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and Mediation Center
ADMINISTRATIVE PANEL DECISION
PNY Technologies, Inc. v. Aa Cc
Case No. D2007-0814
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 Aa Cc of Brooklyn, New York, United States of America.
2. The Domain Name and Registrar
The disputed domain name <pnymemory.com> (the “Domain Name”) is registered with Go Daddy Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 4, 2007. On June 6, 2007, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On the same date, Go Daddy Software 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 June 13, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was July 3, 2007. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 4, 2007.
The Center appointed Maxim H. Waldbaum as the sole panelist in this matter on July 12, 2007. 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 following uncontested facts are summarized from the Complaint.
Since 1985, Complainant has been in the business of manufacturing and selling computer memory products under a variety of trademarks including PNY and PNY TECHNOLOGIES for computer-related products, including computer memory.
Complainant owns several trademark registrations dating from 2001 which contain PNY, one of which, PNY TECHNOLOGIES, has achieved incontestable status. Complainant owns and operates a website located at the domain name <pny.com> to promote its goods.
Respondent registered the Domain Name on August 12, 2003.
5. Parties’ Contentions
Complainant contends as follows:
The Domain Name is confusingly similar to Complainant’s PNY mark. The Domain Name incorporates Complainant’s PNY mark in its entirety and only adds the term “memory”, which is descriptive of the type of products Complainant sells.
Respondent has no rights or legitimate interests in respect of the Domain Name. There is no evidence that Respondent has used or prepared to use the Domain Name in connection with a bona fide offering of goods or services. Respondent has never been known by the Domain Name. Respondent is not making a legitimate non-commercial or fair use of the Domain Name, and has instead attempted to profit by causing consumer confusion as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Specifically, as early as September 24, 2004, Respondent has used the Domain Name to redirect users to various websites selling computer memory products in competition with Complainant. As of April 2007, the Domain Name was being redirected to “www.qksrv.net”, a pay-per-click service that directed traffic to a third-party commercial website offering competing computer memory products for sale.
Respondent has registered and used the Domain Name in bad faith. Complainant has never licensed or otherwise permitted Respondent to use Complainant’s marks. Respondent used the Domain Name for nothing other than private financial gain by redirecting would-be purchasers of Complainant’s products to websites that sold competing computer memory products.
Further, Complainant’s correspondence to Respondent via overnight mail and regular mail were returned as undeliverable, due to Respondent’s providing the Registrar with an incomplete or false address.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, Complainant must prove that:
(i) The domain name 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
The Panel finds that Complainant has established rights in the PNY trademark, by virtue of its registrations with the United States Patent and Trademark Office. The Panel further finds that the Domain Name is confusingly similar to Complainant’s mark. The Domain Name incorporates Complainant’s mark in full and adds the word “memory”, which is descriptive of products sold by Complainant. It is well established that the mere addition of a descriptive word does not reduce the degree of confusing similarity. See e.g. Aventis Pharma SA v. Valicenti,
WIPO Case No. D2005-0037; F. Hoffman-La Roche AG v. Direct Response Marketing Ltd,
WIPO Case No. D2006-1370. It is also well established that the inclusion of a gTLD in a domain name, such as “.com”, should be disregarded for the purposes of the comparison. Sierra HealthStyles LLC v. Modern Limited - Cayman Web Development,
WIPO Case No. D2006-0020.
The Panel, therefore, finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant bears the burden of proof on the “rights or legitimate interests” issue (as it does for all three elements of the Policy). Louis de Bernieres v. Old Barn Studios Limited,
WIPO Case No. D2001-0122.
Respondent, who filed no response in this proceeding, has not invoked any of the circumstances of Policy, paragraph 4(c) to suggest any “rights or legitimate interests” in respect of the Domain Name. The record does not contain any evidence that Respondent has been commonly known by the Domain Name.
Respondent has also not used the Domain Name in connection with a bona fide offering of goods or services, and Respondent’s use is neither a legitimate nor fair use. Complainant has shown that Respondent has used the Domain Name to redirect users, via a pay-per-click website, to various other websites selling computer memory products in competition with Complainant. Such commercial use does not constitute use of the Domain Name in connection with a bona fide offering of goods or services, and is not legitimate non-commercial or fair use. There are numerous prior decisions under the Policy holding that the unauthorized appropriation of another’s trademark 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. See, e.g. America Online, Inc. v. Xianfeng Fu,
WIPO Case No. D2000-1374 (“it would be unconscionable to find that a bona fide offering of services in a respondent’s operation of web-site using a domain name which is confusingly similar to the complainant’s mark and for the same business”); Microsoft Corp. v. Gioacchino Zerbo,
WIPO Case No. D2005-0644.
Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides several nonexclusive circumstances that provide evidence of bad faith registration and use of a domain name, including evidence that (i) Respondent acquired a domain name for the purpose of selling the domain name to a trademark owner for valuable consideration in excess of the Respondent’s out-of-pocket expenses; (ii) The domain name was registered to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name; (iii) the domain name was registered primarily for the purpose of disrupting the business of a competitor; and (iv) Respondent intentionally attempted to attract Internet users to the Respondent’s website for commercial gain by creating a likelihood of confusion.
The Panel finds that Respondent registered the Domain Name to intentionally attract Internet users to its websites by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Given the registrations of Complainant’s trademarks, the Panel finds that in all likelihood, Respondent registered the Domain Name with knowledge of Complainant’s PNY mark. See Nike, Inc. v. B.B. de Boer,
WIPO Case No. D2000-1397. Moreover, Respondent used the Domain Name to forward visitors to websites selling computer memory products in competition with Complainant. The Panel finds that in all likelihood, Respondent attempted to profit by causing consumer confusion as to the source, sponsorship, affiliation, or endorsement of Respondent’s website.
Further, the evidence indicates that Respondent has provided an inaccurate address to the Registrar. Respondent’s failure to provide or maintain accurate contact information is evidence of bad faith. See e.g. Spice Entertainment, Inc. v. Fleming,
WIPO Case No. D2006-0114 (“[T]hose who incorporate the marks of others in domain names must be prepared to address inferences that arise from using methods to hide their identities from complainants who seek to protect their interests in such marks”); Playboy Enters. Inter’l, Inc. v. Pitts,
WIPO Case No. D2006-0675 (“The Respondent’s failure to maintain current contact information with the Registrar also suggests an effort to avoid accountability for misusing a famous trademark, supporting the inference of bad faith”).
For these reasons, the Panel finds that the Complainant has satisfied paragraph 4(a)(iii) 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 <pnymemory.com> be transferred to Complainant.
Maxim H. Waldbaum
Dated: July 26, 2007