PNY Technologies, Inc. V. Whois Protection Service LLC.
Case No. D2008-0540
1. The Parties
Complainant is PNY Technologies, Inc., of New Jersey, United States of America, represented by McCarter & English, LLP, United States of America.
Respondent is Whois Protection Service LLC, Grand Cayman, Cayman Islands, Oversees Territory of the United Kingdom and Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <pnytechnology.com> is registered with CSL Computer Service Langenbach GmbH d/b/a Joker.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 8, 2008. On April 10, 2008, the Center transmitted by email to CSL Computer Service Langenbach GmbH d/b/a Joker.com a request for registrar verification in connection with the domain name at issue. On April 11, 2008, CSL Computer Service Langenbach GmbH d/b/a Joker.com transmitted by email to the Center its verification response confirming that 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”), 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 April 15, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was May 5, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 6, 2008.
The Center appointed Manoel J. Pereira dos Santos as the sole panelist in this matter on May 7, 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
The trademarks upon which the Complaint are based are PNY and PNY TECHNOLOGIES. According to the documentary evidence and contentions submitted, Complainant owns a number of trademark registrations for the PNY TECHNOLOGIES trademark and variations thereof in the United States of America. The PNY TECHNOLOGIES trademark and its variations were registered in the United States of America under Nos. 2,428,341 on February 13, 2001 (filed on January 7, 2000); 2,904,761 on November 23, 2004 (filed on April 28, 2003), 2,664,432 on December 17, 2002 (filed on June 7, 2001); and 2,899,726 on November 2, 2004 (filed on August 3, 2003). Complainant also has a pending application for the PNY trademark filed under Serial No. 77217696 on June 28, 2007.
According to the documentary evidence and contentions submitted, Complainant has used the PNY and PNY TECHNOLOGIES trademarks for certain computer products since at least 1985. Complainant argues that the United States Trademark Registration 2,428,341 has achieved the status of an incontestable mark under U.S. trademark law (15 U.S.C. ยง 1065).
According to the documentary evidence and contentions submitted, the domain name <pnytechnology.com> was registered with CSL Computer Service Langenbach GmbH d/b/a Joker.com on February 27, 2002. On January 3, 2008 Complainant sent Respondent a cease and desist letter demanding that Respondent tranfer to Complainant the disputed domain name. On January 3, 2008 Complainant received a response letter from Respondent stating that the subject domain name had been registered before Complainant had received its trademarks and arguing that the dispute domain name is a “generic domain”. Reference is made to Annexes 5 and 6 to the Complaint.
5. Parties’ Contentions
A. Complainant
Complainant contends that the disputed domain name is identical or confusingly similar to Complainant’s trademarks because it incorporates the PNY and PNY TECHNOLOGIES trademarks and Respondent’s misspelling of the term “technologies” is a typical case of “typosquatting”. Complainant also argues that the addition of a gTLD suffix “.com” is without legal significance from the standpoint of comparing the disputed domain name to Complainant’s trademarks.
Complainant further contends that Respondent does not have legitimate rights or interests regarding the disputed domain name because (i) before any notice to the Respondent of the disputed, Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services, (ii) Respondent has never been known either by the name “pnytechnology” or “pnytechnology.com”, and (iii) Respondent is not making a legitimate non-commercial or fair use of the disputed domain name without intent to misleadingly divert consumers for commercial gain or to tarnish Complainant’s marks.
Finally, Complainant contends that Respondent (i) has registered and used the disputed domain name for private financial gain and/or to redirect would-be purchasers of Complainant’s products to other websites potentially selling products competitive with Complainant’s products, (ii) has sought to siphon business away from Complainant, and (iii) has engaged in bad faith conduct by providing incomplete contact information to the registrar.
B. Respondent
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Effect of the Default
The consensus view is that the respondent’s default does not automatically result in a decision in favor of the complainant and that the complainant must establish each of the three elements required by paragraph 4(a) of the UDRP (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, para. 2.2). However, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.
This Panel finds that there are no exceptional circumstances for the failure of the Respondent to submit a Response. As a result, the Panel infers that the Respondent does not deny the facts asserted and contentions made by Complainant from these facts. Reuters Limited v. Global Net 2000, Inc.,
WIPO Case No. D2000-0441; LCIA (London Court of International Arbitration) v. Wellsbuck Corporation, WIPO Case No. D2005-0084; Ross-Simons, Inc. v. Domain.Contac. WIPO Case No. D2003-0994. Therefore, asserted facts that are not unreasonable will be taken as true and the Respondent will be subject to the inferences that flow naturally from the information provided by the Complainant. Reuters Limited v. Global Net 2000, Inc.,
WIPO Case No. D2000-0441; RX America, LLC v. Matthew Smith,
WIPO Case No. D2005-0540.
B. Laches
The Panel notes that the disputed domain name was registered on February 27, 2002 and that Respondent sent a cease and desist letter to Respondent on January 3, 2008 only. The question which arises is whether the elapse of almost 6 years from the domain name registration date prevents Complainant from commencing an administrative proceeding against Respondent under the Policy.
The Panel recognizes that the issue has been addressed in previous UDRP decisions and that the doctrine of laches or estoppel would not appear to have been applied to proceedings under the Policy. “Estoppel has rarely been raised as a defense in a proceeding under the Policy, and to this panel’s knowledge has never been the basis for denying a complaint when all elements of the Policy were established”, Justice for Children v. Rneetso/Robert W. O’Steen,
WIPO Case No. D2004-0175. See also Deutsche Telekom AG v. Oded Zucker,
WIPO Case No. D2004-0749; Tax Analysts v. eCorp,
WIPO Case No. D2007-0040.
As decided in Tom Cruise v. Network Operations Center/Alberta Hot Rods,
WIPO Case No. D2006-0560, “[w]ithout some substantial evidence to indicate that Complainant approved of or condoned Respondent’s use of his mark in the disputed domain name, the Panel is not prepared to import a bar against his cause of action”.
The Panel will now review each of the three cumulative elements set forth in Paragraph 4(a) of the Policy to determine whether Complainant has complied with such requirements.
C. Identical or Confusingly Similar
The Panel concurs with the opinion of several prior WIPO UDRP panels which have held that, when a domain name wholly incorporates a complainant’s registered trademark, that may be sufficient to establish confusing similarity for purposes of the Policy. See, e.g.,Telstra Corporation v. Barry Cheng Kwok Chu,
WIPO Case No. D2000-0423; Pfizer Inc. v. United Pharmacy Ltd,
WIPO Case No. D2001-0446; E.I. du Pont de Nemours and Company v. Richi Industry S. r. l.,WIPO Case No. D2001-1206; Utensilerie Associate S. p. A. v. C & M,WIPO Case No. D2003-0159; Shaw Industries Group Inc., Columbia Insurance Company v. Wan-Fu China, Ltd.,
WIPO Case No. D2007-0282.
In addition, this case may be considered a “typosquatting” case where the disputed domain name is a slight variation in spelling from a registered trademark. In fact, the <pnytechnology.com> domain name reproduces the Complainant’s PNY TECHNOLOGIES trademark with a slight difference in spelling (singular vs. plural).
As a result, this is an example of confusing similarity brought about through easily made typing errors made by an Internet user: rather than typing the word “pnytechnologies” to visit Complainant’s website, an Internet user could easily type the word “pnytechnology” and be diverted to a different website. Hummert International Inc. v. Manila Industries, Inc.,
WIPO Case No. D2006-0777; Boscolo Tours S.p.A. v. Balata Inc.,
WIPO Case No. D2005-0970; Redcats USA, L.P. v. Modern Empire Internet Ltd., Administrator,
WIPO Case No. D2007-1668; Panavision, Inc. and Panavision International, L. P. v. Ed Meyer, d/b/a/ Panavisions Eyewear and Sunglasses, Domains by Proxy, Inc., and M.P.W., Inc. d/b/a Panavisions Eyewear and Sunglasses, Inc.,
WIPO Case No. D2004-0002; Meetup, Inc. v. Pro-Life domains Not For Sale,
WIPO Case No. D2003-1031.
The Panel takes into account previous WIPO UDRP decisions relating to the practice of “typosquatting” where such practice has consistently been regarded as creating domain names confusingly similar to the relevant mark. This is a point well-established in prior UDRP domain name cases. MasterCard International Incorporated v. DL Webb,
WIPO Case No. D2008-0324; Breitling SA and Breitling USA Inc. v. Whois Privacy Protection Service, Inc. / Breitling USA, Inc.,
WIPO Case No. D2008-0302; ACCOR v. Brigit Klostermann, WIPO Case No. D2005-0627; Sharman License Holdings, Limited v. IcedIt.com, WIPO Decision No. D2004-0713; Ross-Simons, Inc. v. Domain.Contact, WIPO Case No. D2003-0994.
Finally, the addition of the suffix “.com” is non-distinctive because it is required for the registration of the domain name. RX America, LLC v. Mattew Smith,
WIPO Case No. D2005-0540; Sanofi-Aventis v. US Online Pharmacies,
WIPO Case No. D2006-0582.
Therefore, the Panel finds that the requirement of paragraph 4(a)(i) of the Policy is met.
D. Rights or Legitimate Interests
The Panel sees no plausible explanation for Respondent’s adoption and use of the term “pnytechnology” in the disputed domain name since there is no evidence that Respondent has ever been known either by the name “pnytechnology” or “pnytechnology.com”, or by a similar name. Complainant’s contention that Respondent is not commonly known by the domain name is to be accepted. Therefore, the Panel concludes that Respondent intended to infringe on Complainant’s trademark rights and to take advantage of the reputation associated to the PNY TECHNOLOGIES trademark.
Complainant further contends that Respondent has not used and has made no effort to use the disputed domain name in connection with a bona fide offering of goods and services, and that Respondent has instead consistently attempted to profit from its unauthorized registration and use of the domain name at issue. The Panel concurs with the finding in other WIPO UDRP decisions that bona fide use does not exist when the intended use is a deliberate infringement of another’s rights. See Chanel, Inc. v. Cologne Zone,
WIPO Case No. D2000-1809. The issue of bad faith will be elaborated below and, therefore, this finding suffices to dispose of the matter at this stage.
By defaulting, the Respondent has failed to provide the Panel with any evidence of a bona fide offering of goods and services or of a legitimate noncommercial or fair use of the domain name, and Complainant’s evidence of diversion of Internet users is compelling. Accordingly, the Panel finds that the disputed domain name was selected and used by Respondent with the intent to attract for commercial gain Internet users. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”,
WIPO Case No. D2000-0847.
In short, the Complainant has satisfied its burden of providing sufficient evidence to make a prima facie case showing that Respondent lacks rights to or legitimate interests in the disputed domain name, and the Respondent has failed to provide the Panel with any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that Respondent has any rights or legitimate interests in the disputed domain names. Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465.
In light of the foregoing, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is met.
E. Registered and Used in Bad Faith
Complainant argues that the disputed domain name is parked and refers to Annex 4 of the Complaint containing the webpage to which the domain name at issue resolves. Complainant further contends that Respondent is using the domain name for private financial gain and to falsely suggest to Internet users that Complainant is affiliated with Respondent’s website in an act of “opportunistic bad faith”.
An independent investigation was conducted by the Panel by visiting the website at “www.pnytechnology.com” (access on various dates and particularly on May 17, 2008). The Panel notes that the website contains landing pages at which listings and sponsored links related to a variety of topics, products and services are provided.
The Panel concurs with the understanding of several other WIPO panels that the use of a domain name to point to a website that offers sponsored links to other websites under similar circumstances is an evidence of bad faith registration and use. Mudd, (USA) LLC v. Unasi Inc. (MUDDPRODUCTS-COM-DOM),
WIPO Case No. D2005-0591; Volvo Trademark Holding AB v. Unais, Inc.,
WIPO Case No. D2005-0556.
Finally, it is worth noting that the mere act of “typosquatting” or registering a domain name that is a common misspelling of a mark in which a party has rights, has often been recognized as evidence of bad faith registration and use. See Paragon Gifts, Inc. v. Domain.Contact, WIPO Case No. D2004-0107; National Association of Professional Baseball Leagues, d/b/a Minor League Baseball v. Zuccarini,
WIPO Case No. D2002-1011.
In light of all the conclusions and findings above, the Panel finds that the requirement of paragraph 4(a)(iii) of the Policy is met.
7. Decision
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 <pnytechnology.com> be transferred to the Complainant.
Manoel J. Pereira dos Santos Sole Panelist
Dated: May 21, 2008
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