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Packet Clearing House, Inc. v. Howard Lee [2005] GENDND 1592 (28 September 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Packet Clearing House, Inc. v. Howard Lee

Case No. D2005-0828

1. The Parties

The Complainant is Packet Clearing House, Inc., San Francisco, California, United States of America, represented by Bill Woodcock, United States of America.

The Respondent is Howard Lee, New Territories, Hong Kong, SAR of China.

2. The Domain Name and Registrar

The disputed domain name <pch.org> is registered with eNom, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 30, 2005. On August 3, 2005, the Center transmitted by email to eNom, Inc. a request for registrar verification in connection with the domain name at issue. On August 3, 2005, eNom, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 12, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was September 1, 2005. The Response was filed with the Center on August 30, 2005.

The Center appointed Christopher J. Pibus as the sole panelist in this matter on September 14, 2005. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is an educational not-for-profit corporation, incorporated in the State of California, in the United States of America, with its principal offices located in San Francisco, California.

In March 2002, the Complainant filed a trademark application for the trademark PCH PACKET CLEARING HOUSE and design in the United States Patent and Trademark Office. On February 11, 2003, the mark was registered and allocated registration number 2686054.

The Respondent is an individual residing in Hong Kong, SAR of China. On April 3, 2003, the Respondent registered the Domain Name <pch.org>.

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

(a) the domain name <pch.org> is a confusing use of its registered trademark PCH PACKET CLEARING HOUSE; Complainant has been using this mark since 1995 to describe its educational products and services, its constituents expect to find the Complainant at <pch.org>;

(b) the Respondent has no rights or legitimate interests in the Domain Name in that no goods or services are being offered in connection with the Domain Name;

(c) the Domain Name has been registered and is being used in bad faith in that it is being used exclusively for the purpose of parking the Domain Name with <namerenters.com>, <domainspa.com>, and <sedo.co.uk> in order to convert website visits of people attempting to find PCH PACKET CLEARING HOUSE, to advertising revenue for the Respondent.

B. Respondent

The Respondent contends that:

(a) the Domain Name <pch.org> is not identical or confusingly similar to the trademark of the Complainant, because the registered mark is a graphical representation including the words PCH PACKET CLEARING HOUSE and should be considered as a whole; the Complainant provided no information on whether or not the letters “pch” are used on a standalone basis; there are many other companies using the three letter “pch” abbreviation that are not connected to the Complainant including Publishers Clearing House, PCH Publishing, PCH China Solutions, Preferred Corporate Housing, PCH Filmworks and Pacific Coast Highway;

(b) Respondent chose to register the <pch.org> Domain Name because it was easy for users to type and remember;

(c) the Complainant is located in the United States and the Respondent was not aware of its presence when registering the Domain Name <pch.org>; none of the links or contents of the “www.pch.org” website are related to the Complainant, nor is the Complainant mentioned; the Respondent has never offered to sell the Domain Name <pch.org> to the Complainant or competitors of the Complainant; the Respondent received an unsolicited enquiry on July 14, 2005, offering to purchase the Domain Name; although the email did not refer to a relationship with Complainant, the sender of this email was the Complainant; the Respondent declined the offer to sell the Domain Name <pch.org>.

6. Discussion and Findings

There Complainant must prove three essential conditions in order to succeed, under paragraph 4(a) of the Policy:

(i) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which Complainant have rights;

(ii) the respondent has no rights or legitimate interests in respect of the domain name;

(iii) the domain name has been registered and is being used in bad faith.

The Complainant bears the burden of proof on each of these elements.

A. Identical or Confusingly Similar

Identical

The threshold issue in this matter is the nature of the Complainant’s trademark. At first glance, Complainant appears to be claiming rights in the letters PCH per se. If the Complainant were able to establish rights in the acronym itself, then the identity between the trademark and the Domain Name would naturally follow. However, an examination of the Complainant’s trademark leads to a different conclusion. The only evidence put forward by the Complainant is to the effect that it owns the trademark registered under No. 2686054 in the USPTO.

The registration, as Respondent compellingly points out, is a design mark, which comprises a graphically stylized version of the letters PCH along with the words PACKET CLEARING HOUSE:

In the panel’s view, the trademark needs to be viewed in its entirety, and must be understood as comprising a mark in which the elements PCH and PACKET CLEARING HOUSE are read together. The mark as a whole makes it clear that PCH serves as an acronym standing for “Packet Clearing House”. In a real sense, the words qualify the acronym, and serve as an important context in evaluating whether an impugned domain name can be viewed as identical or confusingly similar. Plainly put the Complainant’s registered mark is PCH PACKET CLEARING HOUSE not PCH.

As the Complainant has not offered any evidence of common law use of PCH alone, the Panel concludes that its trademark rights, for purposes of this decision, are restricted to the trademark as registered.

Understood in this way, it is clear that the Domain Name is not identical to the trademark in question.

Confusingly Similar

The confusion analysis under paragraph 4(a)(ii) of the Policy requires a comparison of the disputed domain name, and the trademark or service mark in which the Complainant has rights, not a comparison of domain names that may be in use by the parties.

Subparagraph 3(b)(ix)(1) of the Rules states that the complaint shall describe the grounds on which the complaint is made, including in particular, the manner in which the domain name is confusingly similar to the Complainant’s mark.

The Complainant alleges that they “believe” the use of the <pch.org> Domain Name is confusing use of their trademark PCH PACKET CLEARING HOUSE but offers no evidence, explanation or argument which supports this conclusion. The Panel regards the Complainant’s submissions on this point to be nothing more than mere allegations. This is not a matter where the likelihood of confusion can be inferred from the choice of domain name alone.

The Panel accepts the Respondent’s evidence that the use of PCH as a trademark or part of a trademark is relatively common, among a variety of third party users. No evidence has been put forward by Complainant to support a finding that the letters PCH are distinctive of its business.

In the absence of any persuasive evidence to the contrary, the Panel concludes that the trademark PCH PACKET CLEARING HOUSE is so different from the Respondent’s Domain Name that they cannot be regarded as being confusingly similar. Accordingly, the Panel finds that the Complainant has failed to discharge the burden of proof that the Domain Name <pch.org> is identical or confusingly similar to the trademark PCH PACKET CLEARING HOUSE.

B. Rights or Legitimate Interests

The Panel finds it is unnecessary to address this issue given the conclusions reached above.

C. Registered and Used in Bad Faith

The Panel finds it is unnecessary to address this issue given the conclusions reached above.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Christopher J. Pibus
Sole Panelist

Dated: September 28, 2005