Pacific International
Securities Inc. v. Greg Hart
Claim Number: FA0612000862847
PARTIES
Complainant is Pacific International Securities Inc. (“Complainant”), represented by Bradley J. Freedman
of Borden Ladner Gervais LLP, 1200 – 200 Burrard Street, Vancouver, BC, Canada, V7X
1T2. Respondent is Greg Hart (“Respondent”), POB 73155,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pisecurities.us>, registered with Melbourne It
Ltd.
PANEL
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.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
(the “Forum”) electronically December 6, 2006;
the Forum received a hard copy of the Complaint December
7, 2006.
On December 12, 2006, Melbourne It Ltd confirmed by e-mail to the
Forum that the <pisecurities.us> domain name is registered with Melbourne
It Ltd and that Respondent is the current registrant of the name. Melbourne It
Ltd verified that Respondent is bound by the Melbourne It Ltd registration agreement and thereby has agreed to
resolve domain-name disputes brought by third parties in accordance with the
U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On December 20, 2006, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”) setting a deadline of January 9, 2007, by which
Respondent could file a Response to the Complaint, was transmitted to
Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute
Resolution Policy (the “Rules”).
Having received no Response from Respondent, the Forum transmitted to
the parties a Notification of Respondent Default.
On January 15, 2007, pursuant to Complainant’s request to have the
dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn
Marks Johnson 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. Therefore,
the Panel may issue its decision based on the documents submitted and in
accordance with the Policy, the 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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following allegations in this proceeding:
1. The domain name that Respondent registered, <pisecurities.us>, is confusingly similar to Complainant’s PI mark.
2.
Respondent has no rights to or legitimate
interests in the <pisecurities.us>
domain name.
3.
Respondent registered and used the <pisecurities.us> domain name in bad
faith.
B. Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant, Pacific International Securities
Inc, provides investment advice to individuals and businesses located in
Western Canada and the
The disputed domain name that Respondent
registered, <pisecurities.us>, which Respondent registered June
19, 2006, does not resolve to an active website. Complainant contends that Respondent is a
former customer of Complainant and that Respondent became upset with
Complainant and attempted to coerce Complainant and its employees to agree to
Respondent’s business demands.
Respondent’s <pisecurities.info> domain
name has already been subject to a proceeding under the UDRP, in September
2006, and the panel in that case ordered the transfer of that domain name
registration to Complainant. See Pac. Int’l Sec. Inc. v. Hart, FA 758615 (Nat. Arb.
Forum Sept. 11, 2006). Respondent also
has been a party to a UDRP proceeding for its registration of the
<westminstersavings.com> domain name, which the panel found was
confusingly similar to Westminster Savings Credit Union’s WESTMINSTER SAVINGS
CREDIT UNION mark. See
DISCUSSION
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.”
Respondent
failed to submit a Response and 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 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 the
Respondent is identical or confusingly similar to a trademark or service mark
in which the 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 or is
being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution
Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent
as applicable in rendering its decision.
Identical to and/or Confusingly Similar
Although Complainant has not registered the PI or PACIFIC INTERNATIONAL
SECURITIES marks with the
Complainant has continuously used the PACIFIC INTERNATIONAL SECURITIES mark since 1982 and the abbreviated PI mark since 1993 in connection with its investment advice business. Moreover, Complainant has shown considerable growth and financial investment associated with the marks. The Panel finds that this is sufficient time and development for both marks to acquire secondary meaning in reference to Complainant’s services. Therefore, Complainant established common law rights in the PI and PACIFIC INTERNATIONAL SECURITIES marks pursuant to Policy ¶ 4(a)(i). See Quality Custom Cabinetry, Inc. v. Cabinet Wholesalers, Inc., FA 115349 (Nat. Arb. Forum Sept. 7, 2002) (finding that complainant established common law rights in the mark through continuous use of the mark since 1995 for the purpose of UDRP Policy ¶ 4(a)(i)); see also Stellar Call Ctrs. Pty Ltd. v. Bahr, FA 595972 (Nat. Arb. Forum Dec. 19, 2005) (finding that complainant established common law rights in the STELLAR CALL CENTRES mark because complainant demonstrated that its mark had acquired secondary meaning).
With respect to the <pisecurities.us> domain name,
Respondent merely abbreviated the terms “PACIFIC INTERNATIONAL” in
Complainant’s PACIFIC INTERNATIONAL SECURITIES mark; or, alternatively, added
the term “securities” to Complainant’s PI mark.
In either case, Respondent failed to sufficiently distinguish the
disputed domain name from Complainant’s marks.
Accordingly, the Panel finds the <pisecurities.us> domain
name to be confusingly similar to the marks pursuant to Policy ¶ 4(a)(i). See
Microsoft Corp. v. Montrose Corp., D2000-1568 (WIPO Jan. 25, 2001) (finding
the domain name <ms-office-2000.com> to be confusingly similar even
though the mark MICROSOFT is abbreviated); see also
The Panel concludes that Complainant satisfied usTLD Policy ¶ 4(a)(i).
Rights to or Legitimate Interests
Complainant contends that Respondent lacks rights to and legitimate
interests in the <pisecurities.us> domain name.
Once Complainant makes a prima facie case in support of its
allegations, the burden shifts to Respondent to show it does have rights or
legitimate interests pursuant to Policy ¶ 4(a)(ii). See Hanna-Barbera Prods., Inc. v.
Entm’t Commentaries,
FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that complainant must first make a prima
facie case that respondent lacks rights and legitimate interests in the
disputed domain name under UDRP Policy ¶ 4(a)(ii) before the burden shifts to
respondent to show that it does have rights or legitimate interests in a domain
name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb.
Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that
Respondent does not have rights or legitimate interest in the subject domain
names, which burden is light. If
Complainant satisfies its burden, then the burden shifts to Respondent to show
that it does have rights or legitimate interests in the subject domain
names.”).
Respondent’s failure to answer the
Complaint raises a presumption that Respondent has no rights or legitimate
interests in the <pisecurities.us>
domain name. See Eroski, So. Coop. v.
Getdomains Ishowflat Ltd., D2003-0209 (WIPO July 28, 2003) (“It can be
inferred that by defaulting Respondent showed nothing else but an absolute lack
of interest on the domain name.”); see also Am.
Express Co. v. Fang Suhendro, FA 129120
(Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's
failure to respond, it is presumed that Respondent lacks all rights and legitimate
interests in the disputed domain name.”). However, the Panel
examines the record to determine the record shows that Respondent has rights or
legitimate interests under Policy ¶ 4(c).
Because Complainant established
with extrinsic proof in this proceeding that it has rights to the PI and
PACIFIC INTERNATIONAL SECURITIES marks and because Respondent has not come
forward with any evidence showing it is the owner or beneficiary of a mark
identical to the <pisecurities.us>
domain name, Complainant has satisfied Policy ¶ 4(c)(i). See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that the
respondent was the owner or beneficiary of a mark that is identical to the
<persiankitty.com> domain name); see also Pepsico, Inc.
v. Becky, FA 117014 (Nat. Arb.
Forum Sept. 3, 2002) (holding that because the respondent did not own any
trademarks or service marks reflecting the <pepsicola.us> domain name, it
had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).
Respondent
registered the contested domain name under the name “Greg Hart,” and no other
evidence in the record suggests that Respondent is commonly known the by <pisecurities.us> domain name.
Therefore, the Panel concludes that Respondent has not
established rights or legitimate interests in the disputed domain name pursuant
to Policy ¶ 4(c)(iii).
See M. Shanken Commc’ns v.
WORLDTRAVELERSONLINE.COM, FA
740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not
commonly known by the <cigaraficionada.com> domain name under UDRP Policy
¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see
also Coppertown Drive-Thru Sys., LLC
v. Snowden, FA 715089 (Nat. Arb.
Forum July 17, 2006) (concluding that the respondent was not
commonly known by the <coppertown.com> domain name where there was no
evidence in the record, including the WHOIS information, suggesting that the
respondent was commonly known by the disputed domain name).
Furthermore, the confusingly similar <pisecurities.us>
domain name does not resolve to an active website and Respondent has not come
forward with any evidence to indicate that it has made demonstrable
preparations to use the disputed domain name for any purpose. In Chanel,
Inc. v. Heyward, D2000-1802 (WIPO Feb. 23, 2001), the panel concluded that
the respondent did not have rights or legitimate interests in the
<chanelparee.com> domain name where it did not respond to the complaint
and had failed to use the domain name.
As this case involves similar circumstances, the Panel finds that
Respondent has not used the disputed domain name in connection with a bona
fide offering of goods or services under Policy ¶ 4(c)(ii)
and has not made a legitimate noncommercial or fair use of it under UDRP Policy
¶ 4(c)(iv). See Flor-Jon Films, Inc. v. Larson, FA
94974 (Nat. Arb. Forum July 25, 2000) (finding that the respondent’s
failure to develop the site demonstrates a lack of legitimate interest in the
domain name).
The Panel concludes that Complainant
satisfied usTLD Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Complainant next alleged that Respondent acted in bad faith in registering and holding a domain name containing in its entirely Complainant’s mark. Respondent has been the subject of two previous UDRP proceedings, including one brought by this Complainant, and the Panel finds that this demonstrates a pattern of registering domain names containing others’ marks in order to prevent these parties from reflecting their marks in domain names. Such conduct is prohibited under Policy ¶ 4(b)(ii) and considered to be in bad faith. See Yahoo! Inc. v. Deiana, FA 339579 (Nat. Arb. Forum Nov. 22, 2004) (“It is found and determined that Respondent is in violation of Policy ¶ 4(b)(ii) because Respondent registered the disputed domain names to prevent Complainant from reflecting its YAHOO! mark in the corresponding domain names. The registration of the [<ayhooo.com>, <ayhooo.net >, <ayhooo.org>, <ayhoooindia.com>, <ayhoookids.com>, <ayhooorealty.com>, <ayhooorealty.net>, <ayhoooshopping.com>, <ayhooo-uk.com>, and <searchayhooo.com>] domain names herein constitutes a pattern of registering trademark-related domain names in bad faith.”); see also Nat’l Abortion Fed’n v. Dom 4 Sale, Inc., FA 170643 (Nat. Arb. Forum Sept. 9, 2003) (finding bad faith pursuant to Policy ¶ 4(b)(ii) because the domain name prevented complainant from reflecting its mark in a domain name and respondent had had several adverse decisions against it in previous UDRP proceedings, which established a pattern of cybersquatting).
The Panel also finds that
Respondent’s failure to make any demonstrable preparations to use the <pisecurities.us>
domain name since registering it more than six months ago further suggests bad
faith registration and use pursuant to Policy ¶ 4(a)(iii). See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228
(WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name
without active use can constitute use in bad faith); see also Telstra Corp. v. Nuclear Marshmallows,
D2000-0003 (WIPO Feb. 18, 2000) (“[I]t is possible, in certain circumstances,
for inactivity by the Respondent to amount to the domain name being used in bad
faith.”).
As a former client of Complainant that repeatedly made serious threats to Complainant, including legal action, the Panel finds that Respondent had actual knowledge of Complainant and Complainant’s rights in the mark. Complainant includes e-mail correspondence in its exhibits demonstrating these threats and Respondent has not come forward to contradict or dispute the threats and statements. As a result, the Panel finds that Respondent’s conduct provides additional evidence of bad faith under Policy ¶ 4(a)(iii). See Reuters Ltd. v. Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000) (finding that respondent demonstrated bad faith where respondent was aware of 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 Kraft Foods (Norway) v. Wide, D2000-0911 (WIPO Sept. 23, 2000) (“[T]he fact that Respondent chosen [sic] to register a well known mark to which [it] has no connections or rights indicates that [it] was in bad faith when registering the domain name at issue.”).
The Panel concludes that Complainant
satisfied usTLD Policy ¶ 4(a)(iii).
DECISION
Complainant having established all three
elements required under the usTLD Policy, the Panel concludes that relief shall
be GRANTED.
Accordingly, it is Ordered that the <pisecurities.us>
domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks
Johnson, Panelist
Dated: January 29, 2007.
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