WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
PC Connection, Inc., PC Connection Sales Corp. v. PCONNECTION.COM
Case No. D2012-1702
1. The Parties
The Complainants are PC Connection, Inc. and PC Connection Sales Corp. both of Merrimack, New Hampshire, United States of America (“US”), represented by GTC Law Group LLP & Affiliates, US.
The Respondent is PCONNECTION.COM of Gdynsk, Poland.
2. The Domain Name And Registrar
The disputed domain name <pconnection.com> is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 24, 2012. On August 24, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 24, 2012, the Registrar 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 August 27, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was September 16, 2012. The Center received an informal email communication from the Respondent on September 2, 2012. On September 3, 2012, the Center responded by email acknowledging receipt of this communication, asking if this communication was to be regarded as the Respondent’s complete Response, and informing that if no further communication was received by the due date for Response the Center would treat the email as the Response and proceed to appoint the Panel. The Center did not receive a reply to its email. Accordingly, the Center notified the parties about the commencement of panel appointment process on September 19, 2012.
The Center appointed Andrew F. Christie as the sole panelist in this matter on September 26, 2012. 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 first Complainant, PC Connection, Inc. is the parent corporation of the second Complainant, PC Connection Sales Corp.
The first Complainant is a Fortune 1000 company and a leading direct marketer of computer software, hardware, other computer products and accessories, consumer electronics, and a variety of related services.
The Complainants provided evidence showing that the second Complainant owns multiple trademark registrations for the trademark PC CONNECTION, dating in the US from as early as 1984. The second Complainant began using the trademark PC CONNECTION at least as early as 1982.
Since 1994 the first Complainant has owned and operated a website bearing the trademark PC CONNECTION at “www.pcconnection.com,” from which it sells computer hardware and software products, consumer electronics and associated services and accessories.
The disputed domain name was registered on August 27, 1998. It currently resolves to a website that is a directory, containing many links to other websites offering for sale a diverse range of goods and services. The Complainants state that they became aware of the disputed domain name on July 18, 2012.
5. Parties’ Contentions
The Complainants contend that the disputed domain name is confusingly similar to the PC CONNECTION trademark because it differs by only one letter and the addition of a non-descriptive suffix. The disputed domain name <pconnection.com> is a common misspelling of <pcconnection.com>, and is a case of typosquatting. The addition of a non-descriptive suffix, such as “.com”, does not distinguish a term from a protected trademark.
The Complainants contend that the Respondent has no rights or legitimate rights in the disputed domain name because: (i) the Complainants own multiple US registrations incorporating the trademark PC CONNECTION and have been using that trademark in interstate commerce in connection with computer hardware and software goods and services since 1982, long before the Respondent’s acquisition of the disputed domain name; (ii) the Complainants have not granted the Respondent a right to use the PC CONNECTION trademark in any way or in any form; (iii) there is no evidence that the Respondent is commonly known by the designation “pconnection”; (iii) the Respondent’s use of the disputed domain name does not constitute a bona fide offering of goods and services because it is being used to redirect users, who are seeking the Complainants’ website, to the website to which the disputed domain name resolves, which is a web directory containing a variety of sponsored links; (iv) the Respondent is trading off the goodwill of the Complainants’ trademark PC CONNECTION; and (v) the Complainants are not affiliated or associated with the Respondent in any way and have not authorized the Respondent to use the PC CONNECTION trademark or variations thereof in any way.
The Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith because: (i) its use of the disputed domain name is an attempt to potentially profit from Internet users seeking the Complainants’ official website at “www.pcconnection.com” who accidently access the disputed domain name through a typographical error; (ii) the website to which the disputed domain name resolves contains a sponsored link that directs Internet users to the Complainants’ website at “www.pcconnection.com”, thereby creating confusion as to the source of the Complainants’ goods and services, and confusion regarding affiliation and sponsorship; (iii) the Respondent is intentionally attempting to attract for commercial gain Internet users to the website to which the disputed domain name resolves, by creating a likelihood of confusion with the Complainants’ trademark as to the source, affiliation or sponsorship of such website; and (iv) the Respondent has a pattern of registering trademark-related domain names that incorporate common misspellings, which resolve to websites containing sponsored links to a wide variety of goods and services.
On September 2, 2012, the Center received an email from “Jack Tubul Pconnection.com”, stating the following: (i) the disputed domain name was registered as a dating website, with the letter “p” standing for “Personal” and the word “connection” being a generic word, and that this does not compete with the Complainants’ business; (ii) at the time of registration of the disputed domain name the Complainants did not have any trademark for doing business on the Internet, and the Respondent did not know of PC Connection; (iii) the disputed domain name is being parked and doing business globally online which is a completely legitimate use; and (iv) too much time has passed between the Respondent registering the disputed domain name in 1998 and the Complainants lodging a claim to protect their trademarks.
6. Discussion And Findings
A. Identical or Confusingly Similar
The disputed domain name incorporates almost the whole of the Complainant’s registered trademark PC CONNECTION – the omission being one of the letters “c” – and adds the gTLD identifier “.com”. This Panel finds these minor changes do not lessen the inevitable confusion of the disputed domain name with the Complainants’ trademark that arises by virtue of the fact that the disputed domain name contains, in the distinctive second level part of the name, a string of letters that is almost identical to the string of letters forming the Complainants’ trademark. In this Panel’s opinion, it is highly likely that many Internet users would misread “pconnection” to be “pcconnection”. Accordingly, this Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainants have rights.
B. Rights or Legitimate Interests
Although the Respondent claims it registered the disputed domain name for use as a dating website, it has not provided any evidence of use of, or preparations to use, the disputed domain name in this way. This Panel finds the Respondent’s assertion about its intended use of the disputed domain name to be fanciful. The Respondent has not provided any evidence that it has been commonly known by the disputed domain name, or that it is making a legitimate noncommercial or fair use of the disputed domain name. The evidence provided by the Complainants establishes that the Respondent is using the disputed domain name to resolve to a website containing sponsored links to other websites offering various goods and services, none of which appear to bear any relation to any meaning that may be attributed to the disputed domain name – other than as a misspelling of the Complainants’ trademark. The Respondent is not a licensee of, or otherwise affiliated with, the Complainants, and has not been authorized by the Complainants to use its PC CONNECTION trademark. According to the present record, therefore, the disputed domain name is not being used in connection with a bona fide offering of goods and services. Accordingly, this Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Respondent claims that at the time it registered the disputed domain name it was unaware of the Complainants and that the Complainants did not have any trademark for doing business on the Internet. In fact, the disputed domain name was registered 16 years after the Complainants first began using the name “PC Connection” in connection with their business of selling computer hardware, software and related goods and services, and 14 years after the Complainants registered the PC CONNECTION trademark in the US. The evidence on the record provided by the Complainants with respect to their use of the PC CONNECTION trademark is sufficient to satisfy this Panel that, at the time the disputed domain name was registered, the Respondent most likely knew of the Complainants’ trademark and knew that it had no rights or legitimate interests in the disputed domain name. Furthermore, the evidence on the record provided by the Complainants with respect to the Respondent’s use of the disputed domain name indicates that the Respondent has used the disputed domain name to attract, for commercial gain, Internet users to a website by creating confusion with the Complainants’ trademark as to the affiliation of that website. For all these reasons, this Panel is satisfied that the disputed domain name has been registered and is being used in bad faith.
D. Complainants’ “Delay”
The Respondent has asserted that the fact 14 years has elapsed between first registration of the disputed domain name and commencement of this action means that “[t]oo much time has passed” for the Complainants to be able to succeed. This Panel makes the following observations on that assertion.
First, there is no evidence before this Panel showing, or even suggesting, that the Complainants were aware of the Respondent’s registration of the disputed domain name earlier than the date asserted by the Complainants, namely July 18, 2012. Thus, there is nothing in the case record currently before this Panel to indicate that there has been any conscious delay on the part of the Complainants in bringing this Complaint.
Secondly, in this Panel’s opinion, the relevance of an extended lapse of time between registration of the disputed domain name and the commencement of the Complaint is correctly reflected in paragraph 4.10 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”). Thus, an extended elapse of time in bringing a complaint does not of itself prevent a complainant from succeeding where the complainant can establish a case on the merits under the requisite three elements, but it may make it more difficult for the complainant to establish its case on the merits, particularly in relation to the second and third elements of the Policy.
Thirdly, as this Panel explained in Victoria’s Secret Stores Brand Management, Inc. v. Linda Cameron Pickard, Linda Watson, WIPO Case No. DAU2012-0015, in this Panel’s view an extended lapse of time can, in exceptional circumstances, contribute to the respondent acquiring, through its subsequent bona fide use, a right or legitimate interest in a domain name to which it had no such right or legitimate interest at an earlier time. However, the evidentiary record in this case does not disclose any exceptional circumstances that give rise to this outcome. Unlike in the aforementioned case, the record in this case does not disclose any circumstances under which it would be reasonable for the Respondent to conclude the Complainants would not press their entitlement for relief under the Policy. Thus, in this case there are no circumstances by which the Respondent’s use of the disputed domain name over time became bona fide, and hence no circumstances by which the Respondent came to acquire a right or legitimate interest in the disputed domain name despite lacking such at an earlier time.
Accordingly, this Panel concludes that the extended lapse of time between the Respondent’s registration of the disputed domain name and the Complainants’ commencement of this action does not alter the Panel’s conclusion that the Complainants have made out each of the three requirements for a remedy under 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, <pconnection.com>, be transferred to the second Complainant, PC Connection Sales Corp.
Andrew F. Christie
Dated: October 10, 2012