The PNC Financial Services Group Inc. v.
Unasi Inc.
Claim
Number: FA0508000535925
Complainant is The PNC Financial Services Group Inc. (“Complainant”),
represented by Mark S Sommers of Finnegan Henderson Farabow Garrett & Dunner LLP, 901 New York Avenue NW, Washington,
DC 20001, USA. Respondent is Unasi Inc. (“Respondent”), Galerias
Alvear 3, Zona 5, Panama 5235, Panama.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <pnccredit.com>, <pncfinancialcorp.com>,
<pncbankinternetbanking.com>, <pncbankmastercard.com>,
<pncbankonlinebanking.com>, <pncbankvisa.com>,
<pncbankvisacard.com> and <npcbank.com>, registered with
iHoldings.
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.
The
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on August
9, 2005; the National Arbitration Forum received a hard copy of the Complaint
on August 10, 2005.
On
August 9, 2005, iHoldings confirmed by e-mail to the National Arbitration Forum
that the <pnccredit.com>, <pncfinancialcorp.com>, <pncbankinternetbanking.com>,
<pncbankmastercard.com>, <pncbankonlinebanking.com>,
<pncbankvisa.com>, <pncbankvisacard.com> and <npcbank.com>
domain names are registered with iHoldings and that Respondent is the current
registrant of the names. iHoldings has
verified that Respondent is bound by the iHoldings 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
August 12, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
September 1, 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@pnccredit.com , postmaster@pncfinancialcorp.com,
postmaster@pncbankinternetbanking.com, postmaster@pncbankmastercard.com, postmaster@pncbankonlinebanking.com,
postmaster@pncbankvisa.com, postmaster@pncbankvisacard.com, postmaster@npcbank.com
by e-mail.
Having
received no response from Respondent, the National Arbitration Forum
transmitted to the parties a Notification of Respondent Default.
On
September 8, 2005, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the National Arbitration Forum appointed the
Honorable Charles K. McCotter, Jr. (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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <pnccredit.com>,
<pncfinancialcorp.com>, <pncbankinternetbanking.com>,
<pncbankmastercard.com>, <pncbankonlinebanking.com>,
<pncbankvisa.com>, <pncbankvisacard.com> and <npcbank.com>
domain names are confusingly similar to Complainant’s PNC, PNCBANK and
PNCBANK.COM marks.
2. Respondent does not have any rights or
legitimate interests in the <pnccredit.com>,
<pncfinancialcorp.com>, <pncbankinternetbanking.com>,
<pncbankmastercard.com>, <pncbankonlinebanking.com>,
<pncbankvisa.com>, <pncbankvisacard.com> and <npcbank.com>
domain names.
3. Respondent registered and used the <pnccredit.com>,
<pncfinancialcorp.com>, <pncbankinternetbanking.com>,
<pncbankmastercard.com>, <pncbankonlinebanking.com>,
<pncbankvisa.com>, <pncbankvisacard.com> and <npcbank.com>
domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, The PNC Financial Services Group Inc., is one
of the United States’ largest diversified financial service organizations. Complainant’s services include 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, and PNC Bank is the
principal subsidiary.
Complainant holds numerous registrations with the United States Patent
and Trademark Office (“USPTO”) for the PNC
(Reg. No. 1,416,898 issued November 11, 1986 and 2,508,843 issued November 20,
2001), PNCBANK (Reg. No. 1,863,311 issued November 15, 1994) and PNCBANK.COM
(Reg. No. 2,188,742 issued September 15, 1998) marks. Complainant has used its PNC mark and variations thereof since at
least as early as 1976.
Respondent registered the <npcbank.com> domain name on October 2, 2004; the <pnccredit.com>
and <pncfinancialcorp.com> domain names on January 30, 2005;
and the <pncbankinternetbanking.com>, <pncbankmastercard.com>,
<pncbankonlinebanking.com>, <pncbankvisa.com> and
<pncbankvisacard.com> domain names on February 14, 2005. The disputed domain names are being used for
websites that feature generic search engines and display links to third-party
websites, some of which offer financial products and services in competition
with Complainant.
Respondent’s <pncbankmastercard.com>,
<pncbankvisa.com> and <pncbankvisacard.com> domain
names incorporate multiple parties’ marks and interests. Specifically, the VISA and MASTERCARD marks
are implicated by way of Respondent’s domain names. Due to practical difficulties inherent in the UDRP, cooperative
complaint initiation is unlikely and infeasible. Because Complainant initiated this dispute prior to any other interested
party, Complainant has the opportunity to acquire the domain names, while
seeking to protect its PNC, PNCBANK and PNCBANK.COM marks from an infringing
use. However, due to the procedural
complexities presented by the current dispute, the following issue must be
addressed: that Complainant seeks acquisition of the subject domain names in
good faith, and will forfeit its interest in the contested domain names if the
other represented marks are infringed upon following a transfer of the domain
name registrations to Complainant. See G.D. Searle v. Martin Mktg.,
FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (finding that the complainant’s
continuing control of the
<viagra-xenical-celebrex-propecia-meridia-zyban.com> domain name was contingent upon good faith possession, and the
complainant would forfeit its interest in the domain name if it infringed on
the other represented marks); see also G.D. Searle v. Dunham, FA 123901
(Nat. Arb. Forum Oct. 9, 2002); see also V&S Vin & Sprit
Aktiebolag (publ) v. Pride Not Profit, Inc., FA 452057 (Nat. Arb. Forum May
16, 2005).
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
asserts rights in the PNC, PNCBANK and PNCBANK.COM marks based on its
registration of the marks with the USPTO.
It is well-established under the Policy that a complainant’s
registration of a mark with a federal authority establishes a prima facie
case of the complainant’s rights. See 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.”); see also Innomed Techs.,
Inc. v. DRP Servs., FA 221171 (Nat. Arb.
Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO
establishes Complainant's rights in the mark.”).
Each
of the <pnccredit.com>, <pncfinancialcorp.com>, <pncbankinternetbanking.com>,
and <pncbankonlinebanking.com> domain names incorporates either
Complainant’s PNC, PNCBANK or PNCBANK.COM mark in addition to one or more
common or descriptive terms. Simply
adding a common or descriptive term to Complainant’s registered marks is
insufficient to distinguish the domain names from the marks, especially since
many of the terms have some association to Complainant’s business. Thus, the domain names are confusingly
similar to Complainant’s marks under Policy ¶ 4(a)(i). See Arthur Guinness Son & Co.
(Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding
confusing similarity where the domain name in dispute contains the identical
mark of the complainant combined with a generic word or term); 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).
Additionally,
the <npcbank.com> domain name takes advantage of a potential
misspelling of Complainant’s PNCBANK.COM mark in which an Internet user might
transpose the letters “n” and “p” in the mark.
This practice constitutes “typosquatting,” which Panels have held to be
inadequate in creating a domain name distinct from a complainant’s mark. Consequently, the Panel determines that the
domain name is confusingly similar to Complainant’s mark. See Google Inc. v. Jon G., FA
106084 (Nat. Arb. Forum Apr. 26, 2002) (finding <googel.com> to be
confusingly similar to the complainant’s GOOGLE mark and noting that “[t]he
transposition of two letters does not create a distinct mark capable of
overcoming a claim of confusing similarity, as the result reflects a very
probable typographical error”); see also Pier 1 Imps., Inc. v. Success Work, D2001-0419 (WIPO May 16, 2001) (finding that the domain name
<peir1.com> is confusingly similar to the complainant's PIER 1 mark).
The <pncbankmastercard.com>, <pncbankvisa.com> and
<pncbankvisacard.com> domain names include Complainant’s PNCBANK.COM
mark combined with a common or descriptive term and third-party marks related
to the credit card industry. Such
additions of common terms and third-party marks are not enough to overcome a
finding of confusing similarity under Policy ¶ 4(a)(i). See G.D. Searle & Co. v.
Entm’t Hosting Servs., Inc., FA 110783 (Nat. Arb. Forum June 3, 2002) (“The
Panel concludes that the
<viagra-propecia-xenical-celebrex-claritin-prescriptions.com> domain name
is confusingly similar to Complainant’s CELEBREX mark because the mere addition
of related competing products’ names in the domain name does not defeat a
confusing similarity claim.”); see also Arthur Guinness Son & Co.
(Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding
confusing similarity where the domain name in dispute contains the identical
mark of the complainant combined with a generic word or term).
The
Panel finds that Policy ¶4(a)(i) has been satisfied.
Panels have
consistently held under the Policy that the complainant has the initial burden
of proving that the respondent lacks rights and legitimate interests in the
disputed domain names. In Compagnie
Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May
14, 2001), the panel held:
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.
Id.; see also Do The Hustle, LLC
v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that where the
complainant has asserted that the respondent has no rights or legitimate
interests with respect to the domain name it is incumbent on the respondent to
come forward with concrete evidence rebutting this assertion because this
information is “uniquely within the knowledge and control of the
respondent”). Having found that
Complainant has met its initial burden by establishing a prima facie
case, the Panel will now analyze whether Respondent has met its burden to
establish rights or legitimate interests in the disputed domain names under Policy
¶ 4(c).
Complainant
asserts that Respondent is not commonly known by the disputed domain names and
is not a licensee of Complainant.
According to the WHOIS information for the disputed domain name,
Respondent identifies itself as “Unasi Inc.”
Thus, without a response from Respondent to provide any evidence that it
is commonly known by the disputed domain name, the Panel accepts Complainant’s
arguments in finding that Respondent has not established rights or legitimate
interests in the disputed domain name under 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 RMO, Inc. v. Burbridge, FA
96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to
require a showing that one has been commonly known by the domain name prior to
registration of the domain name to prevail"); see also Vanguard
Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding
that because Respondent failed to submit a Response, “Complainant’s submission
has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all
reasonable allegations . . . unless clearly contradicted by the evidence.”).
Respondent is
using the disputed domain names to divert Internet users searching for
information regarding Complainant’s PNC, PNCBANK and PNCBANK.COM marks to
websites that feature generic search engines and links to various products and
services, some of which compete with Complainant’s business. Furthermore, the Panel presumes that
Respondent derives commercial benefit from these diversions due to
click-through fees from the links on the websites. The Panel finds that such commercial use of confusingly similar
versions of Complainant’s PNC, PNCBANK and PNCBANK.COM marks to attract
Internet users to Respondent’s commercial websites for Respondent’s benefit
does not qualify as a bona fide offering of goods or services under
Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain names
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
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). Additionally, in failing to submit a response to Complainant’s contentions, Respondent
has neglected to provide any evidence that would challenge Complainant’s prima
facie case. The Panel, therefore,
finds that Respondent has not established rights or legitimate interests in the
disputed domain names under Policy ¶ 4(c)(i) or (iii). See Euromarket Designs,
Inc. v. Domain For Sale VMI, D2000-1195 (WIPO Oct. 26, 2000) (“In the
absence of direct evidence, the complainant and the panel must resort to
reasonable inferences from whatever evidence is in the record. In addition . . . Paragraph 14(b) of the
Rules [authorizes] a panel to draw such inferences from respondent’s failure to
respond ‘as it considers appropriate.’”).
The
Panel finds that Policy ¶4(a)(ii) has been satisfied.
The disputed
domain names resolve to websites that features generic search engines and
directories of links to various products and services similar to those of
Complainant. The Panel presumes that
Respondent receives commissions for diverting Internet users to third-party
websites via the search engines and links located at Respondent’s
websites. Additionally, Respondent’s
use of confusingly similar versions of Complainant’s distinctive PNC, PNCBANK
and PNCBANK.COM marks in the domain names creates a likelihood of confusion and
suggests an attempt to attract Internet users to Respondent’s websites for
Respondent’s commercial gain. The Panel
finds that this is evidence of Respondent’s bad faith registration and use
pursuant to Policy ¶ 4(b)(iv). See
Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration
and use of a domain name that incorporates another's mark with the intent to
deceive Internet users in regard to the source or affiliation of the domain
name is evidence of bad faith.”); see also 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 Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002)
(finding that if the respondent profits from its diversionary use of the
complainant's mark when the domain name resolves to commercial websites and the
respondent fails to contest the complaint, it may be concluded that the
respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).
Furthermore,
Respondent’s registration of the disputed
domain names, which contain confusingly similar versions of Complainant’s PNC,
PNCBANK and PNCBANK.COM marks, and Complainant’s registration of its marks with
the USPTO suggest that Respondent knew of Complainant’s rights in the mark when
Respondent registered the domain names.
Complainant has acquired substantial goodwill in its marks, causing the
public to associate the PNC, PNCBANK and PNCBANK.COM marks with Complainant’s
goods and services. In light of these
circumstances, the Panel finds that Respondent chose the disputed domain names
due to the fame of Complainant’s marks.
Respondent’s registration of domain names that contain Complainant’s
marks despite Respondent’s knowledge of Complainant’s rights in the marks is
evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA
124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad
faith, when Respondent reasonably should have been aware of Complainant’s
trademarks, actually or constructively.”); see also 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
Exxon Mobil Corp. v. Fisher,
D2000-1412 (WIPO Dec. 18, 2000) (finding that the respondent had actual and
constructive knowledge of the complainant’s EXXON mark given the worldwide
prominence of the mark and thus the respondent registered the domain name in
bad faith); see also 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).
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 <pnccredit.com>,
<pncfinancialcorp.com>, <pncbankinternetbanking.com>,
<pncbankmastercard.com>, <pncbankonlinebanking.com>,
<pncbankvisa.com>, <pncbankvisacard.com> and <npcbank.com>
domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated:
September 20, 2005
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