Pncbankcreditcard.info

The timeline behind pncbankcreditcard.info

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

NATIONAL ARBITRATION FORUM DECISION The PNC Financial Services Group, Inc. v. Brian Thaoms c/o Featured on CNN.com-Over 1.5 Million Hits Daily Claim Number: FA0506000495474 PARTIES Complainant is The PNC Financial Services Group, Inc. (“Complainant”), represented by Mark Sommers, of Finnegan, Henderson, Farabow, Garrett, & Dunner, LLP, 901 New York Avenue NW, Washington, DC 20001. Respondent is Brian Thaoms c/o Featured on CNN.com-Over 1.5 Million Hits Daily (“Respondent”), P.O. Box 1025, Berkeley Springs, WV 25411. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <pncbankcreditcard.info>, registered with eNom. PANEL 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 A. Carmody, Esq., as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on June 13, 2005; the National Arbitration Forum received a hard copy of the Complaint on June 14, 2005. On June 15, 2005, eNom confirmed by e-mail to the National Arbitration Forum that the domain name <pncbankcreditcard.info> is registered with eNom and that Respondent is the current registrant of the name. eNom has verified that Respondent is bound by the eNom 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 June 22, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 12, 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@pncbankcreditcard.info by e-mail. Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default. On July 19, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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. RELIEF SOUGHT Complainant requests that the domain name be transferred from Respondent to Complainant. PARTIES' CONTENTIONS A. Complainant makes the following assertions: 1. Respondent’s <pncbankcreditcard.info> domain name is confusingly similar to Complainant’s PNCBANK mark. 2. Respondent does not have any rights or legitimate interests in the <pncbankcreditcard.info> domain name. 3. Respondent registered and used the <pncbankcreditcard.info> domain name in bad faith. B. Respondent failed to submit a Response in this proceeding. FINDINGS Complainant, PNC Financial Services Group, Inc., is one of the largest national diversified financial service organizations in the United States, which owns and manages over $70 billion worth of assets. Complainant provides regional banking, corporate banking, real estate finance, asset-based lending, private banking, asset management, global fund services, and bankcards. Complainant has registered several marks with the United States Patent and Trademark Office (“USPTO”), including the PNCBANK mark (Reg. No. 1,863,311 issued November 15, 1994), under which Complainant provides various financial services. Respondent registered the <pncbankcreditcard.info> domain name on March 11, 2005. Respondent’s domain name resolves to a website that offers various competing and non-competing links to commercial websites. Furthermore, Respondent’s WHOIS information contains an offer to sell the disputed domain name. On June 10, 2005 prior to the commencement of this UDRP proceeding, Respondent’s address field contained the following language: “465,873 Unique Hits Today / Valued at $125,000, P.O. Box 1025, Website included Free! 4 Sale!!” Also at the time of commencement, Respondent’s website featured a link through which an individual could place an offer to purchase the domain name registration. After the Complaint was filed on June 13, 2005, Respondent changed the pertinent WHOIS information to say, “Domain Name for Sale only $199, MUST SELL NOW.” 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." 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. Identical and/or Confusingly Similar Complainant has provided evidence of rights in the PNCBANK mark through registration of the mark with the USPTO. Such registration creates prima facie evidence of rights in the Complainant’s mark. As a result, the burden shifts onto Respondent to refute this presumption. In light of Respondent’s failure to set forth evidence suggesting otherwise, Complainant has established rights in the PNCBANK mark pursuant to Policy ¶ 4(a)(i). See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that 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 respondent has the burden of refuting this assumption); see also U.S. Office of Pers. Mgm’t v. MS Tech. Inc., FA 198898 (Nat. Arb. Forum Dec. 9, 2003) (“[O]nce the USPTO has made a determination that a mark is registrable, by so issuing a registration, as indeed was the case here, an ICANN panel is not empowered to nor should it disturb that determination.”). Complainant argues that Respondent’s <pncbankcreditcard.info> domain name is confusingly similar to Complainant’s PNCBANK mark. The disputed domain name incorporates the entire PNCBANK mark and adds the generic term “credit card” which describes the business in which Complainant is involved, along with the generic top level domain name “.info.” Such minor changes fail to significantly distinguish Respondent’s domain name from Complainant’s PNCBANK mark pursuant to Policy ¶ 4(a)(i). See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detracts from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied); 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). The Panel finds that Policy ¶ 4(a)(i) has been satisfied. Rights or Legitimate Interests Complainant asserts that Respondent has no rights or legitimate interests in the disputed <pncbankcreditcard.info> domain name. Complainant’s assertion constitutes a prima facie case under Policy ¶ 4(a)(ii), shifting the burden of production onto Respondent to prove that rights or legitimate interests do, in fact, exist. See 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).”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under certain circumstances the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist). Because Respondent failed to submit a response, the Panel construes this as evidence that Respondent lacks rights and legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii). 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.”). Respondent is using the confusingly similar <pncbankcreditcard.info> domain name to operate a website featuring links to both competing and noncompeting websites, from which Respondent presumably receives referral fees. Such diversionary and unauthorized use is neither a use in connection with a bona fide offering of goods or sevices pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy 4(c)(iii). See Bank of Am. Corp. v. Northwest 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 Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”). Furthermore, there is evidence in the record that indicates Respondent intended to sell the domain name registration. Respondent’s registration of a confusingly similar domain name for the purpose of selling that name for commercial gain is evidence that Respondent lacks rights and legitimate interests in the domain name pursuant to Policy ¶ 4(a)(ii). See Mothers Against Drunk Driving v. Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the respondent’s conduct purporting to sell the domain name suggests it has no legitimate use). Finally, nothing in the record indicates that Respondent is either commonly known by the disputed domain name or authorized to register domain names featuring Complainant’s PNCBANK mark. Therefore, the Panel finds that Respondent has failed to establish rights or legitimate interests in the <pncbankcreditcard.info> domain name pursuant to 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 Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name). The Panel finds that Policy ¶ 4(a)(ii) has been satisfied. Registration and Use in Bad Faith Respondent registered the <pncbankcreditcard.info> domain name with the intent to sell the domain name registration for commercial gain. Although such practice is not inherently wrong, registering a domain name whose value is derived from its confusingly similar nature to a widely known trademark does imply bad faith on the part of Respondent pursuant to Policy ¶ 4(b)(i). See Diners Club Int’l Ltd. v. Domain Admin******It's all in the name******, FA 156839 (Nat. Arb. Forum June 23, 2003) (finding that when the domain name itself notes that it is “available for lease or sale,” evidence that the domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(i) can be inferred from the fact that “the sole value of the [<wwwdinersclub.com] domain name is dictated by its relation to the complainant’s registered DINERS CLUB mark); see also Parfums Christain Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding bad faith where the respondent’s WHOIS registration information contained the words, “This is [sic] domain name is for sale”). Moreover, Respondent is using the <pncbankcreditcard.info> domain name to divert Internet users to both competing and noncompeting commercial websites through a series of hyperlinks from which Respondent presumably receives click-through fees. Because Respondent’s domain names are confusingly similar to Complainant’s PNCBANK mark, consumers accessing Respondent’s domain name may become confused as to Complainant’s affiliation with the resulting websites. Therefore, Respondent’s commercial use of the disputed domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See 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); see also Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant). Finally, Respondent registered the <pncbankcreditcard.info> domain name with actual or constructive knowledge of Complainant’s rights in the PNCBANK mark. Because Complainant has a USPTO registered trademark, the Respondent is deemed to have constructive knowledge of Complainant’s rights in the PNCBANK mark. See 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); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO, a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof.”). Furthermore, due to the obvious similarity between the information contained on Respondent’s website and Complainant’s business, the Panel infers that Respondent had actual knowledge of Complainant’s trademark rights. Registration of a domain name that is confusingly similar to another’s mark despite actual or constructive knowledge of the mark holder’s rights is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See 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 Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant’s mark and the content advertised on the respondent’s website was obvious, the respondent “must have known about the Complainant’s mark when it registered the subject domain name”). The Panel finds that Policy ¶ 4(a)(iii) has been satisfied. DECISION Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED. Accordingly, it is Ordered that the <pncbankcreditcard.info> domain name be TRANSFERRED from Respondent to Complainant. James A. Carmody, Esq., Panelist Dated: July 28, 2005 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page NATIONAL ARBITRATION FORUM

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.