WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The PNC Financial Services Group, Inc. and PNC Bank, N.A. v. Azra Khan
Case No. D2002-0701
1. The Parties
Complainants are The PNC Financial Services Group, Inc. and PNC Bank, N.A. The PNC Financial Services Group, Inc. ("PNC"), is a Pennsylvania corporation with its principal place of business located at Fifth Avenue and Wood Street, Pittsburgh, Pennsylvania, where the Complaint states PNC and its predecessors in interest have been operating for nearly 150 years. PNC Bank, N.A. ("PNC Bank") is a Delaware national banking association with its principal place of business at One PNC Plaza, 249 Fifth Avenue, Pittsburgh, Pennsylvania, United States of America.
Respondent Azra Khan is the registrant of the domain name in dispute. His mailing address is listed as P.O. Box 382, Rawalpindi, 46000, Pakistan. Respondent is also listed as the administrative, technical and zone contact for the domain name, his e-mail address being listed as email@example.com.
2. The Domain Name and Registrar
The domain name which is the subject of this Complaint is <pncpark.com>.
The Registrar for the domain name is iHoldings.com, Inc. d/b/a DotRegistrar.com.
3. Procedural History
Complainants state that a copy of the Complaint, together with the Exhibits, was sent by air mail, return receipt requested, to Respondent at his listed address, P.O. Box 382, Rawalpindi, 46000, in Pakistan, and also that a copy of the Complaint was sent to the Registrar of the domain name via e-mail and via courier. The WIPO Arbitration and Mediation Center (the "Center") has acknowledged receipt of the Complaint which it received by e-mail on July 24, 2002, and by hard copy, together with the Exhibits, on July 26, 2002. Complainants requested that the Complaint be submitted for decision in accordance with the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for the Policy (the "Rules") and WIPO Arbitration and Mediation Centerís Supplemental Rules (the "Supplemental Rules").
Acknowledgement of receipt of the Complaint was forwarded by e-mail by the Center to Complainants and Respondent on July 25, 2002. The Center sought verification from the Registrar as to the registration of the domain name and the name of the registrant on July 25, 2002, and received verification from the Registrar on the same day.
On July 26, 2002, the Center forwarded to Complainants, with a copy to Respondent, a request for confirmation that the reference to "domain name holder" in paragraph 12 of the Complaint was a reference to the Registrar. This was relevant since the principal office of such designee was declared in the Complaint to be in the jurisdiction where any challenge to the decision herein could be made. Complainants confirmed by e-mail to the Center on the same day, July 26, 2002, that the reference in paragraph 12 was to the Registrar and forwarded a corrected copy of the Complaint to the Center.
According to the evidence before the Panel, Complainants failed to forward to Respondent Complainantsí e-mail to the Center with a corrected copy of the Complaint. This is not considered fatal to the administrative proceeding in view of the fact Respondent was alerted to the confusion giving rise to the correction by the Centerís e-mail to Complainants which was also forwarded to Respondent, and more importantly by the fact that the corrected Complaint as well as the original Complaint were forwarded by the Center to Respondent together with the Notification of Complaint and Commencement of Administrative Proceeding on July 29, 2002, by registered post with enclosures and by e-mail without enclosures.
On July 26, 2002, the Center completed the Formal Requirements Compliance Checklist and, as abovementioned, on July 29, 2002, forwarded a Notification of Complaint and Commencement of Administrative Proceeding to the parties, giving Respondent a delay until August 18, 2002, to file a Response. The Notification of Complaint and Commencement of Administrative Proceeding was forwarded to Respondent by e-mail without enclosures and by hard copy sent by registered post with enclosures.
The Center forwarded the Notification of Complaint and Commencement of Administrative Proceeding to three additional e-mail addresses: firstname.lastname@example.org, email@example.com and Feedback@TicketsNow.com. These additional three e-mail addresses appear to have been obtained by the Center in accordance with paragraph 2(a)ii(C) of the Rules, from investigation of Respondentís active web page and e-mail links on that page.
On July 29, 2002, the Center received a communication from firstname.lastname@example.org stating "we do not own this domain name" with a recommendation to use a service to find the owner.
On August 19, 2002, not having received a Response from Respondent, the Center issued a Notification of Respondentís Default and forwarded the same to the parties, the Notification to Respondent being sent by e-mail.
The Panelist was appointed following her confirmation to the Center that there was no conflict which would prevent her from accepting to act as Arbitrator in this matter.
On August 23, 2002, the Center forwarded a Notification of Appointment of Administrative Panel and Projected Decision Date to the parties, the Projected Decision Date being September 6, 2002.
The Panelist observes that the Complaint was filed in accordance with the requirements of the Rules and the Supplemental Rules and that payment in the proper amount was made by Complainant to the Center.
4. Factual Background
The factual background in this matter is obtained exclusively from the Complaint and Exhibits thereto, there having been no Response filed by Respondent.
The Complaint states that PNC is a publicly traded bank holding company, comprised of four subsidiary banks, PNC Bank being the principal bank subsidiary of PNC, and one of over 75 active non-bank subsidiaries.
The Complaint further states that PNC was founded in 1983, based in Pittsburgh Pennsylvania, that it is one of the largest national diversified financial service organizations in the United States, providing regional banking, corporate banking, real estate finance, asset-based lending, private banking, asset management and global fund services. The Complaint further states that, as of December 31, 2001, PNCís consolidated assets totalled $69.6 billion and its deposits totalled $47.3 billion.
The Complaint also informs us that, under the PNC mark and name, Complainants offer, both online and offline, a full range of banking and financial services to individuals and businesses. Complainantsí web sites are said to be "www.pnc.com" and "www.pncbank.com".
The Complaint reports that, through widespread and substantial use, the PNC mark is famous.
The Complaint further informs us that, in 1998, PNC and the major league baseball team the PITTSBURGH PIRATES entered into a 20-year marketing alliance providing PNC with, among other things, naming rights for the PIRATESí new stadium, which was named PNC PARK, and that the PNC PARK Stadium opened in spring 2001. It is further stated that this park has become one of the nationís best known professional ball parks, garnering tremendous television, radio and print media coverage almost daily.
Complainant PNC owns a trademark registration for the mark PNC registered November 11, 1986, for business services, financial services and communications services, and also a registration for PNC and design registered November 20, 2001, for financial services.
Complainant PNC owns several applications for registration of the mark PNC PARK, and PNC PARK and design, the first of which was filed July 15, 1998, with a first use on March 31, 2001, covering entertainment services and stadium facilities services. One of the trademark applications for PNC PARK and design, filed August 24, 1998, was for financial services. Other trademark applications for PNC PARK and PNC PARK and design cover a wide variety of articles.
The Complaint further informs us that PNC owns numerous federal (U.S.) registrations for PNC formative marks, including PNC BROKERAGE, PNC INSURANCE, PNC ADVISORS, PNC PERKS, PNC FUNDS, PNC TV, PNC & YOU, PNC BANK MERCHANT SERVICES, PNC BANK SUPERBANKING, PNC BANK ONLINE FOR BUSINESS and PNC BANK CHOICE PLAN. In addition, the Complaint informs us that PNC owns the domain names PNC.COM and PNCBANK.COM, which have been used "for years to operate web sites promoting Complainantsí products and services". Finally, Complainants state that their trademark rights, based on their federal trademark registrations and common law rights acquired through extensive use, long predate Respondentís registration of the domain name <pncpark.com> on May 22, 2002.
The Complaint avers that Respondent registered the domain name in dispute <pncpark.com> on May 22, 2002, without Complainantsí permission, and that the said domain name is identical to and confusingly similar to Complainantsí famous PNC and PNC PARK marks.
Complainants argue that Respondent uses the domain name <pncpark.com> to redirect internet users to a blank web site at the URL "http://www.ownbox.com/treasure/tickets.html" in front of which a casino popup advertisement is generated; the casino advertisement displays "okay" and "cancel" buttons; if the user selects the default "okay" button, a casino web site appears and two additional browsers windows open, one to a blank advertising-related site and one to the web site TicketsNow.com. If the user selects the "cancel" button on the casino popup, a search engine web site appears in the original browser window and a second browser window opens to the TicketsNow.com web site.
The Complaint continues that, in addition to receiving commissions for the casino popup advertisements, "Respondent undoubtedly is a member of TicketsNow.comís affiliate program, which pays a 7% commission for each ticket sold to a user delivered to the TicketsNow.com web site via an affiliate link".
The Complaint avers that, given the nature of Respondentís web site, as well as the fame of Complainantsí PNC and PNC PARK marks, Respondent had both constructive and actual knowledge of Complainantsí PNC and PNC PARK marks when registering the domain name in dispute.
The Complaint also argues that there is little question that Respondent misappropriated Complainantsí goodwill in registering the domain name <pncpark.com>, and that the registration and use thereof are designed to cause confusion and to deceive consumers, diverted or otherwise, into mistakenly believing that Respondent and his activities are offered, authorized, or sponsored by Complainant, or are otherwise connected, associated, or affiliated with Complainant.
The Complaint states that Respondentís registration and use of the domain name <pncpark.com> deprives Complainants of internet traffic intended for Complainants, thereby disrupting Complainantsí business and further, that internet users attempting to locate tickets to events at the PNC PARK stadium might choose to use Respondentís affiliated ticket service once they arrive at the TicketsNow.com inadvertently via Respondentís misuse of Complainantsí PNC PARK mark.
The Complaint alleges that Respondentís misappropriation of the domain name in dispute has injured, and will continue to injure irreparably the reputation and hard-earned goodwill of Complainants and their PNC and PNC PARK marks, and further, that if Respondent is allowed to retain ownership of the infringing domain name, internet users are likely to be confused and deceived, Respondent will continue to profit from his misuse of Complainantsí PNC and PNC PARK marks, and Complainantsí partnership with the PITTSBURGH PIRATES (and others) and reputation will be harmed.
The Complaint urges that Respondentís registration and use of the domain name to trade on Complainantsí goodwill in their PNC and PNC PARK marks for commercial gain do not constitute a bona fide offering of goods or services under Section 4(c)(i) of the Policy.
The Complaint further states that Respondent has not been commonly known by the domain name, and is not making legitimate non-commercial or fair use of the domain name, without intending to mislead and divert customers or to dilute Complainantsí PNC and PNC PARK marks for commercial gain.
Finally, the Complaint argues that Respondentís registration and use of the domain name in dispute meet the bad faith element set forth in Section 4(b)(iv) of the Policy, in that Respondent uses the domain name to intentionally attract for commercial gain internet users to his affiliated web site by creating a likelihood of confusion with Complainantsí famous PNC and PNC PARK marks as to the source, sponsorship, affiliation and endorsement of Respondentís affiliated web site and his gambling and ticket purchase services there advertised.
The Complaint further urges that Respondent registered and uses the domain name to disrupt Complainantsí business by diverting internet traffic rightly intended for Complainants and that internet users visiting the <pncpark.com> web site do so with the expectation of learning about events occurring at PNC PARK and/or the PITTSBURGH PIRATES.
It is also alleged in the Complaint that Respondent acted in bad faith by registering the domain name in dispute with constructive and actual knowledge of Complainantsí rights in their PNC and PNC PARK marks. Reliance for this statement is based upon the Complaintís assertion of the widespread use and fame of Complainantsí PNC and PNC PARK marks.
The Respondent has not filed a Response in this proceeding.
5. Discussion and Findings
Paragraph 4(a) of the Policy states that in order to be successful, a Complainant has the burden of proving that all of three elements are present in the Complaint, namely:
(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
(i) Identity or Confusing Similarity of the Domain Name to a Trademark or Service Mark in Which the Complainant Has Rights
The Complaint is replete with references to the rights of both Complainants considered together and to the effect on both Complainants of registration of the disputed domain name. However, only the Complainant PNC, that is, The PNC Financial Services Group, Inc., is the registrant of the registered trademarks PNC and PNC BANK and the applicant for registration of numerous other trademarks including PNC PARK. While the co-Complainant, PNC BANK which is also a subsidiary of PNC, may have rights in the trademarks as a licensee thereof or otherwise, there has been no evidence and no argument put forward in the Complaint to support a finding that the Complainant PNC BANK has rights in the marks distinct from the rights of PNC. Nor is it necessary that there be reliance on the rights of PNC BANK in order to decide this proceeding as the rights of PNC are clear.
In considering the question of whether the domain name is identical or confusingly similar to a trademark or service mark in which Complainant PNC has rights, the suffix ".com" should not be taken into account.
The Panel finds that the domain name <pncpark.com> is virtually identical and certainly confusingly similar to the trademark PNC PARK which is the subject of several trademark applications of Complainant PNC.
As application 75519845 for the mark PNC PARK filed July 15, 1998, was first used March 31, 2001, (as appears from the copy of the Certificate of Application attached as Exhibit to the Complaint), it is undeniable that use of the mark PNC PARK predates registration of the domain name in dispute. The only difference between Complainant PNCís trademark PNC PARK and the domain name <pncpark.com> (apart from the suffix ".com" which is not to be considered) is the absence in the domain name of the space between the letters "PNC" and "PARK".
The unrefuted statement in the Complaint, together with the copies of trademark applications filed as Exhibits, constitutes satisfactory evidence that Complainant PNC has rights in the trademark PNC PARK.
There is also clear evidence that the Complainant PNC is the owner of the registered trademarks PNC and PNC and design, as well as several applications for registration of trademarks including the letters "PNC". The Panel finds that PNC is a widely used and well-known mark and finds the disputed domain name to be confusingly similar thereto.
The Panel finds that the first criterion has been established, namely that the disputed domain name is virtually identical and certainly confusingly similar to the trademark PNC PARK in which Complainant PNC has rights, and further that it is confusingly similar to the trademark PNC alone in which Complainant PNC has rights.
The Complaint has therefore satisfied the conditions for the first element to be successful.
(ii) Absence of Rights or Legitimate Interests of the Respondent in the Domain Name
In considering whether Respondent has rights or legitimate interests in respect of the domain name, regard must be had to Respondentís actual or constructive knowledge of Complainant PNCís confusing or identical trademarks at the time Respondent registered the domain name in dispute. Respondent has not filed a Response and has not given any justification for his adoption of the disputed domain name combining the well-known mark PNC with PARK. The widely used and well-known character of the PNC mark, together with the unusual combination of the letters PNC PARK adopted by Respondent after the Complainant PNC entered into a marketing alliance with the Pittsburgh Pirates and opened the PNC PARK Stadium in 2001, creates a presumption of bad faith registration and use by Respondent which has not been refuted. The Panel is forced to conclude that the disputed domain name was not adopted in good faith, and therefore any offering of goods or services under the domain name cannot be considered to have been bona fide.
In support of arguments on this point, Complainants have cited two cases: Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madona.com", WIPO Case No. D2000-0847 which held that "use which intentionally trades on the fame of another cannot constitute a Ďbona fideí offering of goods or services. To conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation that is obviously contrary to the intent of the Policy"; also Chanel, Inc. v. Cologne Zone, WIPO Case No. D2000-1809, which stated that "[b]ona fide use does not exist when the intended use is a deliberate infringement of anotherís rights". The Panel subscribes to the quotations from these two decisions.
The Panel concludes that, before any notice to Respondent of the present dispute, his use of the domain name in dispute was not in connection with a bona fide offering of goods or services. There has been no evidence that Respondent was commonly known by the domain name in dispute. In addition, there is no evidence that Respondent was making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain. Rather, the evidence indicates that the use being made of the domain name by Respondent was clearly for commercial purposes.
The Panel accordingly concludes that Respondent has no rights or legitimate interests in respect of the domain name in dispute and that the conditions for the second element have been satisfied.
(iii) Registration and Use of the Domain Name In Bad Faith
For the reasons set forth under (ii) above, namely, the widely used and well-known character of the PNC marks and the adoption by Respondent of the combination of PNC with PARK after a marketing alliance between Complainant PNC and the Pittsburgh Pirates was entered into and after the PNC PARK Stadium was opened in 2001, create a presumption of bad faith registration and use by Respondent, which has not been rebutted.
The conditions for the third element are therefore satisfied.
In the result, the Panel has found that the domain name registered by Respondent is virtually identical and certainly confusingly similar to the trademark PNC PARK and is confusingly similar to the trademark PNC in both of which Complainant PNC has rights, that Respondent has no rights or legitimate interests in respect of the domain name, and that the domain name has been registered and is being used in bad faith. The Complaint therefore succeeds.
Accordingly, the Panel directs that the registration of the domain name <pncpark.com> be transferred to Complainant The PNC Financial Services Group, Inc.
Dated: September 6, 2002