WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
PEG Consulting, LLC v. Pender Chang
Case No. D2011-1894
1. The Parties
Complainant is PEG Consulting, LLC of Bountiful, Utah, United States of America, represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States of America.
Respondent is Pender Chang of Yonghe, Taipei, Taiwan Province of China.
2. The Domain Name and Registrar
The disputed domain name <pegconsulting.com> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 1, 2011. On the same date, the Center transmitted by email to GoDaddy.com, Inc a request for registrar verification in connection with the disputed domain name and GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On November 1, 2011, the Center requested Complainant to confirm that the Complaint, including any annexes, had been sent or transmitted to Respondent and Registrar in accordance with paragraph 2(b) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) read together with paragraph 3 of the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
Accordingly, on November 3, 2011, Complainant confirmed that a copy of the Complaint with annexes together with the Complaint Transmittal Coversheet had been transmitted to Respondent and Registrar.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules, and the WIPO Supplemental Rules.
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on November 4, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 24, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 25, 2011.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on December 2, 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
Complainant is PEG Consulting, LLC, a provider of solutions for Oracle Human Capital Management. Complainant offers personalized training, customized XML (“Extensible Markup Language”) reporting and interfaces, and product support.
The company was founded by Todd Parker in the year 2002. The company was originally known as Parker Enterprise Group (“PEG” for short). On May 2, 2006, Complainant merged with a company known as New Tech Solutions to create its current legal entity, PEG Consulting, LLC.
Complainant is the owner of the marks PEG and PEG CONSULTING. Complainant alleges it has used those marks in commerce in the United States since November 30, 2005, and May 2, 2006, respectively, in connection with computer software consulting services.
Complainant also operates a website using the domain name <pegconsultant.com> which was created on September 21, 2006.
The disputed domain name was created on July 14, 2006. According to the Registrar verification, the disputed domain name was registered by Respondent on February 24, 2010. The disputed domain name is used in connection with a parking page that contains links relating to a wide variety of goods and services, including those that compete with the services offered by Complainant.
5. Parties’ Contentions
Complainant contends that the domain name is confusingly similar to the Complainant´s marks PEG and PEG CONSULTING in respect of which Complainant asserts common law trademark rights.
Complainant is the owner of the marks PEG and PEG CONSULTING which it has used in commerce since November 30, 2005, and May 2, 2006, respectively. Complainant attaches copies of printouts from the United States Patent and Trademark Office website showing details of Complainant filings to register these two marks (Serial Nos. 85-417,989 and 85-417,978, respectively) where the aforementioned dates of first use in commerce are stated.
In support of his statement, Complainant argues that the common law trademark claim over the PEG and PEG CONSULTING terms are supported by: (i) General marketing brochures of Complainant; (ii) Business card for Casey Moyer, managing partner of Complainant; (iii) Copy of the Exhibitor Page from the 2011 Oracle HCM User Group (OHUG) Conference Guide and (iv) an e-mail sent as part of a marketing campaign for Complainant’s appearance at the OHUG meeting in Las Vegas.
As additional support of its common law rights in the marks PEG and PEG CONSULTING, Complainant attaches several press releases related to the business of Complainant.
Finally, Complainant alleges use in commerce of the marks PEG and PEG CONSULTING since at least November 30, 2005, and May 2, 2006, respectively, in connection with computer software consulting services. Complainant attaches a printout of the corporation PEG Consulting, LLC with a registration date dated February 5, 2006 and a declaration of Casey Moyer, managing partner of PEG Consulting, LLC asserting all these facts.
Complainant contends that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Complainant alleges that Respondent is using the disputed domain name in connection with a website that contains links relating to a wide variety of goods and services, including those that compete with the goods and services offered by Complainant under the PEG and PEG CONSULTING marks, such as “Marketing to IT Pros?”, “Business IT Solutions”, “It consulting” and “Small Business IT Service”.
Finally, Complainant contends that the disputed domain name was registered and is being used in bad faith.
According to the Complaint, Respondent has acted in bad faith pursuant to paragraph 4(b)(iv) of the Policy
by using the disputed domain name in connection with a website that contains links relating to a wide variety of goods and services, including those that compete with the services offered by Complainant under the PEG mark.
Complainant alleges that such use of the disputed domain name clearly shows that Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s PEG and PEG CONSULTING marks as to the source, sponsorship, affiliation, or endorsement of Respondent website.
Complainant states that Respondent also has acted in bad faith pursuant to paragraph 4(b)(ii) of the Policy, because Respondent’s registration of the disputed domain name prevents Complainant from reflecting its mark in a corresponding domain name and because Respondent has “engaged in a pattern of such conduct” by registering numerous domain names that contain marks owned by third parties, as shown by a list of domain name registrations and marks from third parties mentioned in the Complaint.
The Complainant request as a remedy the transfer of the domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements, which a complainant must satisfy in order to succeed. The Complainant must satisfy that:
(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 such disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Complainant has used, at least since May 2, 2006, the terms "Peg Consulting" as a business identifier and the Panel is satisfied that Complainant has rights in that business identifier. However, under the Policy, Complainant must have rights in a mark (mark or service mark). Complainant applied for a registration for the marks PEG and PEG CONSULTING on September 8, 2011. However, the Panel is of the opinion that this is not fatal to Complaint for the reasons given below.
A fundamental principle of trademark law is that rights in a trademark can be acquired through use, and such rights exist even though the trademark may not be registered. Therefore, given that Complainant has provided evidence to the effect that he has been using the marks PEG and PEG CONSULTING in association with its business for a number of years prior to the disputed domain name being registered by Respondent, the Panel is of the opinion that Complainant has provided adequate grounds for a finding that he holds common law rights in such marks.
The consensus view is that a complainant can demonstrate common law rights in a trademark by presenting evidence that the name has become a distinctive identifier associated with the complainant or its goods or services. Such evidence may include “length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition” (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 1.7).
In analyzing the other considerations involved in its determination regarding common law rights, the Panel notes that Respondent filed no Response to Complainant’s contentions. It is thus reasonable for the Panel to proceed as though Complainant’s contentions are true, unless contrary to the evidence presented or facts known by the Panel within the purview of its own experience (See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009 and Fairview Commercial Lending, Inc. v. Aleksandra Pesalj, WIPO Case No. D2007-0123).
In this case, Complainant offers totals sales of USD 4 million, has offices in 13 states and alleges to have used the marks PEG and PEG CONSULTING since November 2005 and May 2006, respectively. In addition, Complainant also has advertising and promotion of its mark through mailings, the Internet and trade publications.
The Panel finds that Complainant has established common law mark rights in PEG and PEG CONSULTING supported by the evidence submitted with the Complaint, as mentioned above in section 5.A.
In addition, the Panel is also prepared to find that the disputed domain name <pegconsulting.com> is confusingly similar to Complainant marks PEG and PEG CONSULTING.
Therefore, the Panel finds that Complainant have satisfied the first requirement of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the disputed 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 disputed domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate non commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
There is no evidence of the existence of any of those rights or legitimate interests. Complainant has not authorized, licensed, or permitted Respondent to register or use the disputed domain name or to use its marks. Complainant alleges prior rights in the marks, which precede Respondent's registration of the disputed domain name by several years.
The Complainant has therefore established a prima facie case that Respondent has no rights nor legitimate interests in the disputed domain name and thereby shifted the burden to Respondent to produce evidence to rebut this presumption (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, section 2.1).
Respondent has failed to show that it has acquired any trademark rights in respect of the disputed domain name or that the disputed domain name is used in connection with a bona fide offering of goods or services.
Therefore, the Panel finds that Complainant have satisfied the second requirement of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Complainant is required to prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four circumstances that, with no limitation, shall be evidence of the registration and use of a disputed domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the mark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the disputed domain name in order to prevent the owner of the mark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.
Complainant allegations with regard to Respondent's registration and use of the disputed domain name in bad faith has been considered by the Panel. These allegations has not been contested by Respondent because of its default.
The disputed domain name is in use, since it resolves to what is effectively a parking website. Visitors to the disputed domain name are presented with a list of links that, if clicked, redirect them to other websites generally of a commercial nature.
It is not reasonably tenable that Respondent has gone to the trouble and expense of purchasing and registering the disputed domain name and having it hosted as a parking page website, with advertising links, without purpose. The ultimate purpose may be the sale of the disputed domain name, however it is not necessary for the Panel to know since it is a reasonable presumption that in the short term the disputed domain name generates revenue from click-through referrals. Whether this revenue accrues directly to Respondent or to the host, or to both, is immaterial (See Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912). Upon the totality of the evidence, the Panel finds that Respondent has attracted viewers for commercial gain by confusion within the meaning of paragraph 4(b)(iv) of the Policy, constituting registration and use in bad faith.
In all the foregoing circumstances, the Panel finds that the disputed domain name has been registered and used in bad faith in the terms of paragraph 4(a)(iii) of the Policy.
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, <pegconsulting.com>, be transferred to Complainant.
Pablo A. Palazzi
Dated: December 16, 2011