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Generic Top Level Domain Name (gTLD) Decisions |
The PNC Financial Services Group, Inc.
and PNC Bank, N.A. v. James Wilkerson d/b/a Iclicks Network
Claim Number: FA0201000104111
PARTIES
The
Complainants are The PNC Financial
Services Group, Inc., and PNC Bank,
N.A., Pittsburgh, PA (“Complainants”) represented by Mark S. Sommers, of Finnegan,
Henderson, Farabow, Garrett & Dunner.
The Respondent is James Wilkerson
d/b/a Iclicks Network, San Jose, CA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <pnccs.com>,
registered with Go Daddy Software, Inc. (“Go Daddy”).
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.
Jonathan
Hudis is the sole Panelist for this matter.
PROCEDURAL HISTORY
In
accordance with the Uniform Domain Name Dispute Policy, adopted by the Internet
Corporation for Assigned Names and Numbers (“ICANN”)
on August 26, 1999, and
approved by ICANN on October 24, 1999 (the “Policy”) and the Rules for Uniform
Domain Name Dispute Resolution
Policy (the “Rules”), adopted by ICANN on August
26, 1999, and approved by ICANN on October 24, 1999, and the National
Arbitration
Forum (the “Forum”) Supplemental Rules (“Supp. Rules”), Complainants
submitted a Complaint to the Forum electronically on January
25, 2002; the
Forum received a hard copy of the Complaint on January 29, 2002.
On
January 31, 2002, Go Daddy confirmed by e-mail to the Forum that the domain
name <pnccs.com> is registered
with Go Daddy and that the Respondent is the current registrant of this domain
name. Go Daddy has verified that
Respondent is bound by the Go Daddy registration agreement and has thereby
agreed to resolve domain name
disputes brought by third parties in accordance
the “Policy.
On
January 31, 2002, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”),
setting a deadline
of February 20, 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@pnccs.com by e-mail.
On
February 15, 2002, the Forum received a document dated February 14, 2002,
entitled “Complaint Response for Domain Name pnccs.com.” The document bears the name of Wes Mayder,
CEO, WeDirect, Inc. On February 20, 2002,
the Forum received Complainant’s Reply, which the Forum deemed timely and in
conformity with the Forum’s Supplemental
Rules. Also on February 20, 2002, the Forum received an additional
document by e-mail entitled “In Response to Complaints [sic] Reply”. The Forum deemed Respondent’s supplemental
submission to be timely and in conformity with the Forum’s Supplemental Rules.
On
February 18, 2002, pursuant to Complainants’ request to have the dispute
decided by a single-member Panel, the Forum solicited
the interest of the
undersigned to be the sole Panelist who would decide this matter. On February 20, 2002, after clearing
potential conflicts of interest, the undersigned accepted the Forum’s
invitation. The Forum has appointed
Jonathan Hudis as Panelist. On February
21, 2002, the Forum forwarded electronic and hard copy versions of the case
file to the undersigned.
RELIEF SOUGHT
Complainants
request that the domain name be transferred from Respondent to Complainants.
PARTIES’ CONTENTIONS
A.
Complainants
According
to the Complaint, The PNC Financial Services Group, Inc. (formerly known as PNC
Bank Corp.) (“PNC”) is a Pennsylvania corporation
located and doing business in
Pittsburgh, Pennsylvania. PNC Bank,
N.A. (“PNC Bank”) is a Delaware national banking association having its principal
place of business also in Pittsburgh,
Pennsylvania. PNC is a publicly traded bank holding company; and PNC Bank is
the principal bank subsidiary of PNC.
PNC was founded in 1983, and claims it is one of the largest national
diversified financial service organizations in the United States.
PNC
asserts ownership in a family of PNC-formative marks. Collectively, Complainants assert that they offer, both on-line
and in the general marketplace, a full range of banking and financial
services
to individuals and businesses.
Complainants’ main web sites are located at the domain names <pncbank.com> and <pnc.com>.
Complainants
assert that, having been widely promoted to members of the general consuming
public for decades, the PNC mark and trade
name symbolize substantial goodwill
associated with Complainants.
Complainants assert that the PNC mark and trade name are famous.
Complainant
previously owned the domain name <pnccs.com>,
which they assert stands for “PNC Consumer Service” since August 25, 2000. Complainants purport to have used the <pnccs.com> domain name for a banking
customer service web site from the prior registration date until it
inadvertently lapsed for non-payment
of the renewal fee. Complainants were unable to re-register the
<pnccs.com> domain name
because, by the time Complainants had learned that their domain name
registration had lapsed, Respondent registered
it on January 18, 2002.
Complainants
assert ownership in a number of registered marks containing the initials
“PNC”. Based upon their ownership and
common law uses of these marks, Complainants assert ownership in famous family
of “PNC…” marks.
According
to exhibits annexed to the Complaint, Wesley Mayder is a part owner of
Respondent Iclicks Network and is also part owner
of Western Capital Mortgage,
whom Complainants allege is one of Complainants’ competitors as a licensed
mortgage broker in New York
State. The
named Respondent, Iclicks Network, is an Internet advertising company. Mr. Mayder also is the owner of another
Internet advertising company, WeDirect.com.
Complainants assert that WeDirect.com was previously involved in an
unrelated domain name dispute [Edmunds.com
v. Polaski, Case No. D2001-0928 (WIPO Sept. 16, 2001)]. Further, WeDirect.com is alleged to be the
owner of “at least one trademark related domain name,” <viagraxenicalpropecia.com>.
Complainants
assert that Respondent registered the <pnccs.com>
domain name with actual and constructive knowledge of Complainants’ rights in
the “PNC…” marks. Complainants further assert that Respondent
acted in bad faith by breaching its registration contract with the domain name
registrar
Go Daddy, because it allegedly “falsely represented that its
registration of the domain name <pnccs.com>
did not infringe the rights of any third party.” Complainants further assert (without support) that “Respondent
makes a business practice of registering domain names that are recently
deleted.”
Complainants
submitted evidence that, as of January 23, 2002, the <pnccs.com> domain name did not resolve to an active web
site. Also on January 23, 2002,
Complainant’s counsel sent a cease-and-desist letter to Respondent demanding
the transfer of the domain
name and offering to reimburse Respondent for its
registration expenses.
On
January 24, 2002, a representative of Respondent, “Doug Ridley,” and
Plaintiff’s counsel had a telephone conversation to discuss
this matter. Mr. Ridley, it is alleged, claimed to never
have heard of PNC and that his company, Iclicks, has never sold any domain names. Mr. Ridley, on behalf of his company,
refused to return the <pnccs.com>
domain name to Complainants.
On
January 24, 2002, web site content began appearing at the URL http://www.pnccs.com. At least as early as February 14, 2002, more
substantial-looking commercial content appeared at the web site resolving to
the <pnccs.com> domain name
under the banner “Prime National Car Cost Service.” This web site purports to be a price-quoting service for cars and
trucks for the 2001 and 2002 model years.
Complainants assert that this web site content is merely a sham,
recently established under the <pnccs.com>
domain name in an effort to persuade the Panel that Respondent has a legitimate
interest in the contested domain name.
Finally,
because Mr. Mayder responded in the name of WeDirect, Inc. and not in the name
of Iclicks Network, Complainants assert that
Respondent should be held in
default for failing to answer Complainants’ UDRP Complaint.
B.
Respondent
Respondent’s
Answer to the UDRP Complaint, indeed, was submitted by Wes Mayder, CEO of WeDirect,
Inc. Mr. Mayder asserts that WeDirect,
Inc. is the owner of Iclicks and thus the owner of the <pnccs.com> domain name.
Respondent registered the contested domain name through the Go Daddy
registrar for an automobile site named “Prime National Car Cost
Service.” The nature of the web site is described
above.
Respondent
asserts that Complainants’ contention that Respondent purchased the contested
domain name knowing that it was owned by
PNC Bank “is absurd.” Respondent further asserts that PNC Bank
offered to purchase the contested domain name for $15,000. After Respondent accepted Complainants’
proposal, says Respondent, communications between the parties ceased. Complainant contends that the parties’
communications ended because “title” to the domain name could not be
verified. In any event, Respondent
denies ever approaching Complainants about selling them the contested domain
name.
Further,
Respondent points out that Complainants do not have a trademark (which the
Panel believes Respondent means a trademark “registration”)
for PNCCS or
PNCCS.COM. Respondent asserts that
Complainants do not and cannot have rights to any domain name beginning with
the letter string “P-N-C.”
Respondent
further asserts that it purchased the contested domain name in good faith and
has spent thousands of dollars designing
a web site for it. Further, says Respondent, it developed an
expensive web site under the contested domain name having content completely
unrelated to
the industry in which Complainants operate. Respondent asserts that it never had
knowledge that the <pnccs.com>
domain name was previously owned by PNC Bank.
Respondent devotes much of its Answer denying the allegations of bad
faith asserted by Complainants.
In
its further Response, Respondent submitted a Bloomberg news story dated
February 20, 2002, reporting on an investigation opened
by the Securities and
Exchange Commission into the accounting practices of PNC Financial Services
Group. This article is irrelevant to the issues presently before
the Panel.
In
the substantive portion of its further Response, Respondent spends most of its
time again denying Complainants’ allegations, asserting
that Complainants’
allegations are false, and contending that Complainants engaged in trickery
during the parties’ brief communications
with one another.
FINDINGS AND 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 Complainants 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 Complainants
have 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.
In
an administrative proceeding pursuant to policy, the Complainant must prove
that each of these three elements are present.
ICANN Policy ¶4(a).
The
following circumstances, in particular but without limitation, if found by the
Panel to be present, shall be evidence of the registration
and use of a domain
name in bad faith:
(i) Circumstances
indicating that the registrant registered or acquired the domain name primarily
for the purpose of selling, renting
or otherwise transferring the domain name
registration to the Complainant who is the owner of the trademark or service
mark, or to
a competitor of that Complainant for valuable consideration in
excess of the registrant’s documented out-of-pocket costs directly
related to
the domain name;
(ii) The
registrant has registered the domain name in order to prevent the owner of the
trademark or service mark from reflecting the mark
in a corresponding domain
name, provided that it is shown that the registrant has engaged in a pattern of
such conduct; or
(iii) The
registrant registered the domain name primarily for the purpose of disrupting
the business of the competitor; or
(iv) By
using the domain name, the registrant has intentionally attempted to attract,
for commercial gain, internet users to his web site
or other on-line location,
by creating a likelihood of confusion with the Complainant’s mark as to the
source, sponsorship, affiliation,
or endorsement of the registrant’s web site
or location of a product or service on his web site or location.
Policy,
¶4(b).
On the
other hand, any of the following circumstances, in particular but without
limitation, if found by the Panel to be proved based
on its evaluation of all
evidence presented, shall demonstrate the registrant’s rights or legitimate
interests to the domain name:
(i) Before
any notice to the registrant of the dispute, its use of, or demonstrable
preparations to use, the domain name or a name corresponding
to the domain
name, in connection with the bona fide
offering of goods or services; or
(ii) The
registrant (as an individual, business, or other organization) has been
commonly known by the domain name, even if the registrant
has acquired no trade
mark or service mark rights; or
(iii) The registrant is making a legitimate non-commercial or fair
use of the domain name, without intent for commercial gain to misleadingly
divert consumers or to tarnish the trademark or service mark at issue.
Policy
¶4(c).
It
is the Complainants that have the burden of proving all three elements of
Paragraph 4(a) of the Policy.
Complainant’s failure to prove any one of these three elements is fatal
to their claim. See, e.g., EMoney Group, Inc. v. Eom San Sik, FA96337 (Nat. Arb.
Forum Mar. 26, 2001); J.L. Wilson Co., Inc. v. Ultraviolet
Resources Intl., Case No. FA97148 (Nat Arb. Forum June 18, 2001). Further, as the explanatory history to the
Policy states: “excepting cases involving ‘abusive registrations’ made with
bad-faith intent
to profit commercially from others’ trademarks, (e.g., cyber-squatting and cyber-piracy),
the adopted policy leaves the resolution of disputes to the courts …. The adopted policy establishes a streamlined
inexpensive administrative dispute-resolution procedure intended only for the
relative
narrow class of cases of ‘abusive registrations.’ Thus, the fact that the Policy’s
administrative dispute-resolution procedure does not extend to cases where a
registered domain name
is subject to a legitimate dispute (and may ultimately
be found to violate the challenger’s trademark) is a feature of the
Policy….” ICANN Staff Report, http://www.icann.org/udrp/udrp-second-staff-report-24oct99-htm.
In
their Reply, Complainants assert that “the domain name holder, Mr. Wilkerson,
having not responded, has defaulted. In
its submission, WeDirect does not explain its relationship with Mr. Wilkerson,
nor does it explain Mr. Wilkerson’s employment with
any entity. WeDirect’s colorable claim of ownership does
not constitute a procedurally accurate response on Mr. Wilkerson’s
behalf.”
Complainants’
request for an entry of default against Respondent is denied. By Complainants’ own submissions, they have
shown common dominion and/or control through Wesley Mayder of Respondent
IClicks and WeDirect.com/WeDirect,
Inc., in whose name Mr. Mayder submitted a
Response. Mr. Mayder is not a lawyer and
apparently did not appreciate the technicalities of responding in name of the
exact party against whom
the domain name proceeding was brought.
Each
party to this proceeding provided two set of submissions each to the Forum so
that the Panel could decide this matter.
The Forum deemed all parties’ submissions to be timely and in accordance
with the Rules and the Forum’s Supplemental Rules. Under the circumstances, it would be unfair to decide the present
dispute based upon a mere technicality when the dispute should be
decided on
the merits of the parties’ submissions.
Identical and/or Confusingly Similar
It is Complainants’ burden to show that the contested domain
name is identical or confusingly similar to trademark(s) or service mark(s)
in
which Complainants have rights. Policy
¶4(a)(i)
Complainants assert that they hold rights
in a family of “PNC…” marks through registrations with the United States Patent
and Trademark
Office. Complainants
submitted, as attachments to their Complaint, an on-line database search report
and an in-house report of “PNC…” marks
allegedly owned by Complainants (with
Amended Articles of Incorporation). Reports of this type have previously been
held to be of
little evidentiary value.
Lloyd’s Food Products, Inc. v.
Eli’s, Inc., [1993] USCAFED 172; 987 F.2d 766, 768 (Fed. Cir. 1993). The Panel would have preferred Complainants’ submission of (i)
status-and-title copies of the registered marks showing the current
owner; or
(ii) soft copies of the registrations with an accompanying declaration of one
of Complainants’ officers (or other authorized
representative) attesting to the
current subsistence and ownership of the registered marks; or, at the very
least (iii) TESS and
TARR database printouts from the records available on-line
of the U.S. Patent and Trademark Office accompanied by the assignment
records
(if any) filed with the U.S. Patent and Trademark Office. If
the submission of this type of documentation was all that would have
been necessary to fill the holes in the evidentiary record, the
Panel would
have entered an interim order (under Rule 12) requesting the additional
documentation, and, upon Complainants’ compliance, this would have resolved the matter. However, because of additional outstanding disputed factual
issues noted below, the mere submission of this documentation would not
assist
Complainants.
Respondent asserts that, while
Complainants may hold rights in trademarks including the letters “PNC…,”
Complainants have not been
granted exclusive rights to all domain names
containing the letters “PNC….” There is
merit to Respondent’s contention in this respect. See, B2BWorks, Inc. v.
Venture Direct Worldwide, Inc., FA97119 (Nat Arb. Forum June 5, 2001)
(holding that Complainant did not have exclusive rights to use of the terms
“B2B” and “Works”
in association with other words, even with a registered
trademark for “B2Bworks); see also, ISL
Marketing AG, and the Fed’n Int’l de Football Assn. v. Chung, Case No.
D2000-0034 (WIPO Apr. 3, 2000) (finding that, although one may argue that “WC”
is an abbreviation of WORLD CUP, it is not
likely the meaning most people would
give to those letters).
True, Complainants purportedly once
maintained a web site under the URL http://www.pnccs.com
while PNC was the named registrant for the <pnccs.com> domain name.
However, all that Complainants submitted was a copy of stored content
for the home page of the former <pnccs.com>
web site. Complainant provided very few
details about the nature of the business conducted under the former <pnccs.com> web site, the number of
“hits” (either monthly or annually) on the web site for the period of time that
the domain name was in
Complainants’ control, the specifics of the types of
services provided under the former web site, and at the very least, the length
of time those services were offered for the period that the domain name was in
Complainants’ control (purportedly August 25, 2000
until January 2002).
At the very least, whether the <pnccs.com> domain name is identical
and/or confusingly similar to trademark(s) or service mark(s) in which
Complainants have rights is an
open evidentiary issue precluding the Panel from
definitively ruling for Complainants under ¶4(a)(i) of the Policy.
Rights or Legitimate Interests
Complainants assert that, through one of
Respondent’s related businesses, Respondent is a competitor of
Complainants. As such, Complainants
contend that Respondent’s use of the disputed domain name is not a bona fide offering of goods or services
pursuant to Policy ¶4(c)(i), nor a legitimate non-commercial or fair use
pursuant to the Policy ¶4(c)(iii).
Rather, Respondent’s actions allegedly were undertaken to disrupt
Complainants’ business or otherwise to unfairly compete with Complainants. Complainants further assert that
Respondent’s registration of the disputed domain name soon after Complainants’
registration expired
indicates that Respondent has no rights or legitimate
interests in the contested domain name. Finally, Complainants assert that
Respondent’s
willingness to sell the domain name to Complainants suggests that
Respondent has no rights or interest in the domain name.
Respondent vigorously disputes
Complainant’s contentions, asserts that Respondent has been preparing a web site to be hosted under
the disputed domain name, and indeed has been hosting a web site at the
disputed domain
name, and that Respondent’s asserted “interests in selling the
domain name” was a circumstance procured by Complainants’ trickery.
Complainants assert that any recent
development by Respondent of a web site under the contested domain name
constitutes a sham perpetrated
by Respondent for purposes of unduly influencing
this Panel’s decision.
The Panel finds that disputed factual
issues exist which, under the necessarily truncated evidentiary record of a
UDRP proceeding,
precludes a finding for Complainants under ¶4(a)(ii) of the
Policy.
Registration and Use in Bad Faith
Regarding the circumstances of bad faith
use and registration, there equally are disputed factual issues which cannot be
resolved
in a truncated UDRP proceeding.
Complainants assert that Respondent registered the <pnccs.com> domain name primarily for
the purpose of selling it back to Complainants. Respondent asserts, on the other hand, that any evidence of
Respondent’s intention to sell the domain name to Complainants was obtained
by
way of trickery. Whether Respondent
registered the contested domain name for the purpose of selling it to
Complainants for an excessive sum cannot
be decided within the context of a
UDRP proceeding on the present record.
Complainants have, by their own
submissions, shown that they have been able to register several domain names
incorporating the initials
“PNC”. So,
Respondent has not prevented Complainants from reflecting their “PNC…” mark(s)
in a corresponding domain name.
Moreover, Complainants have not provided sufficient evidence that
Respondent has engaged in a “pattern” of such conduct.
Complainants vigorously assert that
Respondent registered the contested domain name primarily for the purpose of
disrupting Complainants’
business as a competitor. Respondent vigorously denies this claim. There is insufficient
evidence for the Panel to conclude that Respondent registered the contested
domain name for the purpose of disrupting Complainants’ business as competitors.
Finally, the parties strenuously argue in
support of their respective positions regarding whether Respondent registered
the <pnccs.com> domain name to
intentionally attempt to attract, for commercial gain, Internet users to
Respondent’s web site by creating a likelihood
of confusion with Complainants’
mark(s). There simply are too many
outstanding factual issues remaining for the Panel to decide in Complainants’
favor under ¶4(a)(iii) of
the Policy.
The Panel empathizes with Complainants,
in that they purport to have conducted a commercial business under the disputed
domain name,
only to have the on-line link to that business evaporate by
inadvertently allowing their domain name registration to expire – permitting
a
third party to register the domain name when it became available. Unfortunately, the expeditious nature of the
UDRP process prevents the Panel from reviewing a fuller evidentiary record, taking
testimony,
and assessing the credibility of the parties and their respective
positions. The Panel cannot rule in
Complainants’ favor on the present record. Complainants, however, are not
without alternative remedies.
Complainants are domestic United States banking corporations, and
Respondent is located within the United States. Based upon a more extensive evidentiary record, Plaintiffs may
take advantage of the protections afforded by the United States Trademark
Act,
15 U.S.C. §§1114(1) and 1125(a), as well as the Anti-Cybersquatting Consumer
Protection Act, 15 U.S.C. §1125(d).
DECISION
For the
foregoing reasons, the Panel herein DENIES the relief requested in
Complainants’ Complaint.
_______________________________
Jonathan
Hudis, Sole Panelist
Dated:
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