via e-mail, post and fax, to all
entities and persons listed on Respondent's registration as technical,
administrative and billing contacts, and to postmaster@pncbankartscenter.com by
e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
March 21, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed Judge Harold
Kalina (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." Therefore, the Panel may issue its decision
based on the documents submitted and in accordance with the ICANN Policy, ICANN
Rules, the National Arbitration Forum's Supplemental Rules and any rules and
principles of law that the Panel deems applicable, without the benefit of any
Response from Respondent.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <pncbankartscenter.com> domain name is confusingly similar to
Complainant’s PNCBANK.COM mark.
2. Respondent does not have any rights or
legitimate interests in the <pncbankartscenter.com>
domain name.
3. Respondent registered and used the <pncbankartscenter.com> domain
name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, The
PNC Financial Services Group, Inc., is a national diversified financial service
organization, which provides regional banking, corporate banking, real estate
finance, asset-based lending, private banking, asset management and global fund
services.
Complainant
holds registrations with the United States Patent and Trademark Office
(“USPTO”) for several PNC-related marks, including PNC (Reg. No. 1,416,898
issued November 11, 1986 and Reg. No. 2,508,843 issued November 20, 2001),
PNCBANK (Reg. No. 1,863,331 issued November 15, 1994) and PNCBANK.COM (Reg. No.
2,188,742 issued September 15, 1998) among others.
Complainant
spends significant amounts of money each year to advertise and promote its
marks. As of December 31, 2004,
Complainant’s consolidated assets totaled more than $70 billion. Furthermore, Complainant has extensively
promoted its products and services under its marks for years at its website
located at the <pnc.com> and <pncbank.com> domain names.
The PNC Bank
Arts Center has been the name of the New Jersey Highway Authority’s
amphitheater since July 25, 1998. This
amphitheatre ranks amongh the top five most successful amphitheatres in the
world; Complainant has established common-law trademark rights in the PNC BANK
ARTS CENTER mark.
Respondent
registered the <pncbankartscenter.com>
domain name on May 2, 1999. Respondent
is using the domain name to link to a website that displays advertisements for
entertainment and concert tickets that relate directly to the PNC Bank Arts
Center amphitheatre as well as numerous unrelated links. Additionally, the website lists various
links that include Complainant’s PNC-related marks, but the links direct users
to products and services in competition with Complainant. Furthermore, David Lazar, Respondent’s
administrative contact for the disputed domain name owns a company that offers
Internet marketing services, including services to maximize pay-per-click
commissions with the advertising programs of Google and Overture, two of the
largest pay-per-click providers.
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."
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.
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.
Complainant has
established in this proceeding that it has presumptive rights in the
PNCBANK.COM mark through registration with the United States Patent and
Trademark Office. See Men’s Wearhouse, Inc. v.
Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark
law, registered marks hold a presumption that they are inherently distinctive
and have acquired secondary meaning.”); see
also Janus Int’l Holding Co. v.
Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions
have held that registration of a mark is prima
facie evidence of validity, which creates a rebuttable presumption that the
mark is inherently distinctive. Respondent
has the burden of refuting this assumption).
The <pncbankartscenter.com> domain
name registered by Respondent is confusingly similar to Complainant’s
PNCBANK.COM mark because the domain name incorporates Complainant’s mark in its
entirety and adds the generic or descriptive terms “arts” and “center.” Furthermore, the terms added by Respondent
refer to the PNC Bank Arts Center, which Complainant owns (and in which
Complainant has common law trademark rights).
The Panel finds that adding generic or descriptive terms to
Complainant’s registered mark is insufficient to distinguish the domain name
and negate a finding of confusing similarity.
See Nikon, Inc. v. Technilab, Inc., D2000-1774 (WIPO Feb. 26, 2001)
(holding that confusing similarity under the Policy is decided upon the
inclusion of a trademark in the domain name rather than upon the likelihood of
confusion test under U.S. trademark law); see
also AXA China Region Ltd. v. KANNET
Ltd., D2000-1377 (WIPO Nov. 29, 2000) (finding that common geographic
qualifiers or generic nouns can rarely be relied upon to differentiate the mark
if the other elements of the domain name comprise a mark or marks in which
another party has rights).
Accordingly, the
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent has
failed to respond to the allegations set forth by Complainant in the
Complaint. In this circumstance, the
Panel is entitled to accept all reasonable allegations and inferences in the
Complaint as true. See Desotec N.V. v. Jacobi
Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to
respond allows a presumption that Complainant’s allegations are true unless
clearly contradicted by the evidence); see
also Ziegenfelder Co. v. VMH Enter.,
Inc., D2000-0039 (WIPO Mar. 14, 2000) (drawing two inferences based on
Respondent’s failure to respond: (1) Respondent does not deny the facts
asserted by Complainant, and (2) Respondent does not deny conclusions which
Complainant asserts can be drawn from the facts).
Complainant
asserts that Respondent does not have rights or legitimate interests in the <pncbankartscenter.com> domain
name that contains Complainant’s PNCBANK.COM mark in its entirety. Once Complainant makes a prima facie case in support of its
allegations, the burden is shifted to Respondent to show that it does have
rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). However, Respondent has not responded to
Complainant’s allegations and has, thus, presented no proof of Respondent’s
rights or legitimate interests.
Therefore, due to Respondent’s failure to respond to the Complaint, the
Panel will assume that Respondent lacks rights and legitimate interests in the
disputed domain name. See Do
The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding
that once Complainant asserts that Respondent has no rights or legitimate
interests with respect to the domain, the burden shifts to Respondent to
provide credible evidence that substantiates its claim of rights and legitimate
interests in the domain name); see also
Parfums Christian Dior v. QTR Corp.,
D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response,
Respondent has failed to invoke any circumstance which could demonstrate any
rights or legitimate interests in the domain name).
The <pncbankartscenter.com> domain
name diverts Internet users to a website that advertises entertainment and
concert tickets that relate directly to the PNC Bank Arts Center amphitheatre
as well as links to products and services unrelated to Complainant. The website also displays several hyperlinks
for Complainant that redirect Internet users to lists of links for products and
services that compete with Complainant in addition to some unrelated products
and services. Complainant alleges, and
the Panel agrees, that Respondent generates commissions via the links on
Respondent’s website. Therefore, the
Panel concludes that Respondent’s use of the disputed domain name to misdirect
Internet users searching for Complainant’s products and services to
Respondent’s website where Respondent earns pay-per-click fees is not a use in
connection with a bona fide offering
of goods or services pursuant to Policy ¶ 4(a)(i). Furthermore, since Respondent is using the domain name in
association with a commercial website, Respondent’s use of the domain name is
not in connection with a legitimate noncommercial or fair use pursuant to
Policy ¶ 4(c)(iii). See WeddingChannel.com
Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that
Respondent’s use of the
disputed domain name to redirect Internet users to websites unrelated to
Complainant’s mark, websites where Respondent presumably receives a referral
fee for each misdirected Internet user, was not a bona fide offering of goods
or services as contemplated by the Policy); see
also Black & Decker Corp. v. Clinical
Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that
Respondent’s use of the disputed domain name to redirect Internet users to
commercial websites, unrelated to Complainant and presumably with the purpose
of earning a commission or pay-per-click referral fee did not evidence rights
or legitimate interests in the domain name); see also TM Acquisition Corp.
v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that
Respondent’s diversionary use of Complainant’s marks to send Internet users to
a website which displayed a series of links, some of which linked to
competitors of Complainant, was not a bona fide offering of goods or services).
Complainant
asserts that Respondent is not and has not been commonly known by the <pncbankartscenter.com> domain
name. Complainant further contends that
it did not authorize Respondent to use its PNCBANK.COM mark or any version of
its PNC marks. The Panel finds that
there is nothing in the record to contest Complainant’s assertions and that
Respondent has failed to provide any evidence of any rights or legitimate
interests in the domain name.
Therefore, it is the Panel’s determination that Respondent lacks rights
and legitimate interests in the disputed domain name pursuant to Policy ¶
4(c)(ii). See Compagnie de Saint Gobain
v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or
legitimate interests where Respondent was not commonly known by the mark and
never applied for a license or permission from Complainant to use the
trademarked name); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no
rights or legitimate interests where (1) Respondent is not a licensee of
Complainant; (2) Complainant’s rights in the mark precede Respondent’s
registration; (3) Respondent is not commonly known by the domain name in
question).
Thus, the Panel
finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is
using the <pncbankartscenter.com>
domain name in an attempt to profit by intentionally attracting Internet users
interested in locating Complainant’s products and services. Respondent presumably derives commercial
benefit from these intentional diversions through click-through fees from
redirecting Internet users to other commercial websites, some of which offer
competing financial services and products.
Thus, the Panel concludes that Respondent’s attempts to divert Internet
users for commercial gain by attracting Internet users to Respondent’s website
through a likelihood of confusion with Complainant’s PNCBANK.COM mark and
related marks is evidence of bad faith registration and use pursuant to Policy
¶ 4(b)(iv). See Kmart v. Khan, FA
127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from
its diversionary use of Complainant's mark when the domain name resolves to
commercial websites and Respondent fails to contest the Complaint, it may be
concluded that Respondent is using the domain name in bad faith pursuant to
Policy ¶ 4(b)(iv)); see also G.D. Searle & Co. v. Celebrex Drugstore,
FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered
and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because
Respondent was using the confusingly similar domain name to attract Internet
users to its commercial website).
Although
evidence of bad faith registration and use may be shown by proving the
existence of any of the four circumstances listed under Policy ¶ 4(b), the
Panel is entitled to consider other factors in support of its finding of bad
faith registration and use. See Twentieth
Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000)
(finding that, in determining if a domain name has been registered in bad
faith, the Panel must look at the “totality of circumstances”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000)
(“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative,
rather than exclusive.”).
Complainant
asserts that Respondent was on notice about Complainant’s rights in the
PNCBANK.COM mark and other PNC-related marks when Respondent registered the <pncbankartscenter.com> domain
name, which contains Respondent’s PNCBANK.COM mark in its entirety. Furthermore, 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. Additionally, Respondent’s
address is listed in New Jersey, which is where Complainant’s PNC Bank Arts
Center is located. Under these
circumstances, the Panel finds that Respondent chose the disputed domain name
based on the distinctive and well-known qualities of Complainant’s mark and
that registering a domain name incorporating Complainant’s mark with knowledge
of Complainant’s rights in the mark is evidence of bad faith registration and
use pursuant to Policy ¶ 4(a)(iii). See Entrepreneur
Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th
Cir. 2002) ("Where an alleged infringer chooses a mark he knows to be
similar to another, one can infer an intent to confuse."); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr.
17, 2000) (finding that evidence of bad faith includes actual or constructive
knowledge of a commonly known mark at the time of registration); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002)
(“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.”).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <pncbankartscenter.com>
domain name be TRANSFERRED from
Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated:
April 4, 2005
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