WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
PNY Technologies, Inc. v. WXN / Domain Administrator
Case No. D2008-0545
1. The Parties
Complainant is PNY Technologies, Inc. of Parsippany, New Jersey, United States of America, represented by McCarter & English, LLP, United States of America.
Respondent is WXN / Domain Administrator of Long Island City, New York, United States of America.
2. The Domain Name and Registrar
The disputed domain name <pny.net> (the “Domain Name”) is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 8, 2008 naming as Respondents “It’s All in the Name” and “WXN”. On April 10, 2008, the Center transmitted by email to eNom a request for registrar verification in connection with the Domain Name. On that same date, eNom transmitted by email to the Center its verification response providing the Center with the name and contact details of the current registrant. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on April 15, 2008 which corrected the named Respondent. The Center verified that the Complaint together with the amendment to 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 Respondent of the Complaint, and the proceedings commenced April 17, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was May 7, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 8, 2005.
The Center appointed Harrie R. Samaras as the sole panelist in this matter on May 21, 2008. 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 makes and sells various computer-related products, including computer memory products, computer workstation graphic boards and computer graphics cards used in connection with computer games, under various trademarks including PNY and PNY TECHNOLOGIES. Since 1985, PNY has continuously used those marks for computer workstation graphic boards and computer graphics cards used in connection with computer games and computer related products. With regard to its PNY TECHNOLOGIES marks, Complainant’s registrations include United States of America (“U.S”). Reg. Nos. 2,428,341, 2,901,575, 2,904,761, 2,664,432, and 2,899,726. The PNY TECHNOLOGIES mark is incontestable. With regard to the PNY mark, Complainant has a pending trademark application for and makes use of this mark in connection with a variety of computer-related products, including its computer memory products, computer workstation graphic boards, computer graphics cards used in connection with computer games, computer hardware, computers and laptops. These marks are referred to collectively hereinafter as “the Marks.”
Complainant also owns the domain name <pny.com> as its primary URL for its web site devoted to the sale of computer workstation graphic boards and computer graphics cards used in connection with computer games and computer-related products.
The Domain Name does not presently resolve to a website.
5. Parties’ Contentions
Complainant has used the Marks continuously since 1985. The Domain Name is confusingly similar to the Marks.
PNY is not affiliated with Respondent and has never licensed or otherwise permitted it to use the Marks. Furthermore, Complainant never authorized Respondent to apply for and use the Domain Name.
On December 22, 2007, the WHOIS record for the Domain Name identified its registrant as “It’s All in the Name”, and listed the registrant’s address in Long Island City, New York. As of December 27, 2007, the registration records for the Domain Name did not identify a person as a registrant, administrative or technical content. On January 3, 2007, Complainant sent a letter via overnight mail, regular mail and electronic mail, addressed to then-registrant “It’s All in the Name” at the New York address. The letter demanded, among other things, that it cease and desist from any further use of the Domain Name. Respondent did not respond to that letter.
According to current registration records for the Domain Name, the registrant was changed after Complainant sent its demand letter from “It’s All in the Name” to “WXN”. The address for WXN is the same address previously listed for the prior registrant “It’s All in the Name”. The current registration records also fail to identify an individual as a registrant, administrative and technical contact. The New York Department of State, Division of Corporations’ Corporation and Business Entity Database does not reflect any entities licensed to do business in New York under the names “It’s All in the Name” or “WXN”.
Respondent has registered and is using the Domain Name in bad faith.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Where a party fails to present evidence in its control, the Panel may draw such inferences as it considers appropriate. Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques, WIPO Case No. D2000-0004 (February 16, 2000). Insofar as Respondent has defaulted, it is therefore appropriate to accept the facts asserted by Complainant and to draw adverse inferences of fact against Respondent. Nonetheless, paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
This element consists of two parts: first, does Complainant have rights in a relevant mark and, second, is the Domain Name identical or confusingly similar to that mark.
The Panel finds Complainant has established rights in PNY and PNY TECHNOLOGIES based on long-standing use of the marks in relation to computer workstation graphic boards and computer graphics cards used in connection with computer games and computer related products, as well as U.S. trademark registrations for the PNY TECHNOLOGIES marks.
The Panel further finds that the domain name <pny.net> is confusingly similar to the Marks. The Domain Name wholly incorporates the PNY mark, adding only the generic top-level domain (“gTLD”) “.net”. If a domain name incorporates a complainant’s mark in its entirety, it may be confusingly similar to that mark despite the addition of other words. Dell Inc. v. George Dell and Dell Net Solutions, WIPO Case No. D2004-0512 (August 24, 2004). Further, the addition of the gTLD “.net” is without legal significance from the standpoint of comparing the Domain Name to the Marks because use of a gTLD is required of domain name registrants, “.net” is one of only a few such gTLD’s, and “.net” does not serve to identify a specific enterprise as a source of goods or services. See SBC Communications v. Fred Bell aka Bell Internet, WIPO Case No. D2001-0602 (July 13, 2001).
For the foregoing reasons, the Panel finds that paragraph 4(a)(i) of the Policy has been satisfied.
B. Rights or Legitimate Interests
It is uncontested that Complainant has not licensed or otherwise authorized Respondent to use the Marks e.g., in a domain name. Insofar as Complainant has made a prima facie showing, Respondent lacks rights or legitimate interests to the Domain Name (Spencer Douglass, MGA v. Bail Yes Bonding, WIPO Case No. D2004-0261 (June 1, 2004)), this shifts the burden to Respondent to show evidence that it has rights or legitimate interests in the Domain Name. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270 (June 6, 2000). Such facts, without contrary evidence from Respondent, are sufficient to permit a finding in Complainants’ favor on this issue. Alcoholics Anonymous World Services, Inc. v. Lauren Raymond, WIPO Case No. D2000-0007 (March 6, 2000).
The Panel therefore holds that Complainant has satisfied paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets forth four criteria that are to be considered as evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark 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 domain name in order to prevent the owner of the trademark 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 domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the 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 the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product.”
These criteria are not exclusive and the panel may conclude that Respondent acted in bad faith where other circumstances reveal the bad faith nature of the registration and use of the disputed domain name.
The Panel concludes, on the basis of a prima facie showing by Complainant, that Respondent has registered and used the Domain Name in bad faith. Respondent has registered and used a domain name that is identical or confusingly similar to the Marks (all of which have been in use for over 20 years and some of which are registered with the U.S. Patent and Trademark Office) and in so doing has run a foul of paragraph 4(b)(iv) of the Policy. The Respondent further appears to have placed the Domain Name out of reach of Complainant by parking the domain name as a passive holder, has failed to respond to Complainant’s communications, has taken active steps to conceal its true identify, and is in default in this proceeding. See Eveready Battery Company, Inc. v. Oscar Haynes, WIPO Case No. D2003-1005 (February 27, 2004).
The Panel therefore holds that Complainant has satisfied paragraph 4(c) of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <pny.net> be transferred to Complainant.
Harrie R. Samaras
Dated: June 6, 2008