Complainants are Allianz Global Investors of America, L.P., and Pacific Investment Management Company (PIMCO) of Newport Beach, California, United States of America, represented by Latham & Watkins LLP, United States of America.
Respondent is Bingo-Bongo, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with B, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 6, 2011. On May 6, 2011, the Center transmitted by email to B, Inc. a request for registrar verification in connection with the disputed domain name. On May 10, 2011, B, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center sent an email communication to Complainant on May 12, 2011 indicating that Complainant, in its Complaint, failed to specify an appropriate mutual jurisdiction as required by the UDRP and invited Complainant to submit an amended Complaint on or before May 17, 2011. On May 15, 2011, Complainant filed an amended Complaint that remedied the deficiency identified above.
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 Respondent of the Complaint, and the proceedings commenced on May 17, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was June 6, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 7, 2011.
The Center appointed Andrew Mansfield as the sole panelist in this matter on June 23, 2011. 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 Allianz Global Investors of America, L.P. is the United States division of Allianz Global Investors, a global financial services company that Complainant describes as a network of investment managers that provides investment services around the world. PIMCO is a subsidiary of Allianz Global Investors. PIMCO was founded in 1971 and was acquired by Allianz Global Investors in 2000.
Allianz Global Investors of America, L.P. and PIMCO shall hereafter be referred to as “Complainants.”
Complainant PIMCO and Allianz Global Investors own trademark registrations for the PIMCO mark throughout the world, including the following: PIMCO, United States Registered Trademark No. 1,459,510 (September 29, 1987). Since 1987, Complainants have obtained various other United States Registered Trademarks that include the word “Pimco.” Complainants also own trademark rights to PIMCO in numerous other countries and regions, including Argentina, Bahrain, Belize, Benelux, Brazil, Cayman Islands Overseas Territory of the United Kingdom of Great Britain and Northern Ireland, Chile, Colombia, Costa Rica, Ecuador, Finland, France, Honduras, India, Indonesia, Ireland, Jordan, Republic of Korea, Kuwait, Lebanon, Malaysia, Mexico, Monaco, New Zealand, Nicaragua, Norway, Panama, Peru, Philippines, Portugal, Russian Federation, Saudi Arabia, Singapore, South Africa, Spain, Switzerland, Taiwan Province of the People’s Republic of China, Thailand, Turkey, United Arab Emirates, the United Kingdom, Uruguay, Venezuela, and United States Virgin Islands Unincorporated Territory of the United States of America.
Complainant PIMCO has registered numerous domain names to promote its investment services under the PIMCO marks. Complainant PIMCO owns:
The disputed domain name was registered on April 25, 2011. 5. Parties’ Contentions A. Complainants
Complainants assert that the disputed domain name is identical or confusingly similar to a trademark or service mark in which at least one of the Complainants has rights. Complainants argue that PIMCO marks have developed a very strong reputation among consumers as being associated with a highly-respected and successful investment company. The disputed domain name consists entirely of such a PIMCO registered trademarks plus the word “investments.” The only difference between Respondent’s domain name and Complainants’ registered trademarks is the addition of a generic word (“investments”).
Respondent’s addition of “investments” does nothing to diminish the confusing similarity between the disputed domain name and Complainants’ marks. In fact, because the generic word is associated with the services provided by PIMCO, the likelihood of confusion between the disputed domain name and Complainant PIMCO’s registered United States mark PIMCO may be elevated.
Complainants further argue that Respondent has no rights or legitimate interests in the disputed domain name. Neither Respondent’s name nor its administrative and technical contact information reveals any right or legitimate interest in any variation of Complainants’ PIMCO trademarks. Complainants have never licensed or otherwise permitted Respondent to use Complainants’ PIMCO trademarks, or to register any domain name including the PIMCO marks.
Finally, Complainants argue that Respondent has registered and is using the disputed domain name in bad faith. In particular, Complainants note that Respondent’s website at “www.” uses Complainants’ colors, style, and registered marks. Respondent was clearly aware of PIMCO’s marks and, according to Complainants, is using the disputed domain name to attract confused Internet users to its website for Respondent’s financial profit. Bad faith, argue Complainants, is also demonstrated by the fact that all of the contact information for Respondent in the registrar database is fake.
For all of these reasons, Complainants request that the disputed domain name be transferred to Complainant Allianz Global Investors of America L.P. B. Respondent
Respondent did not reply to Complainants’ contentions. 6. Discussion and Findings
Complainants have the burden of proof in showing that each element within paragraph 4(a) of the Policy is present. These are as follows:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainants have rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name was registered and is being used by Respondent in bad faith.
Even when a respondent defaults, as is the case here, Complainants must establish and carry the burden of proof on each of the three elements identified above. See Brooke Bollea, a.k.a Brooke Hogan v. Robert McGowan,WIPO Case No. D2004-0383. Further, under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the Panel shall “draw such inferences therefrom as it considers appropriate.”
The Panel proceeds to each of these elements below. A. Identical or Confusingly Similar
Complainant PIMCO operates and advertises under the name PIMCO and holds numerous marks in the United States and abroad that include the word “Pimco”. PIMCO was founded and began to operate and advertise under the name PIMCO in at least 1971. PIMCO owns the trademark PIMCO in the United States. In addition to common law trademark rights, PIMCO has an extensive library of federally registered trademarks that include the word PIMCO. Finally, the mark PIMCO has obtained a great deal of recognition world-wide and is, in fact, registered in many countries other than the United States.
The disputed domain name consists entirely of Complainants’ registered trademarks that include the word “Pimco” plus the word “investments.” The only difference between Respondent’s domain name and many of Complainants’ registered trademarks is the addition of a generic word “investments” in the domain name and the generic top-level domain “.com.”
Numerous UDRP panel decisions have reiterated that “the mere addition of common terms” to a trademark “does not change the overall impression of the designations as being a domain name connected to the Complainant.” PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS,) WIPO Case No. D2003-0696; PepsiCo, Inc. v. Diabetes Home Care, Inc. and DHC Services,WIPO Case No. D2001-0174; Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409; and America Online, Inc. v. Chris Hoffman,WIPO Case No. D2001-1184. In this case, the disputed domain name consists solely of the word “investments” in addition to the mark PIMCO.
The Panel finds that Complainants have satisfied paragraph 4(a)(i) of the Policy. The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainants have rights B. Rights or Legitimate Interests
The Panel is satisfied that Complainants have made out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, Respondent carries the burden of demonstrating a right or legitimate interest in a disputed domain name. By matter of default, Respondent has failed to do so, and Complainants are deemed to have satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides the following non-exclusive examples of registration and use in bad faith. If found, any one of these elements, though non-exclusive, may be found to be evidence of the registration and use of the domain name in bad faith:
(i) Circumstances indicating that Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to 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) Respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the domain name, Respondent has intentionally attempted to attract, for commercial gain, internet users to its website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.”
Respondent’s website at the disputed domain name utilized the color scheme, logos, and trademarks of Complainants in such a way as to make it appear that the user had arrived at an official PIMCO website. The disputed domain name was used at the time of the Complaint in such a way as to create a great deal of confusion as to the source, sponsorship, affiliation, or endorsement of Respondent’s website.
The Panel finds that this confusion was created intentionally so that Respondent could commercially gain from the confusion. A respondent’s use on its website of a trademark or logo identical to the complainant’s trademark or logo is prima facie bad faith. See Australian Broadcasting Corporation v. P & C Hewitt,WIPO Case No. D2001-0457; Renault S.A.S., Automobile Dacia S.A. v. Aritz Goikoetxea Arruti,WIPO Case No. D2008-1042; and Pitcher Partners Licensing Pty Ltd v. N/A,WIPO Case No. D2008-0989.
Both the date of the disputed domain name’s registration and its immediate use as the location of a website that appeared for all practical purposes to be a PIMCO website indicates that the original registration was done in bad faith. “Pimco” is an unusual word and is unlikely to simply be selected for use in a domain name. When the Panel couples this fact with the addition of the word “investments” to the disputed domain name (describing a great deal of the services offered by Complainants), the conclusion is inevitable that Respondent selected the disputed domain name knowing that Internet users would be confused as to its relationship to Complainant PIMCO’s trademarks.
Finally, Respondent provided false information to the Registrar relating to Respondent’s location and contact information. Both the state “NA” and the zip code “56348” do not exist. Complainants indicate that emails sent to Respondent’s designated email address bounce. In this Panel’s view, such fraudulent conduct is clear evidence of bad faith registration and use. Third, as noted above, Respondent provided false WhoIs contact information. This violation of the registration agreement strengthens the inference of bad faith. See Fifth Third Bancorp v. Secure Whois Information Service,WIPO Case No. D2006-0696 (“Given the covert nature of the registration – disclosing neither the name of the service provider nor of the real party in interest – and the lack of any substantive response to the Complainant’s claims, the inference of bad faith is strengthened.”).
Complainant has provided facts that fulfill the requirements of paragraph 4(b)(iv) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant Allianz Global Investors of America L.P.
Andrew Mansfield
Sole Panelist
Dated: July 12, 2011
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