The PNC Financial Services Group, Inc. v. VMI INC
Claim Number: FA2112001975375
Complainant is The PNC Financial Services Group, Inc. (“Complainant”), represented by Jonathan Uffelman of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, District of Columbia, USA. Respondent is VMI INC (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pncfoundation.com>, registered with GoDaddy.com, LLC.
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 Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 1, 2021; the Forum received payment on December 1, 2021.
On December 2, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <pncfoundation.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 December 2, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 22, 2021 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@pncfoundation.com. Also on December 2, 2021, the 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 December 28, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant relies on its rights in the PNC mark established by the service mark registrations described below and its extensive use of the mark in commerce including on the Internet.
Complainant asserts that it is a Fortune 500 company, created in 1995 as the result of a merger between two pre-existing banks and provides retail banking, corporate and institutional banking, and asset management services throughout the United States with USD $560 billion in assets, over USD $453 billion in deposits, over 2,700 branch locations in the United States and a presence and over 60,000 employees in the United States, Canada, China, Germany, and the United Kingdom.
Complainant refers to its own website and third-party sources to illustrate that it has acquired an extensive goodwill and reputation in the use of the PNC mark through its business activities and extensive marketing and philanthropic activities.
Referring to screen captures of its website to which its domain name <pnc.com> resolves, Complainant submits that since at least as early as 1970, PNC has conducted many of its philanthropic activities through a corporation named PNC Foundation which was incorporated in December 1969, (registration details supplied) whose mission is to form partnerships with community-based nonprofit organizations to enhance educational opportunities, especially early childhood education, and to promote the growth of communities through economic development initiatives. Complainant states that PNC Foundation’s contact email is <pncfoundation@pnc.com>.
Complainant submits that PNC Foundation issues over $64 million in grants annually and among its many other initiatives, PNC Foundation grants have funded PNC’s Grow Up Great® initiative, a $500 million, multi-year bilingual initiative that began in 2004 to help prepare children from birth to age 5 for success in school and in life. This initiative has served over seven million children across the United States.
As the WhoIs shows, the disputed domain name was registered on January 12, 2014. Complainant argues that its trademark rights in the PNC mark, based on its service mark registrations described below, and on its common-law rights acquired through use of the PNC mark, pre-date Respondent’s registration of the disputed domain name by almost forty years.
Complainant argues that the disputed domain name is confusingly similar to Complainant’s PNC mark because it incorporates Complainant’s PNC mark in its entirety, adding only the generic term “foundation” and the non-distinguishing generic top level domain (“ gTLD”) extension <.com>.
Complainant contends that such changes are insufficient to distinguish the disputed domain name from Complainant’s PNC mark and argues that if anything, adding “foundation” to the disputed domain name only adds to the confusion, as consumers are likely to believe it relates to Complainant’s PNC Foundation. See Agilent Techs., Inc. v. James Odonnell / admin@elliotpartners.com, Case No. FA2010001915907 (Forum Nov. 4, 2020) (“Respondent’s <agilentfoundation.com> domain name incorporates Complainant’s entire AGILENT trademark, adds the term ‘foundation,’ and follows all with the generic top-level domain ‘.com.’ The additions to Complainant’s trademark fail distinguish the at-issue domain name from Complainant’s mark. Therefore, the Panel concludes that Respondent’s <agilentfoundation.com> domain name is confusingly similar to Complainant’s AGILENT trademark.”)
Complainant then alleges that Respondent has no rights or legitimate interest in the disputed domain name because, Respondent is not, and has not been, commonly known by the disputed domain name, and nothing in Respondent’s WHOIS information or the record demonstrates that Respondent is commonly known by the disputed domain name.
Complainant asserts that it has not authorized Respondent to use the PNC mark. See, e.g., Coupang Corp. v. Danbi Noh, Case No. FA2004001893389 (Forum May 19, 2020) (“The WHOIS information of record for the <coupanq.com> domain name identifies Respondent as ‘Danbi Noh,’ and there is no evidence to suggest that Respondent is known otherwise or that it is authorized to use the COUPANG mark. The Panel therefore finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).”).
Referring to recent and historic screen captures of the webpage to which the disputed domain name resolve, Complainant submits that their content show that Respondent uses the disputed domain name for a pay-per-click website, with links related to Complainant’s banking business and its PNC Foundation.
Complainant submits that such use does not constitute a bona fide offering of goods or services or a legitimate non-commercial or fair use of the disputed domain name under the Policy. See Cerner Corp. v. VMI INC, Case No. FA2106001951540 (Forum July 23, 2021) (“The Respondent has used the site attached to the Domain Name to link to third party businesses that compete with the Complainant and the Complainant itself. It does not make it clear that there is no commercial connection with the Complainant. The Panel finds this use is confusing. As such it cannot amount to the bona fide offering of goods and services or a legitimate noncommercial or fair use.”)
Complainant adds that it has been unable to find any other use of the disputed domain name, except for a parked webpage and contends that such passive use of the disputed domain name is further evidence Respondent has no rights or legitimate interests in it. See Mayo Found. for Med. Educ. and Research v. VMI Inc, Case No. FA1811001817602 (Forum Dec. 28, 2018) (“Complaint Exhibit I is a screenshot of the landing page for the Domain Name. The operative content on this page consists of a list of related links, including ‘Testing labs,’ ‘Genetic Testing Laboratories,’ ‘Labs Test,’ and the like. In the upper right-hand corner of the page appears a stamp reading ‘DOMAIN SALE/CLICK HERE TO BUY NOW’ and a telephone number. From this it appears (1) that the Domain Name is not being used in connection with a bona fide offering of goods and services, and (2) the Domain Name is being offered for sale. Inactive holding of a domain name has frequently been held to demonstrate a lack of rights or legitimate interests in the name.”)
Complainant furthermore refers to a screen capture of a webpage submitted in an annex to the Complaint which it submits, illustrates that Respondent is offering the disputed domain name for sale to the public, and is therefore further evidence Respondent has no rights or legitimate interests in it. See Cerner Corp. v. VMI INC, Case No. FA2106001951540 (Forum July 23, 2021) (“The Domain Name has also been offered for sale which can be a further indication of lack of rights or legitimate interests.”)
Complaint then alleges that the disputed domain name was registered and is being used in bad faith, arguing that given the fame and long-standing use of the PNC mark for Complainant’s core banking services and its high-profile philanthropic activities, it is difficult to imagine any good faith use to which the disputed domain name might be put. See The PNC Fin. Servs. Grp. Inc. et al. v. Paksys Consulting Inc., Case No. FA0201000103523 (Forum Feb. 12, 2002) (“This Panel further finds that Complainant’s [PNC] marks are so unique and well known in the business world that there could be no use of them by Respondent that would constitute a good faith use.”)
Complainant adds that the evidence adduces shows that Respondent is attempting to attract internet users for commercial gain by using a pay-per-click webpage that offers hyperlinks to services related to Complainant’s core banking services and well-known philanthropic activities. See Sagicor Fin. Corp. Ltd. v. Domains By Proxy, LLC / VMI INC, Case No. D2018-2741 (WIPO Feb. 11, 2019) (bad faith under 4(b)(iv) found where: “Considering the PPC links available on the Web site to which the disputed domain name resolves, and the fact that the disputed domain name is almost identical to the complainant’s domain name <sagicorlifeusa.com>, it is reasonable to conclude that the Respondent was well aware of the Complainant and its trademark SAGICOR when it registered the disputed domain name. This conduct generates a risk of deception among Internet users as to the source, affiliation, or endorsement of the Web site to which the disputed domain name resolves.”)
Complainant adds that it has been unable to find any additional uses of disputed domain name, except for a parked webpage showing links intended to capitalize on Complainant’s brand, and contends that Respondent’s passive use is further evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Commc’ns Inc. v. Daniel Ramos, Case No. FA1903001832286 (Forum Mar. 28, 2019) (“Respondent holds the <univision.news> domain name inactively; the domain name simply addresses a parked webpage sponsored by the domain name’s registrar. Respondent’s holding of the confusingly similar domain name to address a parked page shows Respondent’s bad faith under Policy ¶ 4(a)(iii).”)
Complainant further submits that Respondent is a serial cyber-squatter, having been involved in at least nine prior proceedings under the Policy finding bad-faith registration and use of domain names, often in almost identical circumstances, viz.
· Cerner Corp. v. VMI INC, Case No. FA2106001951540 (Forum July 23, 2021);
· Skyscanner Ltd. v. Registration Private, Domains By Proxy, LLC / VMI INC, Case No. D2019-2037 (WIPO Oct. 15, 2019);
· Andrey Ternovskiy dba Chatroulette v. Registration Private, Domains By Proxy, LLC / I S, ICS INC / VMI INC / Domain Admin, Hush Whois Prot. Ltd., Case No. D2019-0642 (WIPO June 21, 2019);
· Star Stable Ent. AB v. Domains By Proxy, LLC, DomainsByProxy.com / VMI INC / Chad Moston, Elite Media Grp. / Carolina Rodrigues, Fundacion Comercio Electronico, Case No. D2019-0450 (WIPO Apr. 22, 2019) (transfer granted to VMI INC held domain);
· Artemis Mktg. Corp. v. ICS INC / Online Res., Online Res. Mgmt. Ltd. / VMI INC, Case No. D2019-0141 (WIPO Apr. 8, 2019);
· Sagicor Fin. Corp. Ltd. v. Domains By Proxy, LLC / VMI INC, Case No. D2018-2741 (WIPO Feb. 11, 2019);
· G4S Plc v. Domains By Proxy, LLC / VMI INC, Case No. D2018-2512 (WIPO Dec. 17, 2018);
· Mayo Found. for Med. Educ. and Research v. VMI Inc, Case No. FA1811001817602 (Forum Dec. 28, 2018);
· Andrey Ternovskiy dba Chatroulette v. Registration Private, Domains By Proxy, LLC / VMI INC, Case No. D2018-2535 (WIPO Dec. 19, 2018).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant provides commercial banking services under the PNC mark for which it owns the following service mark registration:
· United States of America registered service mark PNC registration number 1,416, 898 registered on the Principal Register on November 11, 1896 for services in international classes 35, 36 and 38 and
· United States of America registered service mark PNC registration number 1,416, 998registered on the Principal Register on November 11, 1896 for services in international classes 35, 36 and 38.
Complainant also owns a portfolio of registrations for service marks that incorporate its PNC mark, including the following which predate the registration of the disputed domain name:
· United States of America registered service mark PNCBANK registration number 2,980,693 registered on the Principal Register on August 2, 2005 for services in international class 36 ;
· United States of America registered service mark PNC INVESTMENTS registration number 3, 498, 533 registered on the Principal Register on September 9, 2008 for services in international class 36;
· United States of America registered service mark PNC POINTS registration number 3,914,908 registered on the Principal Register on February 1, 2011 for services in international class 35.
Complainant has an established Internet presence, with a website to which its domain name <www.pnc.com>, created on July 18, 1993, resolves.
The disputed domain name <pncfoundation.com> was registered on January 12, 2014 and resolves to what appears to be a parking page with links to Complainant’s websites.
Respondent availed of a privacy service to conceal his identity on the published WhoIs. There is no information available about Respondent, except for that provided in the Compliant, the Registrar’s WhoIs, the information provided by the Registrar in response to the request by the Forum for verification of the registration details of the disputed domain name and the information provided by the privacy service provider on October 21, 2021 to Complainant in response to a request to have the identity of the registrant of disputed domain name disclosed for the purposes of this proceeding.
The record shows that Respondent has been an unsuccessful respondent in at least nine previous Complaints under the Policy.
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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has provided convincing evidence that it has rights in the PNC mark established by its ownership of the service mark registrations described above and its extensive use of the mark as a Fortune 500 company providing retail banking, corporate and institutional banking, and asset management services with USD $560 billion in assets, over USD $453 billion in deposits, over 2,700 branch locations in the United States and a presence and over 60,000 employees in the United States, Canada, China, Germany, and the United Kingdom.
The disputed domain name consists of the Complainant’s PNC mark, the word “foundation” and the gTLD extension <.com>.
Complainant’s PNC mark Is the initial, dominant, and only distinctive element, in the disputed domain name. The word “foundation” adds no distinguishing trademark character to the disputed domain name and in the circumstances of this case is likely to be considered as a reference to the PNC Foundation which is a vehicle for Complainant’s laudable charitable activities supporting educational initiatives for children.
In the circumstances shown in the record, the gTLD extension <.com> would be considered by Internet users as a necessary technical requirement for a domain name.
This Panel finds therefore that the disputed domain name is confusingly similar to the PNC mark in which Complainant has rights and Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights legitimate interests in the disputed domain name arguing that
· Respondent is not, and has not been commonly known by the disputed domain name;
· nothing in Respondent’s WHOIS information or the record demonstrates that Respondent is commonly known by the disputed domain name;
· Complainant has not authorized Respondent to use the PNC mark;
· the recent and historic screen captures of the webpage to which the disputed domain name resolve. show that Respondent uses the disputed domain name for a pay-per-click website, with links related to Complainant’s banking business and its PNC Foundation and such use does not constitute a bona fide offering of goods or services or a legitimate non-commercial or fair use of the disputed domain name under the Policy;
· Complainant has been unable to find any other use of the disputed domain name, except for a parked webpage and such passive use of the disputed domain name is further evidence it has no rights or legitimate interests in it;
· the screen capture of the webpage submitted in an annex to the Complaint illustrates that Respondent is offering the disputed domain name for sale to the public which is further evidence Respondent has no rights or legitimate interests in it.
It is well established that once a complainant makes out a prima facie case that respondent has no rights or legitimate interests in the domain name at issue, the burden of production shifts to the respondent to prove its rights or legitimate interests.
Respondent has failed to discharge that burden and therefore this Panel must find that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
Complainant has shown that it has an extensive international reputation in the use of the PNC mark in relation to its banking and financial services, with an established Internet presence. It is improbable that the registrant would have chosen and the disputed domain name, without knowledge of Complainant’s PNC mark which is the dominant and only distinctive element of the disputed domain name.
Furthermore, Complainant has shown that it has made long and extensive use of the PNC mark for many years, including on the Internet, prior to the registration of the disputed domain name.
The adaptation of the combination of Complainant’s “PNC” mark with the word “foundation” as the only elements in the disputed domain name show that it is most improbable that the registrant of the disputed domain name was not actually aware not only of Complainant, its business and PNC mark but was also aware of Complainant’s philanthropic and marketing initiative in the eponymous PNC Foundation.
On the balance of probabilities therefore the registrant chose and registered the disputed domain name in bad faith, to take predatory advantage of Complainant’s name and mark, intending that it would be used to confuse, mislead, and misdirect, Internet users, luring Internet traffic seeking information about Complainant and its activities.
The undisputed evidence in the record shows that the disputed domain name is being passively held as the address of an inactive website with links from which on the balance of probabilities Respondent is generating pay-per-click income.
The webpage to which the disputed domain name resolves merely contains links that appear to direct to Internet locations maintained by Complainant. It must be assumed that if they linked to third party locations, Complainant would have stated such in the Complaint. The links are variously entitled, and historic screenshots show that they have changed a little over the years since first appearing in 2015.
The links all relate to Complainant or banking services and examples of the names of the links are “PNC Bank Checking”, “PNC Bank Checking Accounts” and simply “PNC” as well as generically named links such as “Open a New Checking Account” and “Bank Account Loans”.
This Panel finds that such unauthorized use of the disputed domain name constitutes bad faith use under the Policy.
Additionally, the circumstances in which that the disputed domain name is being passively held and is being offered for sale to the public, add weight to the findings that the disputed domain name was registered and is being used in bad faith, as does the fact that Respondent has been the unsuccessful respondent in nine previous Complaint’s under the Policy.
As this Panel has found that the disputed domain names were registered and are being used in bad faith, Complainant has succeeded in the third element of the test in 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 <pncfoundation.com> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: December 28, 2021
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