WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

PCM, Inc. v. Elio Nager / Domain Privacy Service

Case No. D2013-0894

1. The Parties

Complainant is PCM, Inc. of, El Segundo, California, United States of America, represented by Morrison & Foerster, LLP, United States of America.

Respondent is Elio Nager / Domain Privacy Service of Jupiter, Florida, United States of America.

2. The Domain Name and Registrar

The disputed domain name <pcmallonline.com> (the “Domain Name”) is registered with FastDomain, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 22, 2013. On May 22, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 22, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on May 24, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on May 29, 2013.

The Center verified that the amended 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 Respondent of the Complaint, and the proceedings commenced on May 29, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was June 18, 2013. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 21, 2013.

The Center appointed Christopher S. Gibson as the sole panelist in this matter on July 8, 2013. 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 a Delaware corporation with its principal place of business in Los Angeles County, California.

Complainant owns several United States registered trademarks for PC MALL and PCMALL, registered between 1996 and 2002, having used them in commerce since 1995. Complainant’s predecessor and subsidiary registered the domain names <pc-mall.com> and <pcmall.com> in 1995 and 1996, respectively, both of which are linked to Complainant’s website at “www.pcm.com”.

Since 1987, Complainant has sold consumer electronics and computer-related products and services through an online network and advertisements in national magazines. Beginning in 1994, Complainant has also sold its products and services through catalogs that are sent directly to current and potential customers, and in recent years, Complainant has mailed in excess of 75 million catalogs per year. In addition, Complainant has sold consumer electronics and computer-related products and services over the Internet through a variety of websites since 1995.

The Domain Name was registered on May 1, 2012.

5. Parties’ Contentions

A. Complainant

(i) The Domain Name is Confusingly Similar to Complainant’s Trademark

Complainant asserts that on May 1, 2012, well after Complainant had commenced use of and registered the trademark PCMALL, Respondent registered the Domain Name. Respondent subsequently began using the Domain Name in connection with a website selling computers and computer accessories.

Complainant contends the Domain Name, <pcmallonline.com>, is virtually identical and confusingly similar to Complainant’s PCMALL trademark. The Domain Name merely adds the descriptive term “online” after Complainant’s mark. This slight change does not serve to distinguish the Domain Name from Complainant’s PCMALL mark and domain names, as Complainant’s PCMALL mark is wholly incorporated into Respondent’s Domain Name. A domain name that incorporates a complainant’s registered mark may be sufficient to establish confusing similarity for purposes of the Policy despite the addition of descriptive words.

(ii) No Rights or Legitimate Interests in Respect of the Domain Name

Complainant contends that Respondent has no rights to or legitimate interests in the Domain Name. In particular, Complainant alleges on information and belief that Respondent has not made use of the Domain Name in connection with a bona fide offering of goods or services; Respondent is not commonly known by the Domain Name; and Respondent is not making a legitimate noncommercial or fair use of the Domain Name.

Complainant states that it has not authorized or licensed Respondent to use Complainant’s PCMALL trademark, nor is Respondent a distributor of Complainant’s goods. Rather, Respondent has been using the Domain Name in connection with a website located at “www.pcmallonline.com”, where Respondent appears to be attempting to profit from the sale of computers, computer-related accessories, and other goods in direct competition with Complainant. Complainant explains, for example, that on the homepage of this website, Respondent lists a series of “popular brands” that name manufacturers of computer products and accessories. Some of these manufacturers, such as HP, Dell, and Lenovo, provide computer products that are currently offered for sale at Complainant’s website. Registering and using the Domain Name in this manner — i.e., to profit from creating confusion with the registered trademarks of Complainant — does not constitute use of the Domain Name in connection with a bona fide offering of goods or services, and cannot give Respondent rights or a legitimate interest in the Domain Name.

Further, to Complainant’s knowledge, Respondent has not been commonly known by the Domain Name, and on information and belief, Respondent did not use the Domain Name in connection with any legitimate business or offering of goods or services prior to the registration of the Domain Name on May 1, 2012. Accordingly, Respondent cannot claim that it is commonly known by the Domain Name. Moreover, Respondent is not making legitimate noncommercial or fair use of the Domain Name. As described above, Respondent has been using the Domain Name to direct customers to its website, where it sells goods in competition with Complainant. Complainant contends that use of a domain name that tends to misrepresent an association of a competitor with a trademark owner and to infringe the trademark owner’s mark, does not constitute legitimate fair use. These factors, therefore, support a finding that Respondent has no rights or legitimate interests in the Domain Name. Complainant finally states that to the contrary, Respondent’s actions evidence intent to profit commercially from the Domain Name by creating consumer confusion and misleadingly diverting customers from Complainant.

(iii) Domain Name Was Registered and Is Being Used in Bad Faith

Complainant asserts that, according to paragraph 4(b)(iv) of the Policy, Respondent has acted in bad faith by, among other things, intentionally attempting to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with the Complainant’s PCMALL mark.

Complainant argues that Respondent’s registration and use of a domain name that is so similar to Complainant’s PCMALL mark is calculated to mislead consumers into believing that Respondent’s website is operated by, affiliated with, or authorized by Complainant. This is evidenced, in particular, by Respondent’s listing of Complainant’s business address under the “Terms and Conditions” on Respondent’s website, and Respondent’s representation that it will respond to requests for information. Creating such consumer confusion for the purpose of commercial gain constitutes strong evidence of bad faith intent.

Complainant further states that the likelihood of confusion created by Respondent’s use of the Domain Name is increased by the fact that Respondent’s website offers links to identical goods as those offered on Complainant’s own website. Respondent’s use of the Domain Name consisting of Complainant’s PCMALL mark combined with a non-distinctive, descriptive term in connection with identical goods is overwhelmingly likely to cause confusion, and is evidence of bad faith. The Domain Name even provides a link to Complainant’s own privacy policy, which Respondent describes as containing “details of our Privacy Policy.” The existence of this link is likely to cause those who know of Complainant and Complainant’s website to believe, incorrectly, that the Domain Name is related to Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

As has been recited in many decisions under the Policy, in order to succeed in its claim, Complainant must demonstrate that the three elements enumerated in paragraph 4(a) have been satisfied. These elements are that:

(i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) Respondent has no rights to or legitimate interests in respect of the Domain Name; and

(iii) Respondent has registered and is using the Domain Name in bad faith.

A. Identical or Confusingly Similar

Complainant has demonstrated trademark rights in its registered marks PC MALL and PCMALL which pre-date by more than 15 years the registration of the Domain Name by Respondent.

On its face, the Panel finds that the Domain Name is not identical to Complainant’s trademarks. Instead, the relevant question is whether the Domain Name, <pcmallonline.com>, which includes the common word “online” in combination with “PC Mall” (identical to Complainant’s marks), is confusingly similar to Complainant’s marks. The threshold test for confusing similarity under the Policy involves a comparison between the trademark and the domain name itself to determine the likelihood of user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of the common or descriptive term typically being regarded as insufficient to prevent the likelihood confusion. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2. Moreover, the addition of merely generic, descriptive, or geographical wording to a trademark in a domain name would normally be insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP. UDRP panels have usually found the incorporated trademark to constitute the dominant component of the domain name. See WIPO Overview 2.0, paragraph 1.9 and also F. Hoffmann-La Roche AG v. George McKennitt, WIPO Case No. D2005-1300 (finding that “online” in the domain name <online-valium.com> is descriptive and that the addition of a descriptive term does not eliminate the confusing similarity between the complainant’s VALIUM trademark and the domain name).

In this case, particularly with the relevant consuming public in mind – Internet users of consumer electronics and computer-related products and services – the Panel finds that confusingly similarity exists. Accordingly, the Panel finds Complainant has satisfied the first element of the Policy.

B. Rights or Legitimate Interests

A complainant is normally required to make out a prima facie case that respondent lacks rights or legitimate interests in the disputed domain name. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests. If respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.

In this case, the Panel finds that Complainant has made a prima facie showing that Respondent has no rights or legitimate interests in the Domain Name. The Panel observes that Respondent is not related to Complainant, nor from the available record is Respondent generally known by the Domain Name or authorized by Complainant to use Complainant’s trademarks, nor has Respondent made legitimate non-commercial or fair use of the Domain Name. Instead, the evidence shows that the Domain Name is used in connection with a website offering goods and services that are in direct competition with Complainant’s offerings. Moreover, the website at the Domain Name makes direct and misleading reference to Complainant’s website, without authorization. Registering and using the Domain Name in this manner, to profit from creating confusion with Complainant’s trademarks, does not constitute use of the Domain Name in connection with a bona fide offering of goods or services, and does not give Respondent rights or legitimate interest in the Domain Name.

Respondent has made no effort in the present proceedings to demonstrate rights or legitimate interests in the Domain Name. In the absence of any response from Respondent, and any other plausible explanation, the addition of “online” to the term “PC mall” appears to play deliberately on Complainant's trademark.

For all these reasons, the Panel finds that Respondent has no rights or legitimate interests with respect to the Domain Name under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel finds that Complainant has established bad faith registration and use of the Domain Name by Respondent under paragraph 4(b) of the Policy, based on several factors. First, Respondent incorporated Complainant’s PC MALL and PCMALL trademarks into the Domain Name without any plausible explanation for doing so, generating confusing similarity. Moreover, Respondent registered the Domain Name on May 1, 2012, more than 15 years after Complainant commenced using its trademarks PC MALL and PCMALL in commerce.

Second, the Panel finds that Respondent has been using the Domain Name to intentionally attract, for commercial gain, Internet users to Respondent’s website linked to the Domain Name in a manner that confuses and misleads Internet users into thinking there is an association between Respondent and Complainant. In particular, not only has Respondent used the Domain Name to direct Internet consumers to its website where it sells goods in competition with Complainant, but Respondent also lists Complainant’s business address under the “Terms and Conditions” on the Domain Name website, and provides a link to Complainant’s privacy policy, without authorization. This is evidence that Respondent has intentionally targeted Complainant and is attempting to mislead consumers into thinking there is an association between Respondent and Complainant. See Freedom Flag, Inc., d/b/a Falls Flag & Banner Co. v. Flags Unlimited, WIPO Case No. D2002-0478 (finding bad faith on a showing that respondent used the domain name at issue to redirect the Internet users to its own website where it sold goods competing with those of complainant).

This Panel accordingly finds that, for all the foregoing reasons, the Domain Name has been registered and is being used in bad faith.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <pcmallonline.com>, be transferred to Complainant.

Christopher S. Gibson
Sole Panelist
Date: August 2, 2013