The PNC Financial Services Group, Inc. v.
IDLRG
Claim
Number: FA0506000495473
Complainant, The PNC Financial Services Group, Inc. (“Complainant”),
is represented by Mark Sommers of Finnegan Henderson Farabow Garrett & Dunner LLP, 901 New York Avenue NW, Washington,
DC 20001, USA. Respondent is IDLRG (“Respondent”), Kalian, P.O. Bhilowal, Hoshiarpur, Punjab 146104,
INDIA.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <pncbankcreditcard.com>, registered with DotRegistrar.
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.
Honorable
Paul A. Dorf (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on June
13, 2005; the National Arbitration Forum received a hard copy of the Complaint
on June 14, 2005.
On
June 15, 2005, DotRegistrar confirmed by e-mail to the National Arbitration
Forum that the domain name <pncbankcreditcard.com> is registered
with DotRegistrar and that Respondent is the current registrant of the
name. DotRegistrar has verified that
Respondent is bound by the DotRegistrar 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
June 16, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
July 6, 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@pncbankcreditcard.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
July 11, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed Honorable Paul
A. Dorf (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 <pncbankcreditcard.com>
domain name is confusingly similar to Complainant’s PNC, PNCBANK, and
PNCBANK.COM marks.
2. Respondent does not have any rights or
legitimate interests in the <pncbankcreditcard.com> domain name.
3. Respondent registered and used the <pncbankcreditcard.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, PNC
Financial Services Group Inc., is one of the largest national diversified
financial service organizations in the United States. Complainant offers a full range of banking and financial
services, including the bankcards for individuals and businesses. Complainant advertises and promotes its PNC,
PNCBANK, and PNCBANK.COM marks on the Internet at its main website
<pnc.com> and <pncbank.com>.
Complainant
holds a number of trademark registrations with the United States Patent and
Trademark Office (“USPTO”) for its PNC (E.g., Reg. No. 1,416,898 issued
Nov. 11, 1986), PNCBANK (E.g., Reg. No. 1,863,311 issued Nov. 15, 1994),
and PNCBANK.COM (E.g., Reg. No. 2,188,742 issued Sep. 15, 1998) marks.
Respondent
registered the <pncbankcreditcard.com> domain name on October 5,
2004. Respondent uses the domain name
for a pay-per-click website, advertising sponsored links for numerous
categories, including credit, loans, online banking, and finance. Some of the advertised links directly
compete with Complainant’s business.
Moreover, upon reaching Respondent’s website, a pop-up advertisement
appears in a separate window, displaying links to businesses that are in direct
competition with Complainant.
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. 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.”).
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.
Because
Complainant holds several registrations with the USPTO for its marks,
Complainant has presented a prima facie case of rights in the mark. See Vivendi Universal Games v.
XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003)
(“Complainant's federal trademark registrations establish Complainant's rights
in the BLIZZARD mark.”); see also Innomed Techs., Inc. v. DRP Servs., FA
221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark
with the USPTO establishes Complainant's rights in the mark.”). Without a response from Respondent, the
Panel lacks any evidence that would dispute Complainant’s presumption of
rights. See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5,
2002) (“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.”). Thus, the Panel holds
that Complainant has established rights for purposes of Policy ¶ 4(a)(i).
Respondent’s
<pncbankcreditcard.com> domain name incorporates Complainant’s
PNCBANK.COM mark and adds generic terms that clearly relate to some of the
services Complainant provides. The
Panel finds that such an addition is insufficient to distinguish Respondent’s
domain name from Complainant’s mark.
Thus, the disputed domain name is confusingly similar to Complainant’s
marks pursuant to Policy ¶ 4(a)(i). See
Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000)
(finding confusing similarity where the respondent’s domain name combines the
complainant’s mark with a generic term that has an obvious relationship to the
complainant’s business); see also Brown & Bigelow, Inc. v. Rodela,
FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the
<hoylecasino.net> domain name is confusingly similar to the complainant’s
HOYLE mark, and that the addition of “casino,” a generic word describing the
type of business in which the complainant is engaged, does not take the
disputed domain name out of the realm of confusing similarity).
Thus, the Panel
finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant
argues that Respondent does not fit within Policy ¶ 4(c)(ii) because it is not
commonly known by the disputed domain name.
Respondent has not provided any evidence to counter Complainant’s
assertions. Without evidence to
indicate that Respondent is commonly known by the disputed domain name, the
Panel finds that Respondent failed to meet its burden and has not established
rights or legitimate interests pursuant to Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949
(Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) “to require a
showing that one has been commonly known by the domain name prior to
registration of the domain name to prevail”); see also Gallup, Inc. v. Amish Country Store, FA
96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not
have rights in a domain name when the respondent is not known by the mark); see
also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002)
(“Respondent's failure to respond not only results in its failure to meet its
burden, but also will be viewed as evidence itself that Respondent lacks rights
and legitimate interests in the disputed domain name.”).
Furthermore,
Complainant argues that Respondent does not have rights or legitimate interests
in the domain name because Respondent’s website features pay-per-click links
and pop-up windows that advertise services that directly compete with
Complainant. Such diversionary and
competing use does not constitute 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). See
Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum
Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users
seeking Complainant's website to a website of Respondent and for Respondent's
benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i)
and it is not a legitimate noncommercial or fair use under Policy ¶
4(c)(iii).”); see also Wells Fargo & Co. v. Party Night Inc., FA
144647 (Nat. Arb. Forum Mar. 18, 2003) (holding that the respondent’s use of
“confusingly similar derivatives of Complainant’s WELLS FARGO mark to divert
Internet users to websites featuring pop-up advertisements” was not a bona
fide offering of goods or services).
Moreover, Respondent’s failure to submit a response leads this Panel to
accept as true Complainant’s allegations.
See Talk City, Inc. v.
Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“Given Respondent’s failure to
submit a substantive answer in a timely fashion, the Panel accepts as true all
of the allegations of the complaint.”).
Thus, the Panel concludes that Respondent does not have rights or
legitimate interests in the domain name pursuant to Policy ¶ 4(c)(i) or
(iii).
Accordingly, the
Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent
registered and is using the confusingly similar <pncbankcreditcard.com>
domain name to operate a website for commercial gain by creating a likelihood
of confusion with Complainant’s marks and commercially benefiting from it by
means of pay-per-click links. The Panel
concludes that Respondent’s commercial gain constitutes bad faith registration
and use 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); see
also Drs. Foster & Smith, Inc. v.
Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where
the respondent directed Internet users seeking the complainant’s site to its
own website for commercial gain).
Additionally,
Respondent registered the <pncbankcreditcard.com> domain name with
actual knowledge of Complainant’s rights in the PNC, PNCBANK, and PNCBANK.COM
marks. Respondent wholly incorporates
Complainant’s marks and adds a generic term that relates to Complainant’s business. This Panel infers that Respondent knew of
Complainant’s mark due to the obvious link between the mark and the disputed
domain name. See Pfizer, Inc. v.
Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link
between the complainant’s mark and the content advertised on the respondent’s
website was obvious, the respondent “must have known about the Complainant’s
mark when it registered the subject domain name”). The Panel concludes that
actual knowledge of Complainant’s mark constitutes bad faith registration and
use under Policy ¶ 4(a)(iii). See 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).
The Panel finds
that Complainant has satisfied 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 <pncbankcreditcard.com> domain name be TRANSFERRED
from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated:
July 26, 2005
Click
Here to return to the main Domain Decisions Page.
Click
Here to return to our Home Page
National Arbitration Forum