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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

PNY Technologies Inc. v. Caribbean Online International Ltd.

Case No. D2008-0544

 

1. The Parties

The Complainant is PNY Technologies Inc., Parsippany, New Jersey, United States of America, represented by McCarter & English, LLP, United States of America.

The Respondent is Caribbean Online International Ltd., Nassau, Bahamas.

 

2. The Domain Name and Registrar

The disputed domain name <pnyelectronics.com> is registered with DomainDoorman, 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 DomainDoorman, LLC a request for registrar verification in connection with the domain name at issue. On April 10, 2008, DomainDoorman, LLC 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 April 17, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was May 7, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 19, 2008.

The Center appointed Gabriel F. Leonardos 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

Complainant is a manufacturer and seller of computer products, including computer workstation graphic boards and computer graphic cards used in connection with computer games under a variety of trademarks, including PNY, PNY TECHNOLOGIES and PNY TECHNOLOGIES VERTO. Complainant also owns the web site hosted at <pny.com> devoted to the sale of its products.

Complainant uses the PNY-trademarks since 1985 and has presented evidence of owning before the United States Patent & Trademark Office - USPTO several registrations for the trademarks PNY TECHNOLOGIES (Reg. Nos. 2,428,341, filed on Jan. 7, 2000; Reg. No. 2,904,761, filed on April 28, 2003) and PNY TECHNOLOGIES VERTO (Reg. Nos. 2,664,432, filed on June 7, 2001; 2,899,726, filed on August 8, 2003) and one application for trademark PNY (Appl. No. 77,217,696, filed on June 28, 2007).

Complainant is not affiliated with Respondent and has never licensed or otherwise allowed Respondent to use the term PNY. Furthermore, Complainant never authorized Respondent to apply for and use the disputed domain name.

The disputed domain name was created by Respondent on April 22, 2007. A printout of the web page hosted under the disputed domain shows a pay-per-click (PPC) page with several links to other sites advertising computer-related products.

 

5. Parties’ Contentions

A. Complainant

Complainant argues that the disputed domain name wholly incorporates the PNY trademark adding only the generic term “electronics” and, as the domain is confusingly similar to Complainant’s trademark.

Complainant holds that Respondent has no rights or legitimate interests with respect to the disputed domain as Respondent does not make a bona fide offer of goods or services and has never been known as PNYELECTRONICS, nor is making a legitimate non-commercial or fair use of the disputed domain without intent to misleadingly divert consumers for commercial gain. Complainant argues that, on the contrary, Respondent has consistently attempted to profit from its unauthorized registration and use of the disputed domain.

Complainant finally holds that Respondent registered and uses the disputed domain in bad faith as Respondent’s PPC web page links to web sites that sell products of Complainant’s competitors, and, as such, Respondent seeks to siphon business away from Complainant. Furthermore, given the strength of Complainant’s PNY-trademarks, Complainant argues that use of the disputed domain falsely suggests to Internet users that Complainant is affiliated with Respondent’s web site.

As remedy, Complainant asks that the domain name <pnyelectronics.com> be transferred in its favor.

B. Respondent

The Respondent did not reply to Complainant’s contentions.

 

6. Discussion and Findings

According to Paragraph 4(a) of the Policy the Complainant must prove each of the following:

(i) that the domain name registered by the Respondent is identical or confusingly similar to the trademarks or service marks in which the Complainant has rights; and

(ii) that the Respondent has no rights or no legitimate interests in respect of the domain name; and

(iii) that the domain name has been registered and is used in bad faith.

A. Identical or Confusingly Similar

According to the Complainant owns several registrations for trademark PNY TECHNOLOGIES and PNY TECHNOLOGIES VERTO that are much earlier than Respondent’s creation of the disputed domain name. Although Complainant has informed that it has an application for PNY filed on June 28, 2007, such date is later than the creation of the disputed domain name (created on April 22, 2007) and, thus, such application will not be considered as a basis for the complaint. The Panel notes that the Complainant has inter alia apparently made some use of PNY trademark on its <pny.com> website, and does not exclude the possibility of the Complainant having already acquired common law rights in the PNY mark. However for the reasons set out below it is unnecessary for the Panel to consider the issue further here.

The disputed domain name is <pnyelectronics.com>. The word “electronics” has a meaning closely related to “technologies” and, as such, the Panel finds that there is a clear risk of confusion between trademark PNY TECHNOLOGIES and the use of the expression “pnyelectronics” as a domain name.

The Panel sees no such confusion of the disputed domain with Complainant’s trademark PNY TECHNOLOGIES VERTO because of the inclusion of the term VERTO. In fact, it does not seem likely that there would be confusion between PNY TECHNOLOGIES VERTO and PNYELECTRONICS.

For the above reasons, the Panel finds that the domain name <pnyelectronics.com> is confusingly similar to Complainant’s registered trademark PNY TECHNOLOGIES and, thus, the requirement of paragraph 4(a)(i) of the Policy is met.

B. Rights or Legitimate Interests

Respondent created the disputed domain on April 22, 2007, therefore, a long time after Complainant filed its first trademark application for PNY TECHNOLOGIES in 2000. Complainant’s indicates that it has not authorized or entered into any relationship with Respondent in relation to use of its PNY TECHNOLOGIES trademarks.

Complainant has shown a substantial business activity under the PNY TECHNOLOGIES trademark offering for sale several products incorporating the PNY trademark, while Respondent apparently has no other business other than posting the PPC web page parked under the URL <pnyelectronics.com>.

Complainant’s allegations remain uncontested and, in any case, there is no evidence as to independent rights or legitimate interests of Respondent in the domain name pursuant to Paragraph 4(c) under the Policy, nor could the Panel find any indication of bona fide offering of goods or services as a PPC web page on itself does not qualify as such. Furthermore, there is no evidentiary support that Respondent, as an individual, business, or other organization, has been commonly known by the domain name or that it is making a legitimate non-commercial or fair use of the domain names.

In conclusion, the Panel finds in the circumstances that Respondent has no rights or legitimate interests in respect of the disputed domain names pursuant to paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

According to Paragraph 4(a)(iii) of the Policy, Complainant must prove registration and use in bad faith. Paragraphs 4(b)(i)-(iv) of the Policy contain a non-exhaustive list of circumstances, which shall constitute evidence of registration and use of a domain name in bad faith.

It has been proven that in the website in operation under the disputed domain name Respondent hosts a PPC web page, also called as a “link farm”, i.e., Respondent displays a list of sponsored links, which in the circumstances amounts to unduly taking advantage of the good will in Complainant’s mark to attract internet users and generate revenue, presumably to Respondent’s benefit.

In this sense, there is little doubt that Respondent intended to earn profit from the likely confusion among in internet users, who may be attempting to be access Complainant’s website. In this regard, see Molmed S.p.A. v. Prof. Asif Ahmed, WIPO Case No. D2002-0177:

“Indeed, by redirecting Internet users looking for the web site of Molmed S.p.A. to its own pages, Respondent is attempting to attract them for commercial gain, while creating a likelihood of confusion with Complainant’s trademark.”

In fact, many WIPO decisions have considered that redirecting users to other sites that offer services and goods, even if unrelated to the complainant’s to gain profit from the reputation of complainant’s trademarks, may be prima facie indication of bad faith. See ATT&T Corp. v. John Zuccarini d/b/a RaveClub Berlin, WIPO Case No. D2001-1503; Society for Human Resource Management v. Local Services INC., WIPO Case No. D2004-0127.

The circumstances surrounding Respondent’s conduct are in this case indicative of registration and use of the domain names in bad faith. In any case, Respondent is seeking to trade off on Complainant’s substantial goodwill associated with Complainant’s mark and to intentionally deceive the consuming public.

Thus, the Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with Complainant’s mark.

For all the aforementioned reasons, the Panel finds that Complainant has proven Paragraph 4(a)(iii) under 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 <pnyelectronics.com> be transferred to the Complainant.


Gabriel F. Leonardos
Sole Panelist

Date: June 4, 2008

 

Источник информации: https://www.internet-law.ru/intlaw/udrp/2008/d2008-0544.html

 

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