WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
PC Mall, Inc. v. Nick Forell
Case No. D2004-0607
1. The Parties
1.1 The Complainant is PC Mall, Inc., Torrance, California, United�States�of�America, represented by Morrison & Foerster, LLP, United�States�of�America.
1.2 The Respondent is Nick Forell, Cleveland, Ohio, United�States�of�America.
2. The Domain Name and Registrar
2.1 The disputed domain name is registered with InnerWise, Inc. d/b/a ItsYourD.
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the�“Center”) on August�4,�2004. On August�4,�2004, the Center transmitted by e-mail to InnerWise, Inc. d/b/a ItsYourD a request for registrar verification in connection with the domain name at issue. On August�5,�2004, InnerWise, Inc. d/b/a ItsYourD transmitted by e-mail to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. 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”).
3.2 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 August�9,�2004. In accordance with the Rules, Paragraph�5(a), the due date for Response was August�29,�2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August�30,�2004.
3.3 The Center appointed Jay Simon as the sole panelist in this matter on September�2,�2004. 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.
3.4 On August�6,�2004, the Center received an e-mail communication from Respondent stating that “Website Has Been Shut Down.”
3.5 The case file was transmitted electronically to the Panel on September�2,�2004, and a hard copy was forwarded to the Panel that same day.
4. Factual Background
4.1 Since 1995 Complainant, by itself or through a wholly owned subsidiary, is involved in a variety of computer related activities including disseminating advertising for others, promoting the goods and services of others via on-line telecommunications networks, retail store services, electronic retailing services, operating an on-line information service regarding computer related products, and related activities.
4.2 Based on its commercial activities Complainant has obtained several federal trademark registrations in the United�States:
Trademark
Registration No.
Class/Goods
Registration Date
PCMALL
2,006,944
37/installation, maintenance and repair of computers
October�8,�1996
PCMALL
2,007,047
16/catalog for computer related products, mc. hardware, software peripherals...
October�8,�1996
PCMALL
2,175,765
42/telephone and mail order services for computer related products...
October�8,�1996
PCMALL
2,336,369
35/disseminating advertising for others...
March�28,�2000
PCMALL
2,660,968
35/...promoting goods and services of others via on-line...
December�17,�
2002
PCMALL
2,247,889
42/retail store services...
May�25,�1999
4.3 Complainant has national trademark registrations for its mark PC MALL in a number of other countries including Australia, the Benelux Countries, Canada, Denmark, Finland, France, Germany, Italy, Japan, Mexico, Norway, South�Africa, Spain and the United�Kingdom.
4.4 Complainant registered, in 1995, the domain names and .
4.5 Complainant has obtained federal trademark registrations for several other marks involving “MALL.”
4.6 Respondent registered the disputed domain name on July�10,�2004.
4.7 Respondent did not file a response in these proceedings and was notified of its default by the Center.
5. The Parties Contentions
A. Complainant
5.1 Complainant contends that it owns the PC MALL trademark and that the disputed domain name is virtually identical to and confusingly similar to Complainant’s mark; and that the addition of “USA” as well as the gTLD suffix “.com” are not relevant.
5.2 Complainant further contends that Respondent has no rights or legitimate interests respecting the disputed domain name because:
(a) Complainant has not authorized or licensed Respondent to use Complainant’s trademarks;
(b) Respondent is not a distributor of Complainant’s goods;
(c) Respondent has not made use of the disputed domain name in connection with a bona fide offering of goods and services; and that the goods and services offered by Respondent were similar to those offered by Complainant;
(d) Respondent is not commonly known by the disputed domain name: there is no registration of “PC MALL USA, Inc.” in Respondent’s home state of Ohio; and
(e) Respondent is not making a legitimate non-commercial or fair use of the disputed domain name because Respondent offers goods in competition with Complainant.
5.3 Complainant further contends that the disputed domain name was registered and is being used in bad faith because Respondent has intentionally used the disputed domain name to attract, for commercial gain, internet users to its website by creating confusion with Complainant’s marks.
5.4 Complainant contends that Respondent had both constructive and actual knowledge of Complainant’s trademark by virtue of the federal registration of the mark and an admission made by Respondent during a telephone call between Complainant’s counsel and Respondent; and that it is sufficient for a finding of bad faith registration and use that a respondent registers a domain name with knowledge of a complainant’s mark and business and offers goods similar to that offered by the complainant.
5.5 Complainant requests that the disputed domain name be transferred to Complainant.
B. Respondent
5.6 Respondent has failed to respond to the Complaint and is in default in these proceedings.
6. Discussion and Findings
6.1 The Policy as effected by the Rules and the Supplemental Rules, provides specified remedies to trademark owners against registrants of domain names where the owner of the mark (Complainant) proves each of the following elements:
(a) that the domain name or names are identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(b) that the registrant (Respondent) has no rights or legitimate interests in respect of the domain name or names; and
(c) that the domain name or names have been registered and are being used in bad faith.
6.2 Complainant has the burden of proof, by a preponderance of the evidence, respecting each element noted above in Paragraph�6.1.
6.3 Respondent, having failed to respond in these proceedings, is in default, and in accordance with Paragraph�14(b) of the Rules, “the panel shall draw such inferences...as it considers appropriate.”
A. Identical or Confusingly Similar (Paragraph�4(a)(i) of the Policy)
6.4 Complainant has several federal registrations for the mark PCMALL. The disputed domain name incorporates the entirety of the registered mark and adds the geographic descriptor “USA” and, of course, the gTLD suffix “.com.” Neither of these additions sufficiently distinguish the disputed domain name from Complainant’s registered marks. See Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028 (regarding the geographic term) and Pomellato S.p.A. v. Richard Tonetti, WIPO Case No. D2000-0493 (regarding the gTLD suffix). Neither does the presence or absence of a space between PC and Mall distinguish the disputed domain name from the registered mark. This Panel is also aware of the holding in EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047, to the effect that, as in these proceedings, “a domain name incorporates, in its entirety, a distinctive mark, that creates sufficient similarity between the mark and the domain name to render it confusingly similar.”
6.5 By virtue of its federal registration, the mark PCMALL is distinctive, regardless of the fact that the word “mall” may be descriptive. The affidavit of incontestability filed by Complainant regarding this mark further supports its distinctiveness.
6.6 This Panel finds that the disputed domain name is confusingly similar to the mark PCMALL in which Complainant has rights. Because of the finding of confusing similarity respecting Complainant’s mark PCMALL there is no need to determine whether the disputed domain name is confusingly similar to Complainant’s other marks in which the term “MALL” occurs.
B. Lack of Rights or Legitimate Interests (Paragraph�4(a)(ii) of the Policy)
6.7 Paragraph�4(c) of the Policy lists three, non-exclusive methods for determining whether a respondent has rights to or legitimate interests in a disputed domain name.
6.8 In respect of demonstrating Respondent’s lack of rights or legitimate interests in a disputed domain name, the burden of proof rests with Complainant. However, the Complainant having made the necessary assertions, e.g., that Respondent is neither authorized nor licensed by Complainant to use the disputed domain name, Respondent is not a distributor of Complainant’s goods, and no other evidence indicative of a right or legitimate interest of Respondent is known or apparent, it is incumbent upon Respondent to come forward with evidence of its rights to the disputed domain name - Respondent being uniquely possessed of this evidence, if it exists. Respondent has failed to present any evidence, and such failure is tantamount to admitting the truth of Complainant’s assertions. See Do the Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624.
6.9 This Panel has no evidence demonstrating that Respondent was commonly known by the disputed domain name. Indeed, Complainant has asserted use of the registered marks since 1995, and federal registrations in 1996, 1999, 2000, and�2002, all of which pre-date Respondent’s registration of the disputed domain name in July�2004. (Complainant also registered two domain names and in 1995.)
6.10 It is clear from the Complaint that Respondent’s use of the disputed domain name is a commercial use and such use does not amount to fair use by Respondent. See Exhibit Q of the Complaint (a printout of the website for the disputed domain name) showing that computer related items are offered for sale.
6.11 Even though Respondent’s use of the disputed domain name pre-dates this proceeding, that use cannot be viewed as a bona fide use. Respondent’s use of the disputed domain name, a name that is confusingly similar to a mark in which Complainant has rights, to offer products similar to those offered by Complainant, appears to this Panelist to be inherently illegitimate because Respondent seeks to trade off the goodwill established by Complainant. And Respondent’s activity was with constructive knowledge and presumptively actual knowledge of Complainant and its activities (the presumption not having been re-butted). See Pitney Bowes v. Mike Ostanik, WIPO Case No. D2000-1611.
6.12 In view of Complainant’s allegations and evidence and the failure of Respondent to rebut the allegations or come forward with its own evidence, this Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
C. Registration and Use in Bad Faith (Paragraph�4(a)(iii) of the Policy)
6.13 Paragraph�4(b) of the Policy indicates several non-exclusive methods for showing bad faith registration and use of a domain name. Paragraph�4(b)(iv) of the Policy states:
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website..., by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website... or of a product on your website...
6.14 The evidence presented by Complainant, and not re-butted by Respondent, is adequate to show that Respondent intentionally registered and used a confusingly similar domain name for the purpose of attracting Internet users to Respondent’s website and commercially offering products similar to and competitive with products offered by Complainant. Clearly, Respondent intended to create a likelihood of confusion regarding the source, etc. of Respondent’s website.
6.15 The fact that Respondent, when it registered the disputed domain name, had constructive notice of marks in which Complainant has exclusive rights, and may well have had actual knowledge of those marks, makes Complainant’s case all the more convincing. See Kangwon Land, Inc. v. Bong Woo Chun (K.W.L. Inc.), WIPO Case No. D2003-0320; Lucasfilm Ltd. and Lucas Licensing Ltd. v. Cupcake City and John Zuccarini, WIPO Case No. D2001-0700.
6.16 This Panel finds that the evidence submitted by Complainant is sufficient to establish a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the disputed domain name, and Complainant has shown the necessary elements of bad faith registration and use under Paragraph�4(b)(iv) of the Policy.
7. Decision
7.1 For the foregoing reasons, in accordance with Paragraph�4(a) of the Policy and Paragraph�15 of the Rules, this Panel orders that the domain name be transferred to Complainant.
Jay Simon
Sole Panelist
Dated: September 16, 2004
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