PNY Technologies Inc. v. Moniker Privacy Services / Domain Admin, Express Corporation
Case No. D2008-0541
1. The Parties
The Complainant is PNY Technologies, Inc. of New Jersey, United States of America, represented by McCarter & English, LLP, United States of America.
The Respondent is Moniker Privacy Services / Domain Admin, Express Corporation, of Dominica.
2. The Domain Name and Registrar
The disputed domain name <pny.org> is registered with Moniker Online Services, LLC.
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 Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On April 17, 2008, Moniker Online Services, LLC transmitted by email to the Center its verification response informing that Domain Admin is listed as the registrant and providing the contact details. In response to a notice of change in registrant information by the Center, the Complainant filed an amendment to the Complaint on April 26, 2008 via email and on April 29, 2008 as a hardcopy. 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 the Respondent of the Complaint, and the proceedings commenced on April 28, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was May 18, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 19, 2008.
The Center appointed Alistair Payne as the sole panelist in this matter on May 22, 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 Complainant is PNY Technologies Inc. The Complainant manufactures and sells computer products under a variety of trade marks including PNY and PNY TECHNOLOGIES. The Complainant owns several United States trademark registrations for PNY TECHNOLOGIES and for PNY TECHNOLOGIES VERTO. The Complainant has also lodged a United States of America (“US”) trade mark application for PNY in connection with a variety of computer electronic products. The Complainant describes these as the “PNY marks”
The Complainant is also the owner of the domain name <pny.com> and registered
the domain name on December 5, 1995.
The Complainant is seeking the transfer of the Disputed Domain Name.
5. Parties’ Contentions
A. Complainant
The Complainant states that the Disputed Domain Name is identically or confusingly similar to the Complainants trade marks. In particular the Complainant notes that the Disputed Domain Name wholly incorporates the PNY mark, adding only the generic top-level domain (“gTLD”) “.org”.
The Complainant further contends that the Respondent has no rights or legitimate interests with respect to the Disputed Domain Name. The Complainant argues that there is no evidence of the Respondent’s use of, or demonstrable preparations to use, the Domain Name or “pny” in connection with a bona fide offering of goods or services.
Finally the Complainant contends that the domain is being used in bad faith. The Complainant states that they have never licensed or otherwise permitted the Respondent to use the PNY marks and claims that the Respondent is using the Disputed Domain Name for nothing other than private financial gain. In addition, the Complainant states that the Respondent has acted in bad faith by seeking to siphon business away from the Complainant by using the Disputed Domain Name incorporating the strong PNY marks and by directing traffic legitimately seeking the Complainant itself to competitors of the Complainant.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. UDRP Elements
The Respondent has not filed a Response to the Complaint. Pursuant to Paragraph 14(a) of the Rules, the Panel will proceed to issue a decision on the Complaint in the absence of a Response from the Respondent.
Notwithstanding the fact that the Respondent has not filed a Response to the Complaint, it is still necessary for the Complainant, if it is to succeed in this administrative Proceeding, to prove each of the three elements referred to in Paragraph 4(a) of the Policy, namely that:
i. the Disputed Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights; and
ii. the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
iii. the Disputed Domain Name has been registered and is being used in bad faith.
The Panel will proceed to establish whether the Complainant has discharged the burden of proof in respect of each of the three elements referred to in Paragraph 4(a) of the Policy. The Panel also notes that pursuant to Paragraph 14(b) of the Rules, the Panel may draw such inferences as it considers appropriate in the absence of a response from the Respondent.
B. Identical or Confusingly Similar
There are two separate elements that the Complainant must prove under paragraph 4 (a) (i) of the Policy. First that the Complainant has rights in a trade mark or service mark and second, that the Disputed Domain Name is identical or confusingly similar to the trade mark in which the Complainant has rights.
The Complainant has shown in evidence that it is the proprietor of a number of registered combined logo/word in the US containing the word “pny”. The Complainant has also demonstrated extensive common law rights in PNY and has a current application with the United States Patent and Trademark Office for the word mark PNY dated June 28, 2007. The Complainant is also the owner of the domain name <pny.com>. The Panel is satisfied that the Complainant has at the least common law rights in the PNY mark.
The Panel notes that the Disputed Domain Name contains the PNY mark in its entirety and is identical to the Complainants domain name save only for the generic top-level domain(“gTLD”) “.org”, which is typically disregarded for purposes of comparison under the first element of the Policy.
Accordingly, the Disputed Domain Name is identical or at least confusingly similar to the Complainant’s trade mark. Therefore the Panel finds that the Complaint fulfills the requirements of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
The Disputed Domain Name was registered by the Respondent on the February 6, 2000, almost fifteen years after the Complainant had begun to establish trade mark rights in the PNY marks. As noted above the Complainant has at the least common law rights in the mark PNY.
The Panel accepts the Complainant’s assertion that the Complainant is not affiliated with the Respondent and has never licensed or otherwise permitted the Respondent to use the term “pny” or to incorporate the term into a domain name. The Panel further accepts that the Disputed Domain Name has been “parked” by the Respondent and is acting as a search page for direct links to similar businesses or competitors of the Complainant.
There is nothing to suggest to the Panel that the Respondent has any bona fide business activity using the Disputed Domain Name or any kinds of rights or legitimate interests.
Accordingly the Panel finds that the Complaint fulfills the requirements of paragraph 4 (a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(b)(iv) of the Policy states that using a domain name and intentionally attempting to attract, for commercial gain, Internet users to a web site 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 a web site or location or of a product or service on a website or location is clear evidence of the registration and use of a domain name in bad faith.
The Complainant has provided in Annex 4 attached to the Complaint a print out of the website being operated at the Disputed Domain Name. This clearly demonstrates that the website at the Disputed Domain Name contains links to several third party websites not associated with the Complainant including sites which compete with or offer goods similar to those offered by the Complainant.
As noted earlier, the Respondent has not offered any explanation or response to the Complaint and accordingly the Panel infers that the Respondent registered, and is using the disputed Domain Name in order to capitalise, for commercial gain, on the reputation of the Complainant.
Accordingly for the reasons listed above, the Panel finds that the Complaint fulfills the requirements of paragraph 4(a)(iii) of the policy.
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 <pny.org> be transferred to the Complainant.
Alistair Payne Sole Panelist
Date: June 6, 2008
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