Complainant is Pacific Rim Capital, Inc. (the “Complainant”) of Aliso Viejo, California, United States of America, represented by Blakely, Sokoloff, Taylor & Zafman, LLP, United States of America.
Respondents are 1&1 Internet, Inc. of Chesterbrook, Pennsylvania, United States of America; Pacific Rim Capital Advisors of Beverly Hills, California, United States of America; and David A. Lara of Redlands, California, United States of America (collectively “Respondents”). 2. The Domain Name and Registrar
The Disputed Domain Name is and is registered with 1&1 Internet AG. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 22, 2010. On December 22, 2010, the Center transmitted by email to 1&1 Internet AG a request for registrar verification in connection with the Disputed Domain Name. On December 27, 2011, 1&1 Internet AG transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name, which differed from the named Respondents and contact information in the Complaint. The Center sent an email communication to Complainant on December 29, 2011, providing the registrant and contact information disclosed by the 1&1 Internet AG, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on December 29, 2011. The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 Respondents of the Complaint, and the proceedings commenced on January 4, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was January 24, 2011. On January 13, 2011, an individual stating he was “David Lara” contacted the Center stating that he had erroneously received notice of the Complaint, that he did not own the Disputed Domain Name; and requesting that the Center remove him from all future correspondence. Respondents did not submit a formal response.
The Center appointed Richard W. Page, Carol Anne Been and G. Gervaise Davis III as panelists in this matter on March 25, 2011 (the “Panel”). The Panel finds that it was properly constituted. Each member of 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 well-know provider of financial services, including retail store services and wholesale distributorships featuring value added computer network components, lease purchase financing services, and for leasing of building machinery in construction. Complaint has been using the “Pacific Rim Capital” name as a trademark (the “PACIFIC RIM CAPITAL Mark”) in connection with its services since at least as early as 1990; and is the owner of all right, title and interest in and to the PACIFIC RIM CAPITAL Mark. Complaint is the owner of United States Trademark Registration No. 2,452,864 and of United States Trademark Registration No. 2,452,865 for and incorporating PACIFIC RIM CAPITAL.
Complainant operates a website promoting its financial services at “.” Complainant has spent significant resources in promoting its services under the PACIFIC RIM CAPITAL Mark. 5. Parties’ Contentions A. Complainant
Complainant alleges that by virtue of Complainant’s extensive use, advertising and promotion, the PACIFIC RIM CAPITAL Mark has become well-known and uniquely associated with Complainant and Complainant’s financial services in the mind of consumers and in the trade.
Complainant alleges that the Disputed Domain Name and the website to which the Disputed Domain Name resolves are confusingly similar to the PACIFIC RIM CAPITAL Mark because the Disputed Domain Name includes the entirety of the PACIFIC RIM CAPITAL Mark with the exception of the hyphen, which Respondents have added.
Complainant alleges that Respondents have no rights or legitimate interests in the Disputed Domain Name because Respondents are not commonly known by the Disputed Domain Name and have acquired no trademark or service mark rights in the Disputed Domain Name. Complainant further alleges that Respondents are not making a legitimate noncommercial or fair use of the Dispute Domain Name because Respondents are using the Disputed Domain Name as an unfair method to divert consumers looking for Complainant’s services to Respondents’ website.
Complainant alleges that Respondents have registered and are using the Disputed Domain Name in bad faith to mislead Internet users who are looking for Complainant’s PACIFIC RIM CAPTIAL services, where Respondents offer a similar product under the name Pacific Rim Capital Advisors. Complainant further alleges that Respondents’ activities are likely to result in consumer confusion and possible lost sales to Complainant. Clients and prospective clients are likely to be deceived into entering Respondents’ website believing that they are dealing with Complainant or believing that it is affiliated or endorsed by Complainant.
Respondents’ description of services offered on its website as “financing directly or through financial intermediaries such as sovereign governments, corporate organizations, institutional investors, family offices as well a wealthy individuals” are financial services similar to those provided by Complainant. B. Respondents
Respondents did not formally reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable.”
A respondent is not obliged to participate in a domain name dispute proceeding, but if it were to fail to do so, asserted facts that are not unreasonable would be taken as true and the respondent would be subject to the inferences that flow naturally from the information provided by the complainant: Reuters Limited v. Global Net 2000, Inc.,WIPO Case No. D2000-0441. See also Hewlett-Packard Company v. Full System, NAF Claim No. FA0094637; David G. Cook v. This Domain is For Sale, NAF Claim No. FA0094957; and Gorstew Jamaica and Unique Vacations, Inc. v. Travel Concierge, NAF Claim No. FA0094925.
Even though Respondents have failed to file a formal Response or to contest Complainant’s assertions, the Panel will review the evidence proffered by Complainant to verify that the essential elements of the claims are met.
Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:
i) that the Disputed Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and,
ii) that Respondents have no legitimate interests in respect of the Disputed Domain Name; and,
iii) that the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Complainant alleges that it has registered trademarks for the PACIFIC RIM CAPITAL Mark. Prior UDRP panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent s have the burden of refuting this assumption. See, e.g., EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,WIPO Case No. D2000-0047.
In addition, Complainant alleges that the Disputed Domain Name and the website to which the Disputed Domain Name resolves are confusingly similar to the PACIFIC RIM CAPITAL Mark, because the only addition in the Disputed Domain Name is the addition of a hyphen.
As numerous courts and prior UDRP panels have recognized, the incorporation of a trademark in its entirety is generally sufficient to establish that a domain name is identical or confusingly similar to the complainant’s registered mark. See Paccar Inc. v. Telescan Technologies, L.L.C., 115 F. Supp. 2d 772 (E.D. Mich. 2000) (finding that , inter alia are not appreciably different from the trademarks PETERBUILT and KENWORTH); Quixar Investments Inc. v. Dennis Hoffman,WIPO Case No. D2000-0253 (finding that QUIXTAR and are legally identical). The addition of other generic or descriptive terms in the domain name does not generally affect a finding that the domain name is identical or confusingly similar to the complainant’s registered trademark.
The Panel notes that the entirety of the PACIFIC RIM CAPITAL Mark is included in the Disputed Domain Name. The Panel further finds that the addition of a hyphen is not distinctive.
Respondents have not contested these allegations.
Therefore, the Panel finds that the Disputed Domain Name is confusingly similar to the PACIFIC RIM CAPITAL Mark pursuant to the Policy paragraph 4(a)(i). B. Rights or Legitimate Interests
Complainant contends that Respondents have no rights or legitimate interests in the Disputed Domain Name pursuant to the Policy paragraph 4(a)(ii).
Paragraph 4(a)(ii) of the Policy requires Complainant to prove that Respondents have no rights to or legitimate interests in the Disputed Domain Name. Once a complainant comes forward with a prima facie showing that no circumstances establishing rights or legitimate interests applies, the burden of production on this factor shifts to the respondent to rebut the showing. The burden of proof, however, remains with complainant to prove each of the three elements of paragraph 4(a) of the Policy. See Document Technologies, Inc. v. International Electronic Communications, Inc., Case No. D2000-0270.
The Policy, paragraph 4(c), provides three nonexclusive examples of a respondent’s having rights or legitimate interests in a disputed domain name:
(i) before any notice to you 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 (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 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.
The Complainant, the Panel finds, has sustained its burden of coming forward with allegations that the Respondents do not qualify for any of these three nonexclusive criteria and, therefore, lack rights to or legitimate interests in the Disputed Domain Name.
Respondents have not contested these allegations.
Therefore, in the absence of any formal Response, the Panel finds that Respondents have no rights or legitimate interest in the Disputed Domain Name pursuant to the Policy paragraph 4(a)(ii). C. Registered and Used in Bad Faith
Complainant contends that Respondents registered and are using the Disputed Domain Name in bad faith in violation of the Policy, paragraph 4(a)(iii). Policy, paragraph 4(b), sets forth four nonexclusive criteria for a complainant to show bad faith registration and use of domain names by a respondent:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your website or location.
Complainant alleges that Respondents have registered and are using the Disputed Domain Name in bad faith to mislead Internet users who are looking for Complainant’s PACIFIC RIM CAPTIAL services, where Respondents offer a similar product under the name “Pacific Rim Capital Advisors”. Complainant further alleges that Respondents’ activities are likely to result in consumer confusion and lost sales; clients and prospective clients are likely to be deceived into entering Respondents’ website believing that they are dealing with Complainant or believing that it is affiliated or endorsed by Complainant.
Respondents have not contested these allegations.
In the absence of any formal Response, the Panel finds that this evidence is sufficient to establish the necessary of bad faith registration and use under the Policy paragraph 4(b)(iv) of the Policy and to establish a violation 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 Disputed Domain Name be transferred to the Complainant.
Richard W. Page
Presiding Panelist
Carol Anne Been
Panelist
G. Gervaise Davis III
Panelist
Dated: April 1, 2011
Full & Egal Universal Law Academy