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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

PNY Technologies Inc. v. Web Advertising Corp.

Case No. D2008-0543

1. The Parties

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

Respondent is Web Advertising Corp, of Nassau, Bahamas.

2. The Domain Name and Registrar

The disputed domain name <pnytechnoligies.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 Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amended Complaint on April 15, 2008. The Center verified that the amended 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 April 21, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was May 11, 2008. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 13, 2008.

The Center appointed Manoel J. Pereira dos Santos as the sole panelist in this matter on May 21, 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

The trademarks upon which the Complaint is based are PNY and PNY TECHNOLOGIES. According to the documentary evidence and contentions submitted, Complainant owns a number of trademark registrations for the PNY TECHNOLOGIES trademark and variations thereof in the United States of America. The PNY TECHNOLOGIES trademark and its variations were registered in the United States of America under Nos. 2,428,341 on February 13, 2001 (filed on January 7, 2000); 2,904,761 on November 23, 2004 (filed on April 28, 2003), 2,664,432 on December 17, 2002 (filed on June 7, 2001); and 2,899,726 on November 2, 2004 (filed on August 3, 2003). Complainant also has a pending application for the PNY trademark filed under Serial No. 77217696 on June 28, 2007.

According to the documentary evidence and contentions submitted, Complainant has used the PNY and PNY TECHNOLOGIES trademarks for certain computer products since at least 1985. Complainant argues that the United States Trademark Registration 2,428,341 has achieved the status of an incontestable mark under U.S. trademark law (15 U.S.C. § 1065).

According to the documentary evidence and contentions submitted, the domain name <pnytechnoligies.com> was registered with DomainDoorman, LLC on April 5, 2006. On January 3, 2008 Complainant sent Respondent a cease and desist letter demanding that Respondent tranfer to Complainant the disputed domain name. Complainant states that Complainant never received any response to that letter. Reference is made to Annex 5 to the Complaint.

5. Parties’ Contentions

A. Complainant

Complainant contends that the disputed domain name is identical or confusingly similar to Complainant’s trademarks because it incorporates the PNY and PNY TECHNOLOGIES trademarks, and the “slight difference in spelling” between “technologies” and “technoligies” plus “their phonetic identity” reinforces the confusing similarity. Complainant also argues that the addition of a gTLD suffix “.com” is without legal significance from the standpoint of comparing the disputed domain name to Complainant’s trademarks.

Complainant further contends that Respondent does not have legitimate rights or interests regarding the disputed domain name because (i) before any notice to Respondent of the disputed, Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services, (ii) Respondent has never been known either by the name “pnytechnoligies” or “www.pnytechnoligies.com”, and (iii) Respondent is not making a legitimate non-commercial or fair use of the disputed domain name without intent to misleadingly divert consumers for commercial gain or to tarnish Complainant’s marks.

Finally, Complainant contends that Respondent (i) was not licensed or otherwise allowed to use Complainant’s trademarks, (ii) has registered and used the disputed domain name for private financial gain and/or to redirect would-be purchasers of Complainant’s products to other websites potentially selling products competitive with Complainant’s products, (iii) has sought to falsely suggest to Internet users that Complainant is associated with the website to which the disputed domain name resolves, and (iv) has sought to siphon business away from Complainant.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

A. Effect of the Default

The consensus view is that the respondent’s default does not automatically result in a decision in favor of complainant and that complainant must establish each of the three elements required by paragraph 4(a) of the Policy (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, para. 2.1). However, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.

This Panel finds that there are no exceptional circumstances for the failure of Respondent to submit a Response. As a result, the Panel infers that Respondent does not deny the facts asserted and contentions made by Complainant from these facts. Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441; LCIA (London Court of International Arbitration) v. Wellsbuck Corporation, WIPO Case No. D2005-0084; Ross-Simons, Inc. v. Domain.Contac. WIPO Case No. D2003-0994. Therefore, asserted facts that are not unreasonable will be taken as true and Respondent will be subject to the inferences that flow naturally from the information provided by Complainant. Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441; RX America, LLC v. Matthew Smith, WIPO Case No. D2005-0540.

B. Identical or Confusingly Similar

The Panel concurs with the opinion of several prior WIPO UDRP panels which have held that, when a domain name wholly incorporates a complainant’s registered trademark, that may be sufficient to establish confusing similarity for purposes of the Policy. See, e.g., Telstra Corporation v. Barry Cheng Kwok Chu, WIPO Case No. D2000-0423; Pfizer Inc. v. United Pharmacy Ltd, WIPO Case No. D2001-0446; E.I. du Pont de Nemours and Company v. Richi Industry S. r. l., WIPO Case No. D2001-1206; Utensilerie Associate S. p. A. v. C & M, WIPO Case No. D2003-0159; Shaw Industries Group Inc., Columbia Insurance Company v. Wan-Fu China, Ltd., WIPO Case No. D2007-0282.

In addition, this is a clear case of “typosquatting” case where the disputed domain name is a slight variation in spelling from a registered trademark. In fact, the <pnytechnoligies.com> domain name reproduces Complainant’s PNY TECHNOLOGIES trademark with a slight difference in spelling. As a result, this is an example of confusing similarity brought about through easily made typing errors made by an Internet user: rather than typing the word “pnytechnologies” to visit Complainant’s website, an Internet user could easily type the word “pnytechnoligies” and be diverted to a different website.

The Panel takes into account previous WIPO UDRP decisions relating to the practice of “typosquatting” where such practice has consistently been regarded as creating domain names confusingly similar to the relevant mark. This is a point well-established in prior UDRP domain name cases. MasterCard International Incorporated v. DL Webb, WIPO Case No. D2008-0324; Breitling SA and Breitling USA Inc. v. Whois Privacy Protection Service, Inc. / Breitling USA, Inc., WIPO Case No. D2008-0302; ACCOR v. Brigit Klostermann, WIPO Case No. D2005-0627; Sharman License Holdings, Limited v. IcedIt.com, WIPO Case No. D2004-0713; Ross-Simons, Inc. v. Domain.Contact, WIPO Case No. D2003-0994.

Also, the similarity created by Respondent in the disputed domain name is particularly insedious because of the visual proximity and the phonetic identity between the terms “technologies” and “technoligies”. See Neuberger Berman Inc. v. Alfred Jacobsen, WIPO Case No. D2000-0323.

Finally, the addition of the suffix “.com” is non-distinctive because it is required for the registration of the domain name. RX America, LLC v. Mattew Smith, WIPO Case No. D2005-0540; Sanofi-Aventis v. US Online Pharmacies, WIPO Case No. D2006-0582.

Therefore, the Panel finds that the requirement of paragraph 4(a)(i) of the Policy is met.

C. Rights or Legitimate Interests

The Panel sees no plausible explanation for Respondent’s adoption and use of the term “pnytechnoligies” in the disputed domain name since there is no evidence that Respondent has ever been known either by the name “pnytechnoligies” or “www.pnytechnoligies.com”, or by a similar name. Therefore, the Panel concludes that Respondent intended to infringe on Complainant’s trademark rights and to take advantage of the reputation associated to the PNY TECHNOLOGIES trademark.

Complainant further contends that Respondent has not used and has made no effort to use the disputed domain name in connection with a bona fide offering of goods and services, and that Respondent has instead consistently attempted to profit from its unauthorized registration and use of the domain name at issue. The Panel concurs with the finding in other WIPO UDRP decisions that bona fide use does not exist when the intended use is a deliberate infringement of another’s rights. See Chanel, Inc. v. Cologne Zone, WIPO Case No. D2000-1809.

By defaulting, Respondent has failed to provide the Panel with any evidence of a bona fide offering of goods and services or of a legitimate noncommercial or fair use of the domain name, and Complainant’s evidence of diversion of Internet users is compelling. Accordingly, the Panel finds that the disputed domain name was selected and used by Respondent with the intent to attract for commercial gain Internet users. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847.

In short, Complainant has satisfied its burden of providing sufficient evidence to make a prima facie case showing that Respondent lacks rights to or legitimate interests in the disputed domain name, and Respondent has failed to provide the Panel with any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that Respondent has any rights or legitimate interests in the disputed domain names. Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465.

In light of the foregoing, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is met.

D. Registered and Used in Bad Faith

An independent investigation was conducted by the Panel by visiting the website at “www.pnytechnoligies.com” (access on various dates and particularly on May 21, 2008). The Panel notes that the website contains landing pages at which listings and sponsored links related to a variety of topics, products and services are provided.

This is a clear example of domain name parking, i.e., an advertising practice pursuant to which a domain name will usually resolve to a page containing advertising listings and links. The Panel concurs with the understanding of several other WIPO UDRP panels that the use of a domain name to point to a website that offers sponsored links to other websites under similar circumstances is an evidence of bad faith registration and use. Mudd, (USA) LLC v. Unasi Inc. (MUDDPRODUCTS-COM-DOM), WIPO Case No. D2005-0591; Volvo Trademark Holding AB v. Unais, Inc., WIPO Case No. D2005-0556.

Finally, it is worth noting that the mere act of “typosquatting” or registering a domain name that is a common misspelling of a mark in which a party has rights, has often been recognized as evidence of bad faith registration and use. See Paragon Gifts, Inc. v. Domain.Contact, WIPO Case No. D2004-0107; National Association of Professional Baseball Leagues, d/b/a Minor League Baseball v. Zuccarini, WIPO Case No. D2002-1011.

In light of all the conclusions and findings above, the Panel finds that the requirement of paragraph 4(a)(iii) of the Policy is met.

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 <pnytechnoligies.com> be transferred to Complainant.

Manoel J. Pereira dos Santos
Sole Panelist

Dated: June 4, 2008