Pacific International Securities Inc. v. Greg Hart d/b/a Private Registration US
Claim Number: FA0607000758615
Complainant is Pacific International Securities Inc. (“Complainant”), represented by Bradley J. Freedman of Borden Ladner Gervais LLP, 1200 - 200 Burrard Street, Vancouver, BC, V7X 1T2, Canada. Respondent is Greg Hart d/b/a Private Registration US (“Respondent”), PO Box 99800, EmeryVille, CA, 94662.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pisecurities.info>, registered with Melbourne IT Ltd, trading as Internet Names Worldwide.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically July 25, 2006; the National Arbitration Forum received a hard copy of the Complaint July 27, 2006.
On July 26, 2006, Melbourne IT Ltd trading as Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the <pisecurities.info> domain name is registered with Melbourne IT Ltd trading as Internet Names Worldwide and that Respondent is the current registrant of the name. Melbourne IT Ltd trading as Internet Names Worldwide verified that Respondent is bound by the Melbourne IT Ltd trading as Internet Names Worldwide registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On August 2, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 22, 2006, 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 firstname.lastname@example.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 28, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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. The domain name that Respondent registered, <pisecurities.info>, is identical to Complainant’s PISECURITIES.COM mark.
2. Respondent has no rights to or legitimate interests in the <pisecurities.info> domain name.
3. Respondent registered and used the <pisecurities.info> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Pacific International Securities Inc., is a leading full service investment dealer that has operated in Canada since 1982, and opened an American subsidiary in December 2003. Complainant currently has approximately 15,000 clients and assets in excess of $960 million. Complainant has continously used the PISECURITIES.COM mark since at least February 2001, and operates a website at the <pisecurities.com> domain name.
Respondent registered the <pisecurities.info> domain name June 9, 2006. The disputed domain name resolves to a website that displays a website entitled “Personal Investigators & Securities.”
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 will draw such inferences as the Panel 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 Complainant to 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 is not required to own a trademark registration to establish rights in the PISECURITIES.COM mark under Policy ¶ 4(a)(i). See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”).
Complainant established by extrinsic proof in this proceeding that it has common law rights in the PISECURITIES.COM mark through continuous use of the mark in connection with its business since 2001. Complainant has used the mark since that time, and operates its website under the mark at <pisecurities.com>. Therefore, Complainant’s PISECURITIES.COM mark has acquired secondary meaning that is sufficient to establish common law rights in the mark. See S.A. Bendheim Co., Inc. v. Hollander Glass, FA 142318 (Nat. Arb. Forum Mar. 13, 2003) (holding that the complainant established rights in the descriptive RESTORATION GLASS mark through proof of secondary meaning associated with the mark); see also Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established).
The disputed domain name that Respondent registered, <pisecurities.info>, is identical to Complainant’s PISECURITIES.COM mark for purposes of Policy ¶ 4(a)(i) as the disputed domain name is identical to Complainant’s mark with the exception of a different generic top-level domain (“gTLD”). The gTLD, for purposes of a Policy ¶ 4(a)(i) analysis, is irrelevant. See Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) ("[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants . . . ."); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant initially must establish that it has rights to and legitimate interests in the mark contained within a disputed domain name and that Respondent lacks such rights to or legitimate interests with respect to the mark in the disputed domain name. However, once Complainant demonstrates a prima facie case, the burden of proof shifts, and Respondent must prove that it has rights or legitimate interests with respect to the disputed domain name. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also 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).”).
Complainant asserts that Respondent is not authorized to use Complainant’s PISECURITIES.COM mark and that Respondent is not associated with Complainant in any way. Respondent’s WHOIS information does not suggest that Respondent is commonly known by the <pisecurities.info> domain name. The disputed domain name resolves to a website that displays information on “Private Investing & Securities” and no evidence in the record establishes that Respondent operates a business under Complainant’s mark. The Panel thus finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected); see also Ultimate Elecs., Inc. v. Nichols, FA 195683 (Nat. Arb. Forum Oct. 27, 2003) (“[O]ther than Respondent’s infringing use of the ULTIMATE ELECTRONICS mark on its web page and in its domain name . . . , there is no evidence that Respondent is commonly known by the <ultimateelectronics.net> domain name pursuant to Policy ¶ 4(c)(ii), or that there is any other entity besides Complainant authorized to trade as ULTIMATE ELECTRONICS.”).
The evidence on record indicates that Respondent is using the <pisecurities.info> domain name to display a website that displays information on “Personal Investigators & Securities.” However, based on the undisputed evidence in the record, the Panel finds that Respondent is not using the disputed domain name for a bona fide offering of goods or services, but rather registered the domain name for purposes of confusing Internet users and diverting them from Complainant’s site to Respondent’s. The Panel finds that such use is not a bona fide offering of goods and services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under 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 Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because the respondent's sole purpose in selecting the domain names was to cause confusion with the complainant's website and marks, its use of the names was not in connection with the offering of goods or services or any other fair use).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
Complainant alleges that Respondent acted in bad faith. Respondent is using the <pisecurities.info> domain name to redirect Internet users seeking Complainant’s site to Respondent’s website. The Panel finds that such use of the disputed domain name constitutes disruption and is evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)); see also Toyota Jidosha Kabushiki Kaisha v. S&S Enters. Ltd., D2000-0802 (WIPO Sept. 9, 2000) (“Registration of a domain name [by the respondent that incorporates another’s trademark] goes further than merely correctly using in an advertisement the trade mark of another in connection with that other’s goods or services.”).
Moreover, the Panel finds that Respondent, who is allegedly a former client of Complainant’s, registered the <pisecurities.info> domain name as an attempt to assert negative use of the domain name as a threat against Complainant. Email correspondence included in the record, which has not been disputed or contradicted by Respondent, demonstrates Respondent’s knowledge of Complainant’s mark and Respondent’s bad faith in registering and using the disputed domain name. The Panel finds that this constitutes bad faith under Policy ¶ 4(a)(iii). See Reuters Ltd. v. Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000) (finding that the respondent demonstrated bad faith where the respondent was aware of the complainant’s famous mark when registering the domain name as well as aware of the deception and confusion that would inevitably follow if he used the domain names); see also Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding bad faith when (1) the domain name contains the complainant’s mark in its entirety, (2) the mark is a coined word, well-known and in use prior to the respondent’s registration of the domain name, and (3) the respondent fails to allege any good faith basis for use of the domain name).
The Panel finds that Complainant satisfied Policy ¶ 4(b)(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 <pisecurities.info> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: September 11, 2006.
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