DECISION

PC Connection, Inc. v. [domain name holder]

Claim Number:  FA0305000158429

PARTIES

Complainant is PC Connection, Inc., Merrimack, NH (“Complainant”).  Respondent is [domain name holder] (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <pcconection.com>, registered with Tucows, Inc.

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on May 21, 2003; the Forum received a hard copy of the Complaint on May 27, 2003.

On May 22, 2003, Tucows, Inc. confirmed by e-mail to the Forum that the domain name <pcconection.com> is registered with Tucows, Inc. and that Respondent is the current registrant of the name. Tucows, Inc., verified that Respondent is bound by the Tucows, Inc., registration agreement and thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

On June 12, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 2, 2003, by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@ pcconection.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On July 11, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. The domain name registered by Respondent, <pcconection.com>, is confusingly similar to Complainant’s family of marks.

2. Respondent does not have any rights or legitimate interests in the <pcconection.com> domain name.

3. Respondent registered and used the <pcconection.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, PC Connection, Inc., is the holder of numerous registrations around the world for its PC CONNECTION family of marks.   The PC CONNECTION family of marks held by Complainant that are registered on the Principal Register include United States Patent and Trademark Office Registration Nos. 1,268,322, registered on February 21, 1984 and 1,721,844, registered on October 6, 1992, for PC CONNECTION.  Complainant also holds a registration on the Principal Register for PC CONNECTION.COM, which is United States Patent and Trademark Office Registration No. 2,437,186, registered March 20, 2001. 

Complainant has used its PC CONNECTION family of marks continuously since 1982 to promote the sale of computers, software and peripherals.  Since 1996, Complainant has marketed and sold these products through its website located at the <pcconnection.com> domain name. 

Respondent registered the <pcconection.com> domain name November 13, 2001.  Respondent is using the disputed domain name to sell computers, software, and peripherals. 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "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."

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

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

(3) the domain name has been registered and is being used in bad faith.

Identical to and/or Confusingly Similar

Complainant established in this proceeding that it has rights in the PC CONNECTION family of marks through registration of its mark on the Principal Register at the United States Patent and Trademark Office, and by continuous use in commerce since 1982.  See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning”); see also Fishtech v. Rossiter, FA 92976 (Nat. Arb. Forum Mar. 10, 2000) (finding Complainant has common law rights in the mark FISHTECH it has used since 1982).

The domain name registered by Respondent, <pcconection.com>, is confusingly similar to Complainant’s PC CONNECTION family of marks.  Respondent merely misspelled Complainant’s mark by omitting a single letter “n” in the middle of the word CONNECTION.  Such a difference is insufficient to create a domain name that is distinct from Complainant’s family of marks under Policy ¶ 4(a)(i).  See Compaq Info. Techs. Group, L.P. v. Seocho , FA 103879 (Nat. Arb. Forum Feb. 25, 2002) (finding that the domain name <compq.com> is confusingly similar to Complainant’s COMPAQ mark because the omission of the letter “a” in the domain name does not significantly change the overall impression of the mark); see also State Farm Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730 (Nat. Arb. Forum June 15, 2000) (finding that the domain name <statfarm.com> is confusingly similar to Complainant’s STATE FARM mark). 

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been established.  

Rights to or Legitimate Interests

Complainant has established in this proceeding that it has rights to and legitimate interests in the mark.  Respondent did not submit a Response.  In the absence of a Response, the Panel may accept all reasonable allegations submitted by Complainant as true.  Furthermore, the Panel views Respondent’s failure to respond to the Complaint as an indication that Respondent lacks rights and legitimate interests in the disputed domain name.  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where Complainant asserted that Respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent.”); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”); see also BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any rights or legitimate interests in the domain name.”).

No evidence before the Panel suggests that Respondent is commonly known by the <pcconection.com> domain name. The WHOIS contact information does not indicate that Respondent is commonly known by the disputed domain name.  Thus, the Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name, pursuant to Policy ¶ 4(c)(ii).  See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (i RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (Interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").

Respondent is using the <pcconection.com> domain name to attract Internet users who misspell Complainant’s mark to Respondent’s competing website.  Respondent is selling computers, software, and peripherals at the website associated with the disputed domain name.  Thus, the Panel finds that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not making a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii).  See Encyclopaedia Britannica, Inc. v. Zuccarini, D2000-0330 (WIPO June 7, 2000) (finding that fair use does not apply where the domain names are misspellings of Complainant's mark); see also Computerized Sec. Sys., Inc. d/b/a SAFLOK v. Bennie Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (holding that Respondent’s appropriation of Complainant’s mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services); see also Chip Merch., Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that the disputed domain names were confusingly similar to Complainant’s mark and that Respondent’s use of the domain names to sell competing goods was illegitimate and not a bona fide offering of goods).

Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been established. 

Registration and Use in Bad Faith

Respondent is engaged in typosquatting.  Respondent is diverting Internet users who misspell Complainant’s mark to a website sponsored by Respondent for Respondent’s commercial gain.  Typosquatting is recognized as bad faith use of a domain name under Policy ¶ 4(b)(iv).  See Nat’l Ass’n of  Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting is the intentional misspelling of words with intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors.  Typosquatting is inherently parasitic and of itself evidence of bad faith”); see also Kmart v. Kahn, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its diversionary use of Complainant's mark when the domain name resolves to commercial websites and Respondent fails to contest the Complaint, it may be concluded that Respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).

Respondent is intentionally attempting to attract for commercial gain Internet users who are familiar with Complainant’s services but who inadvertently misspell Complainant’s mark.  Respondent creates a likelihood of confusion as to the sponsorship of Respondent’s website when Internet users have either accidentally typed the PC CONNECTION mark incorrectly or have mistaken Respondent’s website for that of Complainant.  Thus, the Panel finds that Respondent registered and used the disputed domain name in bad faith, pursuant to Policy ¶ 4(b)(iv).  See Computerized Sec. Sys., Inc. d/b/a SAFLOK v. Bennie Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that Respondent’s use of the <saflock.com> domain name to offer goods competing with Complainant’s illustrates Respondent’s bad faith registration and use of the domain name pursuant to Policy 4(b)(iv)); see also Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (finding that Respondent acted in bad faith by registering the <fossilwatch.com> domain name and using it to sell various watch brands where Respondent was not authorized to sell Complainant’s goods); see also Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 WIPO Apr. 22, 2000) (finding bad faith where Respondent attempted to attract customers to its website, <efitnesswholesale.com>, and created confusion by offering similar products for sale as Complainant).

Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been established. 

DECISION

Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <pcconection.com> domain name be TRANSFERRED from Respondent to Complainant.

Hon. Carolyn Marks Johnson, Panelist

Dated: July 25, 2003.

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