WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The PNC Financial Services Group, Inc., f/k/a PNC Bank Corp., PNC Bank, N.A., and PNC Brokerage Corp. v. Khalil Ahmad
Case No. D2000-1584
1. The Parties
Complainant is The PNC Financial Services Group, Inc., f/k/a PNC Bank Corp., PNC Bank, N.A., and PNC Brokerage Corp., a Pennsylvania Corporation with its principal place of business located at Fifth Avenue and Wood Street, Pittsburgh, Pennsylvania 15265, USA.
The Complainant is represented by: Mark S. Sommers, Esq. and Montia Givens Pressey, Esq. of Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., 1300 I Street, N.W., Washington, DC 20005, USA.
The Respondent is: Khalil Ahmad, 147-A, Roanoke Street, Woodbridge, New Jersey 07095, USA.
2. The Domain Name and Registrar
The domain name in dispute is: <pncbrokerage.net>.
The registrar for the disputed domain name is: Network Solutions Incorporated (NSI) of 505 Huntmar Park Drive, Herndon, Virginia 20170, USA.
3. Procedural History
This dispute is to be resolved in accordance with the Uniform Domain Name Dispute Resolution Policy (the Policy) and Rules (the Rules) approved by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999, and the World Intellectual Property Organization and Mediation Centerís Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Center, the Supplemental Rules).
The Complaint was filed on November 21, 2000. On November 22, 2000 the Center requested that the registrar NSI check and report back on the registrant for the domain name <PNCBROKERAGE.NET>. On November 29, 2000 the registrar reported to the Center that the registrant was the Respondent, Khalil Ahmad.
On December 7, 2000 the Center forwarded a copy of the Complaint to Respondent by registered mail and by e-mail, and this proceeding officially began. Although Respondent sent an informal e-mail to the Center on December 1, 2000, Respondent did not submit a response in accordance with the Policy and the Rules within twenty (20) days. Therefore, per Rule 5, the Center declared Respondent in default on December 28, 2000.
The Administrative Panel submitted a Declaration of Impartiality and Independence on January 11, 2001, and the Center proceeded to appoint the Panel on January 15, 2001.
The Panel finds the Center has adhered to the Policy and the Rules in administering this proceeding.
This Decision is due by January 28, 2001.
4. Factual Background
Founded in 1983, Complainant is a large, diversified banking and financial services company based in Pittsburgh, and is active mainly in the states of Pennsylvania, New Jersey, Delaware, Ohio and Kentucky, all in the United States of America. Complainant uses the mark "PNC" in many of its activities and has websites at www.pnc.com and www.pncbank.com.
Complainant and Respondent have been disputing the domain name <pncbrokerage.net> for some time. Complainant wrote Respondent a "cease and desist" letter on August 25, 2000. Respondent has refused to transfer the disputed domain name, and the Complainant now is attempting to gain control of the name through this proceeding.
5. The Partiesí Contentions
- By virtue of the arbitrary nature and hence the inherent strength of the PNC and PNCBROKERAGE marks as applied to Complainantís services and its extensive use, promotion, and registration of its marks, the PNC and PNCBrokerage marks have become famous.
- Respondent is not and has never been a licensee of Complainant, nor otherwise authorized by Complainant to use the PNC and PNCBROKERAGE marks or names.
- PNC Financial Services Corporation is the owner of a family of PNC trademarks for financial services.
- The PNC mark, widely promoted and advertised to the general public, has been continuously used by Complainant and its predecessors-in-interest in connection with its financial services since 1976. The PNCBROKERAGE mark, also widely promoted, has been used continuously by Complainant since 1993.
- On September 5, 1999, Respondent registered, without Complainantís permission, the <pncbrokerage.net> domain name, which is identical to Complainantís PNCBROKERAGE marks. Given the fact that Respondent is located in New Jersey (one of Complainantís primary geographic markets), Respondent undoubtedly had both constructive and actual knowledge of Complainantís PNC and PNCBROKERAGE marks when he selected and registered the disputed domain name.
- By registering the domain name <pncbrokerage.net> with both constructive and actual knowledge of Complainantís PNC and PNCBROKERAGE marks, Respondent acted in bad faith and breached his registration contract with NSI because he falsely represented that his registration of the domain name <pncbrokerage.net> did not infringe the rights of any third party.
- Respondentís Registration and Use of the Domain Name <pncbrokerage.net> misappropriates the goodwill of Complainantís PNC and PNCBrokerage marks and causes a likelihood of confusion.
6. Discussion and Findings
In order for Complainant to prevail and have the disputed domain name <pncbrokerage.net> transferred to itself, Complainant must prove the following (the Policy, para 4(a)(i-iii):
- the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- the Respondent has no rights or legitimate interests in respect of the domain name; and
- the domain name was registered and is being used in bad faith
Identical or Confusingly Similar
The Complainant has produced credible print-outs of its mark registrations on the principal register of the United States of America. Two examples from this listing are: "PNCBROKERAGE", registration no. 2,062, 937 dated March 25, 1996, covering securities brokerage services, international class 36. A second example is registration no. 1,416,898 for the mark "PNC", registration dated November 11, 1986 for data processing services in international class 35. "Brokerage" is a generic word for a type of financial service, and Respondent and all the world are free to use it in this sense. But "PNC" is a well-known protectable mark belonging to Complainant. The Panel finds the disputed domain name is identical to Complainantís PNC marks.
Legitimate Rights or Interests
The Complainant disavows any relation whatever with the Respondent, and denies ever having given Respondent any type of permission to use its marks. The Respondent is in default in these proceedings and thus has made no attempt to show legitimate rights or interests in the disputed domain name. Thus, in the presence of credible Complaint evidence, the Panel finds the Respondent has no legitimate rights or interests in the disputed domain name (Talk City, Inc. v. Michael Robertson, WIPO Case NO.D2000-0009).
Registered and Used in Bad Faith
It is clear to the Panel that Respondent wanted to use the disputed domain name and Complainantís good will to attract clients to Respondentís financial data processing software services. This contravenes the Policy at 4(b)(iv).
Complainant also has produced for the Panel convincing evidence that Respondent registered the disputed domain name in order to sell it back to Complainant for far more than Respondent paid for it. Respondent never made this explicit, but to the Panel this inference is strongly supported by the facts of this Case. This practice is proscribed by the Policy at 4(b)((i). At one point, in a letter Respondent wrote to Complainant dated August 30, 2000, Respondent stated:
"Well, if you or your client are interested to buy these domain names let me know and I would be very happy to sell these.
By the way, you must know that couple months ago I sent email to pncbank regarding these websites and I got reply that they are not interested in purchasing because they already have pncbank.com."
Accordingly, the Panel finds the Respondent registered and is using the disputed domain name in bad faith.
The Decision of the Panel in this Case is as follows: The Respondent, Mr. Khalil Ahmad, registered a domain name identical to Complainantís marks, a name in which he had no legitimate rights or interests, and which he registered and is using in bad faith. Per ICANN Policy para 4(i) and Rule 15, the Panel orders that the disputed domain name <pncbrokerage.net> be transferred to the Complainant, the PNC Financial Services Group, Inc.
Dennis A. Foster
Date: January 28, 2001