DECISION

The PNC Financial Services Group, Inc., and PNC Bank, N.A. v. Domains For Sale Inc.

Claim Number: FA0201000104101

PARTIES

Complainant is The PNC Financial Services Group, Inc., and PNC Bank, N.A., Pittsburgh, PA (“Complainant”) represented by Mark S. Sommers, of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP.  Respondent is Domains For Sale Inc., Bronx, NY (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <wwwpncbank.com>, registered with Tucows.

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.

Hon. Ralph Yachnin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on January 23, 2002; the Forum received a hard copy of the Complaint on January 24, 2002.

On January 25, 2002, Tucows confirmed by e-mail to the Forum that the domain name <wwwpncbank.com> is registered with Tucows and that Respondent is the current registrant of the name.  Tucows has verified that Respondent is bound by the Tucows 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 28, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 18, 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@wwwpncbank.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On February 21, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Ralph Yachnin 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 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 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 the Respondent to the Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Respondent’s <wwwpncbank.com> domain name is confusingly similar to Complainant’s registered PNCBANK trademark.

Respondent lacks right to and legitimate interests in the disputed domain name.

Respondent registered and used the dispute domain name in bad faith.

B. Respondent

No Response was submitted.

FINDINGS

Complainant claims rights to the PNCBANK mark due to its registration of the PNCBANK mark (Reg. No. 1,813,131) at the United States Patent and Trademark Office (USPTO) on December 21, 1993.  Complainant holds additional federal registrations of marks incorporating the PNC and PNCBANK marks. 

Moreover, Complainant claims to have developed goodwill in its PNCBANK mark due to its use of the name since 1983, its full range of banking and financial services provided to the public, as well as its websites located at <www.pncbank.com>, and <www.pnc.com>.  As evidence of its extensive relationship with the public, it currently holds 69.8 billion dollars in assets and has 47.7 billion in deposits.

Respondent registered the disputed domain name on November 21, 2001, long after Complainant began using its PNCBANK mark.  Respondent uses the <wwwpncbank.com> domain name to advertise for and promote a graphic anti-abortion political group known as Abortionismurder.org.  On January 22, 2002 John Barry changed the listed registrant from himself to Domains for Sale Inc. However, the website continues to be used for the Abortionismurder.org group.

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 the 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.

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; and

(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

Complainant has established rights in the PNCBANK trademark due to its registration of the mark at the USPTO.

The disputed domain name is confusingly similar to Complainant’s mark because it incorporates the federally registered PNCBANK mark in its entirety, while taking advantage of a common typing error by adding “www”.  The addition of the top-level domain name “.com” is  irrelevant in regard to determining confusing similarity.  See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Prudential Ins. Co. of Am. v. Irvine, FA 95768 (Nat. Arb. Forum Nov. 6, 2000) (finding that the domain name is identical to Complainant’s PRUDENTIAL ONLINE trademark because the root of the domain name, the word "Prudential," is identical to Complainant’s mark; thus, the domain name in its entirety is confusingly similar to the Complainant’s family of marks); see also Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that Respondent’s domain name <wwwbankofamerica.com> is confusingly similar to Complainant’s registered trademark BANK OF AMERICA because it “takes advantage of a typing error (eliminating the period between the www and the domain name) that users commonly make when searching on the Internet”).

           Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Respondent does not have rights to or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(i) because its use of a confusingly similar domain name that takes advantage of Internet users trying to connect to Complainant’s <www.pncbank.com> website and mistakenly omitting the period after “www”, serves to divert Internet traffic away from Complainant to Respondent.  See Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001) (finding no rights or legitimate interests where Respondent diverted Complainant’s customers to his websites).

Respondent, known as Domains For Sale Inc., is presumed not have rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(i) because it has provided no evidence that it is commonly known by PNCBANK or  <wwwpncbank.com>, and its anti-abortion website at the disputed domain name does not appear to reflect the PNCBANK mark or <wwwpncbank.com> name.  See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent has no rights or legitimate interests in domain names because it is not commonly known by Complainant’s marks and Respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use).  Moreover, it is presumed that Respondent would not be commonly known by Complainant’s PNCBANK mark due to the mark’s fame.  See Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one “would be hard pressed to find a person who may show a right or legitimate interest” in a domain name containing Complainant's distinct and famous NIKE trademark).

Respondent does not have rights to or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(iii) because its intention to divert Internet traffic from Complainant’s websites to its own is not a legitimate noncommercial or fair use of the disputed domain name.  See Kosmea Pty Ltd. v. Krpan, D2000-0948 (WIPO Oct. 3, 2000) (finding no rights in the domain name where Respondent has an intention to divert consumers of Complainant’s products to Respondent’s site by using Complainant’s mark).

            Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent’s name on the Whois registration is “Domains for Sale Inc.”, which implies that Respondent registered the domain name primarily for the purpose of selling it. This indicates bad faith registration pursuant to Policy ¶ 4(b)(i).  See Banca Popolare Friuladria S.p.A. v. Zago, D2000-0793 (WIPO Sept. 3, 2000) (finding bad faith where the Respondent offered the domain names for sale); see also American Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”).

Respondent’s attempt to “typosquat” by registering a domain name that is merely a misspelling of Complainant’s website and registered mark is evidence of bad faith pursuant to Policy ¶ 4(b)(iv).  See AltaVista Co. v. Stoneybrook, D2000-0886 (WIPO Oct. 26, 2000) (awarding <wwwalavista.com>, among other misspellings of altavista.com, to Complainant); see also Dow Jones & Co. & Dow Jones, L.P. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000) (awarding domain names <wwwdowjones.com>, <wwwwsj.com>, <wwwbarrons.com> and <wwwbarronsmag.com> to Complainants).

Finally, given the notoriety and fame of Complainant’s mark, Respondent is presumed to have had constructive knowledge of Complainant’s rights in the PNCBANK mark when it registered the disputed domain name.  To posses constructive knowledge of Complainant’s rights at the time of registration is to register the domain name in bad faith.  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). 

Accordingly, 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 the requested relief should be hereby granted.

Accordingly, it is Ordered that the <wwwpncbank.com> domain name be transferred from Respondent to Complainant.

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

Dated: February 25, 2002

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2002/297.html