WIPO Arbitration and Mediation Center
PC Mall, Inc v. NWPCMALL LLC
Case No. D2007-0420
1. The Parties
The Complainant is PC Mall, Inc, Torrance, California, United States of America, represented by the law firm Morrison & Foerster, LLP, United States of America.
The Respondent is NWPCMALL LLC, Auburn, Washington, United States of America. An officer or employee of Respondent named Wei B. Du submitted a Response.
2. The Domain Name and Registrar
The disputed domain name <nwpcmall.com> is registered with Network Solutions, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 16, 2007. On March 20, 2007, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue, and Network Solutions, LLC 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 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 April 2, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was April 22, 2007. The Response was filed with the Center on April 23, 2007.1
The Center appointed Richard G. Lyon as the sole panelist in this matter on May 1, 2007. The Panel finds that it was properly constituted and has jurisdiction over this proceeding. The Panel has submitted his 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
Complainant sells consumer electronic and computer-related products and services. Complainant alleges, without evidentiary support, that it has sold these products through an online network and magazine advertisements since 1987 and that beginning in 1994 it also sold these products and services through catalogs mailed to current and potential customers. Complainant claims, without evidentiary support, to have mailed “in excess of 75 million catalogs per year”. Complainant owns six trademarks that incorporate the phrase PCMALL in various categories of goods and services related to computers, all registered with the United States Patent and Trademark Office.2 The earliest registration date is July 1998, with a first use in commerce of April 1995. Complainant currently sells its goods and services at a website maintained at “www.pcmall.com” and at other web addresses.
Respondent sells refurbished computers and computer components. In January 2006 Respondent registered NWPCMALL as a limited liability company and trade name with the State of Washington, United States of America. Respondent registered the disputed domain name in June 2005 and began using it in late 2005 or early 2006 to sell refurbished computers and computer components. At some point in time, Respondent included a disclaimer3 on its website, as follows:
“This site, www.nwpcmall.com, is solely owned by NWPCMALL LLC. ‘NWPCMALL LLC’ is NOT ‘PC MALL Inc.’ ‘NWPCMALL LLC’ has NO connection with ‘PC MALL Inc.’”
Complainant alleges, without evidentiary support, that the disclaimer was added after Complainant sent Respondent a cease-and-desist letter. The disclaimer was at the top of the webpage, immediately under the first line containing Respondent’s name, but in smaller and less prominent type than the website’s commercial content.
When the Panel examined the website at the disputed domain name on May 7, 2007, he was immediately transferred to a website, maintained by Respondent, at “www.viclaptops.com”. Immediately below the title and link bar was the statement “NWPCMALL LLC now owns a new tradename, VICLAPTOPS.COM”.
5. Parties’ Contentions
Complainant contends as follows:
The disputed domain name is confusingly similar to trademarks in which Complainant has rights. The disputed domain name differs from Complainant’s registered marks and website address only by the addition, at the beginning, of the letters “NW”. This addition is “purely descriptive of the geographical location of Respondent’s business” and does not serve to obviate any confusion with Complainant’s marks.
Respondent has no rights or legitimate interests in the disputed domain name. Complainant has not licensed Respondent to use its marks; Respondent was not known by the disputed domain name prior to registering it; and Respondent’s use is not bona fide for purposes of paragraph 4(a)(ii) of the Policy because Respondent uses the website to compete with Complainant and to take advantage of the renown accompanying Complainant’s marks.
Respondent registered and has used the disputed domain name in bad faith. Respondent’s use of the disputed domain name to compete with Complainant confuses consumers by suggesting that Respondent’s website is sponsored or endorsed by Complainant. This is comparable to the typosquatting cases, in which close similarity of the domain name to the complainant’s mark by itself constitutes strong evidence of bad faith in registration and use. Just as Respondent’s disclaimer does not eliminate any confusion with Complainant’s marks, so it does not wipe away any bad faith by Respondent. To the contrary, use of the disclaimer is a tacit acknowledgment that Respondent registered and is using the disputed domain name to take advantage of Complainant’s marks.
Respondent contends as follows:
The disputed domain name is not confusingly similar to Complainant’s marks. Complainant has no right to the disputed domain name; that name is the name under which Respondent, and Respondent only, is entitled to do business by virtue of its state registration. Confusion is unlikely. Respondent undertook keyword searches of PCMALL and NWPCMALL. While each yielded thousands of results, neither search returned the other name as a result.
Respondent includes no commentary regarding rights or legitimate interests in the disputed domain name or registration or use in bad faith.
6. Discussion and Findings
paragraph 4(a) of the Policy directs that Complainant must establish each of the following:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect to the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
Complainant bears the burden of proof on each element. These requirements are conjunctive; failure to establish any one of them by competent evidence results in a denial of the Complaint.
Confusingly Similar to a Mark in Which Complainant Has Rights
The test for confusing similarity under paragraph 4(a)(i) of the Policy is a comparison of the appearance, spelling, sound, and other objective characteristics of the disputed domain name against those of the mark. Sharman License Holdings, Limited v. Gregg Smitherman, WIPO Case No. D2004-0375; WIPO Overview of WIPO Panel Views on Selected UDRP QuestionsWIPO (“Overview”), paragraph 1.2. The addition of a common word or phrase to a mark has almost uniformly been held not to obviate any confusion, and the same result obtains where, as here, Respondent has merely added a short geographic identifier. Complainant has established this element of the Policy by virtue of its registered trademarks and the objective similarity of the disputed domain name with those marks.
Rights or Legitimate Interest; Bad Faith
Paragraph 4(c) of the Policy provides several (non-exclusive) means of demonstrating rights or legitimate interests in a disputed domain name. Such rights are established if
“(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights.”
While Respondent limits its argument to the first Policy element only, its evidence, on the surface at least, brings it within both of these safe harbors. Respondent’s business has been commonly known by the disputed domain name since at least January 2006, more than fourteen months prior to commencement of this dispute,4 and in fact Respondent has used the disputed domain name actively for a business that is “legitimate” in every sense since shortly after it acquired it. Particularly for purposes of the Policy, it is noteworthy that its business exists independently of the disputed domain name, rendering Complainant’s citations to typosquatting cases inapt. In typosquatting cases the “business” at the disputed domain name is non-existent or of a category totally unrelated to the complainant’s mark, such as pornography or click-through revenues.
The only way Respondent’s use would not be “legitimate” for purposes of paragraph 4(a)(ii) of the Policy would be proof, or facts from which the Panel could reasonably infer, that from the start Respondent selected the disputed domain name with knowledge of Complainant’s marks intentionally to take advantage of these marks’ goodwill or Complainant’s public. In this proceeding there is insufficient evidence from which the Panel may infer that Respondent did so.
Complainant duly asserts that its mark is “famous” and cites cases in which close copying of a famous mark rendered a respondent’s use illegitimate, yet offers no evidence at all of its marks’ renown. Even its counsel’s unsupported allegations do not include facts from which the Panel could conclude that Complainant’s marks are famous.
The doctrine of “constructive notice” under United States trademark law might furnish a basis for an inference of knowledge. That doctrine, however, is sparingly applied in Policy proceedings.5 Should it be applied here? While Complainant does not directly advance this argument, both parties are United States companies, and to some extent the parties compete against each other, as both sell computers and related components. The Panel’s examination of their respective websites, however, revealed more differences than similarities. Respondent’s sales are limited to refurbished products, a category not mentioned on Complainant’s website and a recognized niche in the broad field of computers. Though both parties sell computers, the appearance and focus of the sites are quite different. The results of Respondent’s web searches, which the Panel replicated for confirmation, provide compelling evidence that an Internet user seeking Complainant is not likely accidentally to land at Respondent’s site. Complainant’s marks are a combination of two common terms and the combination is descriptive or suggestive of its business. While a common or descriptive phrase may be a registered trademark and its owner surely may invoke the Policy based upon such a mark (even if unregistered), that mark owner bears a heavier burden to establish that use of a similar phrase by another is illegitimate under paragraph 4(a)(ii) or in bad faith under 4(a)(iii). As stated in a recent proceeding, “The Panel is of the view that while the Complainants clearly have established trademark rights in the word “kale” [a ‘generic’ word in Turkish] in connection with the offering of their goods and services, this does not exclude the fact that a third party may in appropriate circumstances be able to use the term ‘kale’ as part of their domain name, or even acquire independent trademark rights in a sufficiently distinguished use of the term in connection with a separate set of goods and/or services. Kale Endustri Holding A.S., Kale Kilit Ve Kalip Sanayi A.S. and Kale Yapi Ve Ticaret A.S. v. Orion Bil’sim Teknolojileri Bilg. Ve Elek. SIS. SA, WIPO Case No. D2007-0129. On the facts in the pending proceeding an inference based upon constructive knowledge is inappropriate.
Factual circumstances betraying cybersquatting are not present in this case. Competition between the parties is limited; there is no obvious imitation by Respondent of Complainant’s website; there is no obvious attempt to trade off Complainant’s name; there is no diversion of customers (and evidence that there is likely to be none, at least on the Internet); Respondent did not attempt to sell the disputed domain name to Complainant or anyone else; there is no diversion to a pornography site or other site unrelated to the description in the mark; Complainant has shown no pattern of registering multiple domain names without regard to third party trademark rights; Respondent has not been a party to any other proceeding under the Policy in respect to any domain name; Respondent has used the disputed domain name for a real business; and Respondent’s disclaimer was prominently placed and unmistakable in meaning.
On the evidence before the Panel, it appears equally as likely that Respondent selected the disputed domain name to describe its business, without knowledge of Complainant’s marks, than that Respondent did so to take advantage of Complainant’s marks and customer base. Complainant has not carried its burden of proof under paragraphs 4(a)(ii) or 4(a)(iii) of the Policy.
The relative speed and expense compared to civil litigation may tempt a mark owner to resort to a Policy proceeding in circumstances beyond those for which it was intended – clear cases of cybersquatting. Where, as in this proceeding, intentional appropriation of Complainant’s mark has not on balance been established, the Policy requires a finding for Respondent.
For all the foregoing reasons, the Complaint is denied.
Richard G. Lyon
Dated: May 15, 2007
1 The Response was filed on the business day immediately following the due date. The delay is minor and the Panel will consider the Response even though it was one day late.
2 Complainant acquired some of its marks from predecessor companies but has furnished evidence of assignments and current ownership.
3 Complainant submits a copy of Respondent’s webpage with this disclaimer. In its Response Respondent acknowledges posting the disclaimer.
4 The record contains no evidence of any “notice . . . of the dispute” prior to the filing of the Complaint. And the Policy contains no basis for Complainant’s contention that Respondent must be known by this name prior to its registration of the disputed domain name.
5 Overview, paragraph 3.4; Janet E. Sidewater v. Worldwide Media Inc., WIPO Case No. D2006-1281.