WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
PC Mall, Inc. v. pcmallplus / Su Jinming
Case No. D2011-0765
1. The Parties
The Complainant is PC Mall, Inc. of Torrance, California, United States of America represented by Morrison & Foerster, LLP, United States of America.
The Respondent is pcmallplus / Su Jinming of Chongqing, the People’s Republic of China.
2. The Domain Name And Registrar
The disputed domain name <pcmallplus.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 3, 2011. On May 3, 2011, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On May 3, 2011, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 May 6, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 26, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 8, 2011.
The Center appointed Ross Wilson as the sole panelist in this matter on June 9, 2011. 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 sells consumer electronics and computer-related products and services including computer hardware, software, peripherals, accessories, supplies, books and instruction materials and provides installation, maintenance and repair services. Since 1987 the Complainant has sold its products and services through an online network and advertisements in national magazines. In 1994 it commenced selling through catalogues sent directly to current and potential customers. In recent years the Complainant has mailed in excess of 75 million catalogues each year. In addition the Complainant has sold it products and services over the Internet through a variety of website since 1995.
The Complainant has a number of PC MALL trademarks registered, the first, United States Trademark Registration No. 2,007,047, was registered in the United States in October 1996.
The Respondent registered the disputed domain name in February 2009.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical or confusingly similar to its trademark, with the only difference the added laudatory term “plus”. Such an addition does not distinguish the disputed domain name from the Complainant’s trademark. In fact the Complainant considers the addition of the laudatory term heightens the likelihood of confusion as consumers are likely to think that the disputed domain name hosts an advanced version of the Complainant’s website or that the goods available through the website at the disputed domain name are higher quality versions of the goods available through the Complainant’s website.
The Complainant states that it has not authorised or licensed the Respondent to use the Complainant’s mark nor is the Respondent a distributor of its goods. Rather, the Respondent has been using the disputed domain name to profit either directly from the sale of computers and computer-related accessories and other goods in competition with the Complainant or through affiliate fees from various websites. The Complainant contends that registering and using the disputed domain name in this manner does not constitute use of the disputed domain name in connection with a bona fide offering of goods or services and cannot give the Respondent rights or legitimate interests in the disputed domain name.
The Complainant believes that the Respondent cannot claim that it is commonly known by the disputed domain name especially as the Respondent did not use the disputed domain name in connection with any legitimate business prior to the registration of the disputed domain name in February 2009. The Respondent’s use of the disputed domain name to direct its customers to its website cannot be considered legitimate, noncommercial or fair use of the disputed domain name.
The Complainant considers that the disputed domain name was registered and used in bad faith because it was clearly calculated to mislead consumers into believing the Respondent’s website is sponsored by, affiliated with or authorised by the Complainant. According to the Complainant the Respondent’s intent is to create consumer confusion for the purposes of commercial gain. Further the likelihood of confusion caused by the Respondent’s use of the disputed domain name is heightened by the fact that the Respondent’s website offers links to identical goods as those offered on the Complainant’s website.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion And Findings
The onus is on the Complainant to prove each of the three elements set out in paragraph 4(a) of the Policy:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant provided evidence demonstrating that it has rights in the trademark PC MALL.
The disputed domain name consists of the Complainant's trademark, in its entirety, together with the laudatory term “plus”. It has been held in many previous UDRP cases that incorporating a trademark in its entirety is typically sufficient to establish that a domain name is identical or confusingly similar to a registered trademark (see The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co. Inc., WIPO Case No. D2000-0113 and World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306).
The only difference between the Complainant’s trademark and the disputed domain name is the addition of the laudatory term, which cannot be considered distinctive. As found in Revlon Consumer Products Corp. v. Amar Fazil, WIPO Case No. D2011-0014, the addition of a laudatory or descriptive term does not serve to distinguish a disputed domain name but, “serves to accentuate rather than to diminish the confusing similarity”.
In view of the above, the Panel finds that the Complainant has proven that the disputed domain name is identical or confusingly similar to the trademark in which it has demonstrable rights. The Complainant therefore has satisfied the first element of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out how a respondent can demonstrate rights to or legitimate interests in a disputed domain name. In this case, the Respondent has chosen not to file any submission or evidence to demonstrate its rights or legitimate interests in the disputed domain name. In this situation, paragraph 14(b) of the Rules allows the Panel, in the absence of exceptional circumstances, to draw such inferences from the absence of a Response from the Respondent as it considers appropriate.
The Respondent has chosen to use a domain name that contains the Complainant's trademark in its entirety without authorisation by the Complainant. As a consequence, the disputed domain name resolves to a website related to the goods and services of the Complainant. According to the Complainant’s unrefuted allegations, the website provides links to the website “www.pcrush.com” which sells goods similar to the Complainant as well as providing links that would generate revenue for the Respondent. The Panel finds that the Respondent is trying to benefit from the reputation of the Complainant's widely-known trademark. No rights or legitimate interests derive from this type of use of another's trademark. Previous panels have held that rights and legitimate interests cannot be created where the respondent would not choose such a name unless it was seeking to create an impression of association with the complainant (see Drexel University v. David Brouda, WIPO Case No. D2001-0067).
There is no evidence before the Panel to show that the Respondent was acting in pursuance of any rights or legitimate interests when registering the disputed domain name. In addition, the Complainant has denied having any connection with the Respondent or providing any license or authorisation at all. In Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055, the panel stated, “in the absence of any license or permission from the Complainant to use any of its trademarks or to apply for or use any domain incorporating those trademarks, it is clear that no actual or contemplated bona fide or legitimate use of the domain name could be claimed by the Respondent”.
Despite the opportunity provided through this dispute process, the Respondent has chosen not to rebut the Complainant's case or assert any rights in the disputed domain name.
Based on the above, the Panel considers the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Panel is satisfied that the Complainant has proven the second element of the Policy.
C. Registered and Used in Bad Faith
For the purposes of determining if there was bad faith registration and use, the Panel considered the circumstances of the registration and use of the disputed domain name as set out in paragraph 4(b) of the Policy, noting that it does not impose any limitation on how the registration and use of the domain name in bad faith may be evidenced.
The Panel considers that the Complainant has made a case that the Respondent has registered and used the disputed domain name in bad faith.
The Respondent’s use of the disputed domain name represents deliberate disregard of the Complainant’s trademark rights. The Respondent must have known of the Complainant's trademark at the time of registration because the Complainant’s mark is used in its entirety in the disputed domain name. As expressed in Singapore Airlines Limited v. European Travel Network, WIPO Case No. D2000-0641, where the selection of domain names is so obviously connected to the complainant's trademark their very use by someone with no connection with the company suggests opportunistic bad faith. Similarly, in Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409, where the respondent registered a number of domain names incorporating a well-known trademark in its entirety, the panel stated, “that it is inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the complainant”.
The Respondent’s bad faith intent is also evidenced by creating consumer confusion for the purpose of commercial gain by misleading them into believing that the Complainant sponsors or endorses the Respondent’s website (see Lucasfilm, Ltd and Lucas Licensing, Ltd. v. Cupcake City and John Zuccarini, WIPO Case No. D2001-0700). Similarly, the use of a domain name to re-direct Internet users to websites of competing organisations constitutes bad faith use and registration (see Zwack Unicum Rt. v. Erica J. Duna, WIPO Case No. D2000-0037).
Noting that the Respondent has not rebutted any of the Complainant's claims, the Panel considers that there is a strong probability that the Respondent's awareness of the Complainant's business was the motivation for registering and using the disputed domain name. Also, the Panel considers the Respondent's choice of the domain name was not merely coincidental but was a deliberate action to gain a commercial advantage.
On the basis of the above; the apparent false contact details registered by the Respondent with eNom; and the fact that the Respondent has no rights or legitimate interests in the disputed domain name the Panel is satisfied that the Respondent's conduct falls within paragraph 4(b)(i) and 4(b)(iv) of the Policy. Therefore, the Panel finds that the Complainant has demonstrated that the disputed domain name was registered and used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <pcmallplus.com> be transferred to the Complainant.
Dated: June 24, 2011