The PNC Financial Services Group Inc. v. Mark Andreev
Claim Number: FA0511000593127
Complainant is The PNC Financial Services Group Inc. (“Complainant”), represented by Mark Sommers, of Finnegan Henderson Farabow Garrett & Dunner L.L.P., 901 New York Avenue N.W., Washington, DC 20001. Respondent is Mark Andreev (“Respondent”), 11 Gvardieskaya, Kara-Balta, 123841.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <pnc.org>, registered with eNom, Inc.
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 November 8, 2005; the National Arbitration Forum received a hard copy of the Complaint on November 9, 2005.
On November 8, 2005, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <pnc.org> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. 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 November 10, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 30, 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@pnc.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 7, 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 <pnc.org> domain name is identical to Complainant’s PNC mark.
2. Respondent does not have any rights or legitimate interests in the <pnc.org> domain name.
3. Respondent registered and used the <pnc.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, The PNC Financial services Group, Inc., was founded in 1983 and is based in Pittsburgh, Pennsylvania. Complainant is one of the largest national diversified financial services organizations in the United States, providing regional banking, corporate banking, real estate finance, asset-based lending, private banking, asset management, global fund services, and bank cards. Complainant is a publicly traded bank holding company comprised of four subsidiary banks, with PNC Bank as the principal bank subsidiary. Complainant also has more than sixty active nonbank subsidiaries.
Complainant has offered a full range of banking and financial services to individuals and businesses under the PNC mark and variations thereof since at least as early as 1976. Complainant owns a number of United States trademark registrations for the PNC mark (e.g., Reg. No. 1,416,898, issued November 11, 1986).
Respondent registered the <pnc.org> domain name on March 24, 2002 and is using the disputed domain name for a DomainSponsor.com pay-per-click website. Respondent’s website advertises numerous links comprised of Complainant’s trademarks, specifically, links titled “PNC Checking Accounts,” “PNC Banking Centers” and “PNC Arts Center.” These links do not connect users to Complainant’s website or information about Complainant, but rather generate lists of additional links for directly competing financial services as well as unrelated products and services.
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 established that it has rights in the PNC mark through registration with the United States Patent and Trademark Office (“USPTO”) and through continuous use of the mark since 1991. See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive [or] have acquired secondary meaning”); see also 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.").
The <pnc.org> domain name registered by
Respondent is identical to Complainant’s PNC mark because it incorporates
Complainant’s mark in its entirety and adds only “.org”. See Shirmax Retail Ltd./Detaillants
Shirmax Ltee v. CES Mktg Group Inc., AF-0104 (eResolution Mar. 20, 2000)
(refusing to interpret Policy ¶ 4(a)(i) in the conjunctive rather than
disjunctive sense in holding that “mere identicality of a domain name with a
registered trademark is sufficient to meet the first element [of the Policy],
even if there is no likelihood of confusion whatsoever”); see also Porto
Chico Stores, Inc. v. Zambon, D2000-1270 (WIPO Nov. 15, 2000) (stating that
the panel should resolve whether a mark is identical or confusingly similar “by
comparing the trademark and the disputed domain name, without regard to the
circumstances under which either may be used”).
Furthermore, the addition of the generic top-level domain “.org” does not distinguish Complainant’s mark from Respondent’s domain name. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) ( “[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”); 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.”); see also Koninklijke Philips Elecs. NV v. Goktas, D2000-1638 (WIPO Feb. 8, 2001) (finding that the domain name <philips.org> is identical to the complainant’s PHILIPS mark)
The Panel finds that Policy ¶ 4(a)(i) has been fulfilled.
Complainant asserts that Respondent does not have rights or
legitimate interests in the <pnc.org> domain name. When a complainant establishes a prima
facie case pursuant to Policy ¶ 4(a)(ii), the burden shifts to the
respondent to prove that it has rights or legitimate interests. Due to Respondent’s failure to respond to
the Complaint, the Panel infers that Respondent does not have rights or
legitimate interests in the disputed domain name. 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.”).
Additionally, Respondent has not
offered any evidence and there is no proof in the record suggesting that
Respondent is commonly known by the <pnc.org> domain
name. Thus, the Panel concludes that
Respondent has not established rights or legitimate interests in the disputed
domain name pursuant to Policy ¶ 4(c)(ii).
See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10,
2003) (stating “nothing in Respondent’s WHOIS information implies that
Respondent is ‘commonly known by’ the disputed domain name” as one factor in
determining that Policy ¶ 4(c)(ii) does not apply); see also G.D. Searle & Co. v. Cimock, FA 126829 (Nat. Arb. Forum Nov. 13, 2003) (“Due to the fame of
Complainant’s mark there must be strong evidence that Respondent is commonly
known by the disputed domain name in order to find that Respondent has rights
or legitimate interests in the disputed domain name pursuant to Policy ¶
4(c)(ii). However, there is no evidence
on record, and Respondent has not come forward with any proof to establish that
it is commonly known as CELEBREXRX or <celebrexrx.com>.”).
Moreover, Respondent is using the <pnc.org>
domain name to host a website offering commercial links to various websites,
including unrelated and competing websites.
The Panel presumes that Respondent receives click-through fees for
hosting links to competing websites at the disputed domain name and finds that
Respondent’s use of a domain name that is identical to Complainant’s mark is
not a use in connection with a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use of the
domain name pursuant to Policy ¶ 4(c)(iii).
See WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb.
Forum June 12, 2003) (finding that the respondent’s use
of the disputed domain name to redirect Internet users to websites unrelated to
the complainant’s mark, websites where the respondent presumably receives a
referral fee for each misdirected Internet user, was not a bona fide
offering of goods or services as contemplated by the Policy); see also DLJ
Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum
Apr. 9, 2002) (“Respondent is not using the disputed domain name in connection
with a bona fide offering of goods and services because Respondent is using the
domain name to divert Internet users to <visual.com>, where services that
compete with Complainant are advertised.”); see also 24 Hour
Fitness USA, Inc. v. 24HourNames.com-Quality Domains For Sale, FA 187429
(Nat. Arb. Forum Sep. 26, 2003) (holding that Respondent’s use of the <24hrsfitness.com>,
<24-hourfitness.com> and <24hoursfitness.com> domain names to
redirect Internet users to a website featuring advertisements and links to
Complainant’s competitors could not be considered a bona fide offering
of goods or services or a legitimate noncommercial or fair use).
The Panel finds that Policy ¶ 4(a)(ii) has been fulfilled.
Respondent intentionally registered a domain name that
contains Complainant's well known mark in its entirety in order to divert Internet users seeking Complainant to Respondent's
commercial website. Thus, the
Panel finds that Respondent's practice of diversion, motivated by commercial
gain, constitutes bad faith registration and use pursuant to Policy ¶
4(b)(iv). See G.D. Searle & Co.
v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding
that the respondent registered and used the domain name in bad faith pursuant
to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar
domain name to attract Internet users to its commercial website); see also 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).
The Panel finds that Policy ¶ 4(a)(iii) has been fulfilled.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <pnc.org> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: December 20, 2005
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