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Generic Top Level Domain Name (gTLD) Decisions |
The PNC Financial Services Group Inc. et
al v. Paksys Consulting Inc.
Claim Number: FA0201000103523
PARTIES
The Complainant is The PNC Financial Services Group, Inc. et. al., Pittsburgh, PA
(Complainant) represented by Mark S.
Sommers, of Finnegan, Henderson,
Farabow, Garrett & Dunner, L.L.P..
The Respondent is Paksys
Consulting, Inc., Woodbridge, NJ (Respondent).
REGISTRAR
AND DISPUTED DOMAIN NAME
The domain name at issue is <pncinsurance.com>, registered
with Stargate Communications, Inc.
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.
Robert T. Pfeuffer, Senior District
Judge.
PROCEDURAL
HISTORY
Complainant submitted a Complaint to the
National Arbitration Forum (the Forum) electronically on January 2, 2002; the
Forum received
a hard copy of the Complaint on January 3, 2002.
On January 3, 2002, Stargate
Communications, Inc. confirmed by e-mail to the Forum that the domain name <pncinsurance.com> is registered
with Stargate Communications, Inc. and that the Respondent is the current
registrant of the name. Stargate
Communications, Inc. has verified that Respondent is bound by the Stargate
Communications, 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 January 3, 2002, a Notification of
Complaint and Commencement of Administrative Proceeding (the Commencement
Notification), setting
a deadline of January 23, 2002 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@pncinsurance.com by e-mail.
Respondent submitted an e-mail to the
Forum on January 14, 2002, which was not in compliance with UDRP Rule 5 or the
Forum=s Supplemental
Rule 5.
Complainant submitted a timely Additional
Submission on January 18, 2002, pursuant to the Forum’s Supplemental Rule 7.
On February 5, 2002, pursuant to
Complainant’s request to have the dispute decided by a single-member Panel, the
Forum appointed ROBERT
T. PFEUFFER as Panelist.
RELIEF
SOUGHT
The Complainant requests that the domain
name be transferred from the Respondent to the Complainant.
PARTIES
CONTENTIONS
A. Complainant
Complainant is a Pennsylvania corporation
doing business in Pittsburgh, Pennsylvania where it asserts it and
predecessors-in-interest
have done business for nearly 150 years. It and its other financial holdings have
used the PNC name and mark in identifying its businesses, including PNC BANK,
PNC Insurance
Services, Inc., and PNC Insurance Corp. The dispute arose when
Respondent registered the domain name <pncinsurance.com>. Complainant alleges violation of ICANN
Policy para. 4(a)(ii) no rights or
legitimate interests and Policy para. 4(a)(iii) bad faith by Respondent’s
actions, among others.
B. Respondent
On January 14, 2002 Respondent attempted
to submit a Response that did not conform to the procedural requirements set
out in UDRP
Rule 5 of the Forum’s Supplemental Rule 5. The Panel finds the
Respondent is in default and will not consider the Response of January
14,
2002.
C. Additional Submissions
On January 18, 2002, Complainant filed an
additional submission in a timely manner, complying with The Forum’s
supplemental Rule #7,
which is fully considered.
FINDINGS
Respondent filed an intent-to-use
trademark application with the U.S. Patent and Trademark Office after it was
informed of Complainant’s
objection to Respondent’s use of the disputed domain
name. Ample authority exists to deny
Respondent’s assertion that its trademark application proves it has any rights
or legitimate interests
under Policy para. 4(a)(ii). Respondent’s trademark application was rejected by the USPTO
because it was found to be confusingly similar to Complainant’s marks. Respondent asserts that it is known as and
does business as Pakistan Network Consulting for Insurance. Its failure to offer proof that such an
entity exists further demonstrates that Respondent has no actual rights to the
disputed domain
name.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform
Domain Name Dispute Resolution Policy (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 the 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 the
Respondent is identical or confusingly similar to a trademark or service mark
in which the Complainant
has rights;
(2) the 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
In its original Complaint and its
Supplemental Response to Respondent’s attempted submission, Complainant has
furnished numerous items
of evidence demonstrating its use of the mark
PNC. See attachments to Complainant’s
Reply and its attachments to its original complaint. These include their web sites at <pnc.com>, and
<pncbank.com> set out in exhibit 4 of its original
complaint, along with exhibit 5 (PNCINSURANCE) found at
<pncinsuranceonline.com>. It should
be noted that the United States
Patent and Trademark Office refused to register the mark on the basis that it
was confusingly similar
to more than twenty of Complainant’s PNC-FORMATIVE
APPLICATIONS AND REGISTRATIONS.
Rights or Legitimate Interests
Respondent claims to be known as Pakistan
Network Consulting for Insurance, however, its failure to provide proof of the
existence
of such an entity is evidence that it does not actually have rights
or interests in the disputed domain name.
In addition, Respondent’s filing of an intent-to-use trademark
application with the U.S. Patent and Trademark Office was done after
Complainant had informed Respondent of the infringement caused by the disputed
domain name. Because Respondent had
been put on notice of Complainant’s assertion, a trademark application under
these circumstances, will not
suffice to provide rights or legitimate interests
under Policy para. 4(a)(ii).
Registration and Use in Bad Faith
Complainant asserts that Respondent has
previously registered domain names that infringed upon Complainant’s trademarks
and attempted
to sell them to Complainant.
The Panel so finds and considers this as evidence of bad faith under Policy
para. 4(b)(i). It is further found that
Respondent’s history of registering infringing domain names suggests a bad
faith pattern of behavior calculated
to prevent Complainant from registering
domain names that reflects its marks.
It is further found that Respondent’s unauthorized use of Complainant’s
trademarks to redirect users to its own commercial web site
provides further
evidence of bad faith under Policy para. 4(b)(iv). This Panel further finds that Complainant’s 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. Looking to the totality of the circumstances, Respondent was
clearly acting in bad faith in registering the disputed domain name.
DECISION
The facts presented to the Panel in this
cause reflect clearly that:
1. Respondent has not been using and had not
prepared to use the domain name to offer bonafide goods or services;
2. Respondent
has not been commonly known as the domain name;
3. The Respondent has not made fair use of
Complainant’s PNC and PNC INSURANCE marks;
4. The
domain name <pncinsurance.com> is confusingly similar to
Complainant’s PNC and PNC INSURANCE marks;
5. Respondent
has no legitimate interest in the domain name; and
6. Respondent
registered and used the domain name in bad faith pursuant to section 4(b) of
the UDRP.
The Panel therefore finds that the domain
name <pncinsurance.com>should be transferred immediately to
PNC FINANCIAL SERVICES GROUP, INC.
ROBERT T. PFEUFFER, Panelist
Dated: February 12, 2002
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