Pension Benefit Guaranty Corporation v. John Smith, Whois Protection Service, LLC
Case No. D2008-1370
1. The Parties
The Complainant is Pension Benefit Guaranty Corporation, Washington, United States of America, represented internally.
The Respondent is John Smith, Whois Protection Service, LLC, Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <pbgc.org> (“the Disputed Domain Name”) registered with CSL Computer Service Langenbach GmbH dba Joker.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 8, 2008. On September 9, 2008, the Center transmitted by email to CSL Computer Service Langenbach GmbH dba Joker.com a request for registrar verification in connection with the Disputed Domain Name. On September 15, 2008, CSL Computer Service Langenbach GmbH dba Joker.com 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”), 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 September 19, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was October 9, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 10, 2008
The Center appointed Alistair Payne as the sole panelist in this matter on October 16, 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 the Pension Benefit Guaranty Corporation (“PBGC”), a United States Government executive branch agency created under Title IV of the Employee Retirement Income Security Act. Since its inception in 1974, the Complainant has operated to guarantee defined benefit schemes for retirees of insolvent companies with under-funded pension plans. The Complainant currently maintains an official website located at “www.pbgc.gov”.
The Respondents are John Smith and Whois Protection Service LLC (“the Respondent”). The Respondent acquired the domain name <pbgc.org> on April 16, 1997.
5. Parties' Contentions
A. Complainant
The Complainant considers the Disputed Domain Name <pbgc.org> to be identical in all material aspects to the “PBGC” name in which the Complainant contends it has common law trade mark rights. The Complainant supports its claim to common law trade mark protection, asserting that it has amassed significant goodwill through use of the “PBGC” name since 1975 and the exclusive association of the mark PBGC with the Complainant.
The Complainant believes the Respondent has no rights or legitimate interests in respect of the disputed domain name and has registered the Disputed Domain Name <pbgc.org> for the purposes of attracting, for commercial gain, Internet users to the Respondents website.
The Complainant asserts that it has accrued substantial reputation in the mark PBGC and by providing links via the disputed domain name, the Respondent is taking advantage of the Complainant's reputation for personal benefit.
Finally the Complainant argues that the Respondent has a history of registering domain namesin bad faith.
B. Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
The Respondent has not filed a Response to the Complaint. Pursuant to paragraph 14(a) of the Rules, the Panel will proceed to 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 trade mark 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.
A. Identical or Confusingly Similar
In this case, the Complainant does not rely on any registered trade mark. It claims that it has common law trade mark rights, derived from its use of the name “PBGC” since 1975. There is no doubt that unregistered trade marks or service mark rights may qualify as “rights” in a trade mark or service mark, for the purposes of paragraph 4(a)(i) of the Policy. To establish such common law rights a complainant must show that the claimed mark has acquired a “secondary meaning”, as an indicator of an association with the complainant or a business operated by the complainant (see, for example, Universal City Studios Inc. v. David Burns and Adam-12.com DC,
WIPO Case No. D2001-0784, followed in Maritime-Ontario Freight Lines Limited v. Magic Domain,
WIPO Case No. D2007-0202, and in ProCPR, LLC v. Name Administration Inc. (BVI),
WIPO Case No. D2007-0823).
“A complainant must show that, through long association of the claimed mark with its business, the mark and the business have become synonymous in the minds of the public, submerging any primary meaning of the claimed mark in favour of its meaning as a word identifying the complainant's business.”
The Complainant has provided evidence that it has been identifying itself with the PBGC mark since 1974 when it was created by the Employee Retirement Income Security Act. It is clear from the annual reports provided that the PBGC mark has been used by the Complainant since 1975. Additionally, the mark has appeared in other written materials published by the Complainant and has been referred to in a number of journal articles. The latest annual report of PBGC available on the website states that PBGC covers pensions of approximately 44 million workers which demonstrates awareness of its name and services within the United States of America. Further the Panel notes that the Complainant is the most popular result on a google search for “PBGC”.
In light of the above, the Panel is satisfied that the identifier “PBGC” has achieved sufficient secondary meaning in association with the Complainant and the Complainant's services to establish common law trade mark rights for the purposes of the Policy. The Panel notes that even if secondary meaning has been acquired only in a limited geographical area, the Complainant would nevertheless be able to establish sufficient common law trade mark rights within the meaning of Paragraph 1(a)(i) of the Policy. The Policy makes no distinction between localized and widespread trade mark rights, and there is no requirement that a Complainant own a famous mark to invoke the protections of the Policy; Australian Trade Commission v. Matthew Reader WIPO Case No. D2002-0786.
The Disputed Domain Name differs from the common law trade mark PBGC only by the addition of the generic top level domain “.org”. In Belo Corp v. George Latimer,WIPO Case No. D2002-0329 the panel held that;
“it is well established that the generic top level domain, in this case “.com” must be excluded from consideration as being a generic or functional component of the Domain Name”
Therefore, in the Panel's view, the Disputed Domain Name is identical to the Complainant's mark for the purposes of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
It is the Complainant's burden to prove that the Respondent lacks rights or legitimate interests. Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270. As it is difficult to produce evidence to support a negative statement, the threshold for the Complainant to prove a lack of legitimate interest is low. Once a prima facie case is shown the burden of proof then shifts to the Respondent who must demonstrate its rights or legitimate interests to the Panel.
It is generally regarded as sufficient prima facie proof, for a complainant to show that
“the disputed domain name is identical or confusingly similar to its mark, that the respondent is not commonly known by the disputed domain name, and that the complainant has not authorized the respondent to use its mark (or an expression which is confusingly similar to its mark), whether in the disputed domain name or otherwise.” Roust Trading Limited v AMG LLC, WIPO Case No. D2007-1857.
The Respondent has provided no evidence that it has any rights or legitimate interests in the Disputed Domain Name. In this case, the Panel has found that the Disputed Domain Name is identical to the mark in which the Complainant has rights. There is no suggestion of the Respondent, or any business or organization operated by the Respondent, being commonly known by the Disputed Domain Name and the Respondent is not affiliated with the Complainant and has never been authorized by the Complainant to use the Complainant's trade mark or any trade mark confusingly similar thereto.
The Disputed Domain Name is currently being used by the Respondent for a website featuring pay-per-click advertising. As stated in F. Hoffmann-La Roche AG v. Brave,
WIPO Case No. D2006-1603;
“There are numerous prior decisions under the Policy holding that the unauthorized appropriation of another's trade mark in one's domain name and the commercial use of the corresponding website do not confer rights or legitimate interests upon the owner of such a domain name”.
Finally, previous panels have recognized that the mere registration of a domain name does not of itself give rise to rights or legitimate interests in that domain name for the purpose of paragraph 4(a)(ii) of the Policy. See e.g.Educational Testing Service v. TOEFL,
WIPO Case No. D2000-0044 and Pharmacia & Upjohn Company v. Peoples Revolutionary Suicide Jazz Band,
WIPO Case No. D2000-0816.
In the Panel's opinion the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name which the Respondent, by his failure to respond to the Complaint has failed to rebut in any way.
Therefore, the Complainant has, in the Panel's view satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
It appears to the Panel extremely unlikely that the Respondent could not have been aware of the Complainant's mark when it registered the Disputed Domain Name. In any event, paragraph 4(b)(iv) of the Policy provides a non-exhaustive list of circumstances that, if found, are indicative of bad faith, including the following:
“by using the domain name, you [“Respondent”] 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 web site or location or of a product or service on your web site or location”
In the Panel's opinion, the Respondent is using the reputation of the Complainant's mark to profit from the obvious association with the Disputed Domain Name by attracting internet users to the Respondent's website in order to generate hits on sponsored links at <pbgc.org>. The Complainant has therefore satisfied the requirements of paragraph 4(b)(iv) of the Policy.
Finally, the fact that the Respondent has been the respondent in four other domain name dispute procedures and in all such cases the disputed domain names have been transferred to the relevant complainant is further evidence of use in bad faith.
For the reasons stated above, the Panel is satisfied that the Disputed Domain Name was registered and used in bad faith. As such, paragraph 4(a)(iii) of the Policy is satisfied.
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 <pbgc.org> be transferred to the Complainant.
Alistair Payne Sole Panelist
Dated: October 30, 2008
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