The PNC Financial Services Group, Inc. v.
Brian Thaoms c/o Featured on CNN.com-Over 1.5 Million Hits Daily
Claim
Number: FA0506000495474
Complainant is The PNC Financial Services Group,
Inc. (“Complainant”), represented by Mark Sommers, of Finnegan, Henderson,
Farabow, Garrett, & Dunner, LLP, 901 New York Avenue NW, Washington,
DC 20001. Respondent is Brian Thaoms c/o Featured on
CNN.com-Over 1.5 Million Hits Daily (“Respondent”), P.O. Box 1025, Berkeley
Springs, WV 25411.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <pncbankcreditcard.info>, registered with eNom.
The
undersigned certifies that he has acted independently and impartially and to
the best of his knowledge has no known conflict in serving as Panelist in this
proceeding.
James
A. Carmody, Esq., 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, eNom confirmed by e-mail to the National Arbitration Forum that
the domain name <pncbankcreditcard.info> is registered with eNom
and that Respondent is the current registrant of the name. eNom has verified
that Respondent is bound by the eNom 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 22, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
July 12, 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.info 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 19, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed James A.
Carmody, Esq., 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.info>
domain name is confusingly similar to Complainant’s PNCBANK mark.
2. Respondent does not have any rights or
legitimate interests in the <pncbankcreditcard.info> domain name.
3. Respondent registered and used the <pncbankcreditcard.info>
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, which owns and manages
over $70 billion worth of assets.
Complainant provides regional banking, corporate banking, real estate
finance, asset-based lending, private banking, asset management, global fund
services, and bankcards.
Complainant has
registered several marks with the United States Patent and Trademark Office
(“USPTO”), including the PNCBANK mark (Reg. No. 1,863,311 issued November 15,
1994), under which Complainant provides various financial services.
Respondent
registered the <pncbankcreditcard.info> domain name on March 11,
2005. Respondent’s domain name resolves
to a website that offers various competing and non-competing links to
commercial websites.
Furthermore,
Respondent’s WHOIS information contains an offer to sell the disputed domain
name. On June 10, 2005 prior to the
commencement of this UDRP proceeding, Respondent’s address field contained the
following language: “465,873 Unique Hits Today / Valued at $125,000, P.O. Box
1025, Website included Free! 4 Sale!!”
Also at the time of commencement, Respondent’s website featured a link
through which an individual could place an offer to purchase the domain name
registration. After the Complaint was
filed on June 13, 2005, Respondent changed the pertinent WHOIS information to
say, “Domain Name for Sale only $199, MUST SELL NOW.”
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.
Complainant has
provided evidence of rights in the PNCBANK mark through registration of the
mark with the USPTO. Such registration
creates prima facie evidence of rights in the Complainant’s mark. As a result, the burden shifts onto
Respondent to refute this presumption.
In light of Respondent’s failure to set forth evidence suggesting
otherwise, Complainant has established rights in the PNCBANK mark pursuant to
Policy ¶ 4(a)(i). See 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. The respondent has the
burden of refuting this assumption); see also U.S.
Office of Pers. Mgm’t v. MS Tech. Inc., FA
198898 (Nat. Arb. Forum Dec. 9, 2003) (“[O]nce the USPTO has made a
determination that a mark is registrable, by so issuing a registration, as
indeed was the case here, an ICANN panel is not empowered to nor should it
disturb that determination.”).
Complainant
argues that Respondent’s <pncbankcreditcard.info> domain name is confusingly similar to
Complainant’s PNCBANK mark. The
disputed domain name incorporates the entire PNCBANK mark and adds the generic
term “credit card” which describes the business in which Complainant is
involved, along with the generic top level domain name “.info.” Such minor changes fail to significantly
distinguish Respondent’s domain name from Complainant’s PNCBANK mark pursuant
to Policy ¶ 4(a)(i). See Sony
Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that
“[n]either the addition of an ordinary descriptive
word . . . nor the suffix ‘.com’ detracts from the overall
impression of the dominant part of the name in each case, namely the trademark
SONY” and thus Policy ¶ 4(a)(i) is satisfied); see also 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).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant
asserts that Respondent has no rights or legitimate interests in the disputed <pncbankcreditcard.info>
domain name. Complainant’s assertion
constitutes a prima facie case under Policy ¶ 4(a)(ii), shifting the
burden of production onto Respondent to prove that rights or legitimate
interests do, in fact, exist. See
G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002)
(“Because Complainant’s Submission constitutes a prima facie case under
the Policy, the burden effectively shifts to Respondent. Respondent’s failure
to respond means that Respondent has not presented any circumstances that would
promote its rights or legitimate interests in the subject domain name under
Policy ¶ 4(a)(ii).”); see also Clerical
Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28,
2000) (finding that under certain circumstances the mere assertion by the
complainant that the respondent has no right or legitimate interest is
sufficient to shift the burden of proof to the respondent to demonstrate that
such a right or legitimate interest does exist). Because Respondent failed to submit a response, the Panel
construes this as evidence that Respondent lacks rights and legitimate
interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii). See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000)
(finding that by not submitting a response, the respondent has failed to invoke
any circumstance which could demonstrate any rights or legitimate interests in
the domain name); 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.”).
Respondent is
using the confusingly similar <pncbankcreditcard.info> domain name
to operate a website featuring links to both competing and noncompeting
websites, from which Respondent presumably receives referral fees. Such diversionary and unauthorized use is
neither a use in connection with a bona fide offering of goods or
sevices pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use
pursuant to Policy 4(c)(iii). See Bank of Am. Corp. v. Northwest 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 Seiko
Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003)
(“Diverting customers, who are looking for products relating to the famous
SEIKO mark, to a website unrelated to the mark is not a bona fide offering of
goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial
or fair use under Policy ¶ 4(c)(iii).”).
Furthermore,
there is evidence in the record that indicates Respondent intended to sell the
domain name registration. Respondent’s
registration of a confusingly similar domain name for the purpose of selling
that name for commercial gain is evidence that Respondent lacks rights and
legitimate interests in the domain name pursuant to Policy ¶ 4(a)(ii). See Mothers Against Drunk Driving v. Shin,
FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances,
the respondent’s apparent willingness to dispose of its rights in the disputed
domain name suggested that it lacked rights or legitimate interests in the
domain name); see also Wal-Mart
Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the
respondent’s conduct purporting to sell the domain name suggests it has no
legitimate use).
Finally,
nothing in the record indicates that Respondent is either commonly known by the
disputed domain name or authorized to register domain names featuring
Complainant’s PNCBANK mark. Therefore,
the Panel finds that Respondent has failed to establish rights or legitimate
interests in the <pncbankcreditcard.info> domain name pursuant to
Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent
has registered the domain name under the name ‘Ilyoup Paik a/k/a David
Sanders.’ Given the WHOIS domain name
registration information, Respondent is not commonly known by the
[<awvacations.com>] domain name.”); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar.
14, 2000) (finding no rights or legitimate interests where the respondent was
not commonly known by the mark and never applied for a license or permission
from the complainant to use the trademarked name).
The
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
registered the <pncbankcreditcard.info> domain name with the
intent to sell the domain name registration for commercial gain. Although
such practice is not inherently wrong, registering a domain name whose value is
derived from its confusingly similar nature to a widely known trademark does
imply bad faith on the part of Respondent pursuant to Policy ¶ 4(b)(i). See Diners Club Int’l Ltd. v. Domain
Admin******It's all in the name******, FA 156839 (Nat. Arb. Forum June 23,
2003) (finding that when the domain name itself notes that it is “available for
lease or sale,” evidence that the domain name was registered and used in bad
faith pursuant to Policy ¶ 4(b)(i) can be inferred from the fact that “the sole
value of the [<wwwdinersclub.com] domain name is dictated by its relation to
the complainant’s registered DINERS CLUB mark); see also Parfums Christain Dior v. QTR Corp.,
D2000-0023 (WIPO Mar. 9, 2000) (finding bad faith where the respondent’s WHOIS
registration information contained the words, “This is [sic] domain name is for
sale”).
Moreover,
Respondent is using the <pncbankcreditcard.info> domain name to
divert Internet users to both competing and noncompeting commercial websites
through a series of hyperlinks from which Respondent presumably receives
click-through fees. Because
Respondent’s domain names are confusingly similar to Complainant’s PNCBANK
mark, consumers accessing Respondent’s domain name may become confused as to Complainant’s
affiliation with the resulting websites.
Therefore, Respondent’s commercial use of the disputed domain name
constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29,
2000) (finding bad faith where the domain name in question is obviously
connected with the complainant’s well-known marks, thus creating a likelihood
of confusion strictly for commercial gain); see also Luck's Music Library v. Stellar Artist Mgmt.,
FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged
in bad faith use and registration by using domain names that were identical or
confusingly similar to the complainant’s mark to redirect users to a website
that offered services similar to those offered by the complainant).
Finally,
Respondent registered the <pncbankcreditcard.info> domain name
with actual or constructive knowledge of Complainant’s rights in the PNCBANK
mark. Because Complainant has a USPTO
registered trademark, the Respondent is deemed to have constructive knowledge
of Complainant’s rights in the PNCBANK mark.
See Victoria’s Cyber Secret Ltd. v. V
Secret Catalogue, Inc., 161 F.Supp.2d
1339, 1349 (S.D.Fla. 2001) (noting that “a Principal Register registration [of
a trademark or service mark] is constructive notice of a claim of ownership so
as to eliminate any defense of good faith adoption” pursuant to 15 U.S.C. §
1072); 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.”). Furthermore, due to the
obvious similarity between the information contained on Respondent’s website
and Complainant’s business, the Panel infers that Respondent had actual
knowledge of Complainant’s trademark rights.
Registration of a domain name that is confusingly similar to another’s
mark despite actual or constructive knowledge of the mark holder’s rights is
evidence of bad faith registration and use pursuant to 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); see also
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 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 <pncbankcreditcard.info> domain name be TRANSFERRED
from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated:
July 28, 2005
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