WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

PNY Technologies, Inc. v. Domain Buyer

Case No. D2007-1690

1. The Parties

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

Respondent is Domain Buyer, St. Johns, Antigua and Barbuda.

2. The Domain Name and Registrar

The Disputed Domain Name <pnytechnologies.com> is registered with Sssasss, Incorporated (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 16, 2007. On November 16, 2007, the Center transmitted by email to the Registrar a request for verification in connection with the Disputed Domain name. On November 16, 2007, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. 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”).

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 November 27, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was December 17, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 18, 2007.

The Center appointed Mark Ming-Jen Yang as the sole panelist in this matter on January 3, 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

Complainant used the trademark PNY TECHNOLOGIES in the United States of America since 1998, in association with the wares of “computer hardware, namely, memory module upgrades for personal computers, peripherals and workstations” (hereinafter, “PNY TECHNOLOGIES Trademark”); and obtained on February 13, 2001, under the federal laws of the United States of America, a trademark registration therefor, in association with said wares, bearing registration No. 2428341.

The Disputed Domain Name was registered by Respondent or its alter ego¹ on February 23, 2007.

5. Parties’ Contentions

A. Complainant

Complainant contends that the Disputed Domain Name is confusingly similar with the PNY TECHNOLOGIES Trademark in which it has rights, that Respondent has no rights or legitimate interests in the Disputed Domain Name, and that Respondent registered and uses the Disputed Domain Name in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

One requirement of fundamental due process is that a respondent has notice of proceedings that may substantially affect its rights. The Policy, Rules and Supplemental Rules establish procedures intended to assure that a respondent is given adequate notice of proceedings commenced against it, and a reasonable opportunity to respond (See, e.g., Rules, paragraph 2(a)).

In this case, the Panel is satisfied that the Center took all steps reasonably necessary to notify Respondent of the filing of the Complaint and initiation of these proceedings, and that the failure of Respondent to furnish a Response to the Complaint is not due to any omission by the Center. There is sufficient evidence in the case file for the Panel to conclude that the Center discharged its obligations under Rules, paragraph 2(a) (See Procedural History, supra).

In case of default, under paragraph 14(a) of the Rules, “the Panel shall proceed to a decision on the complaint”, and under paragraph 14(b) of the Rules, “the Panel shall draw such inferences [from the default] as it considers appropriate”. Furthermore, paragraph 15(a) of the Rules provides that a “Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems appropriate”. Since Respondent has not submitted any evidence, the Panel must render its decision on the basis of the uncontroverted evidence supplied by Complainant.

To succeed in accordance with paragraph 4(a) of the Policy, Complainant must meet three requirements that will be considered in turn below.

A. Identical or Confusingly Similar

Complainant contends that it has rights in the PNY TECHNOLOGIES Trademark and that the Disputed Domain Name is confusingly similar thereto.

The Panel accepts Complainant’s contentions as reasoned and as supported by its evidence. In particular, the Panel notes Complainant’s marketplace use since 1998 and its trademark registration (Section 4, Factual Background, supra); and the adoption of its PNY Technologies Trademark as the Disputed Domain Name, thereby creating identity (or at least very confusing similarity) between the two.

The Panel concludes that the first requirement of the Policy is met.

B. Rights or Legitimate Interests

Complainant contends (and the Panel accepts as uncontroverted and convincing) that Respondent has no rights or legitimate interests in the Disputed Domain Name.

Complainant notes that it has never licensed or otherwise permitted Respondent to use Complainant’s PNY TECHNOLOGIES Trademark, nor authorized Respondent to apply for and use a domain name incorporating it. Complainant further notes that before any notice to Respondent of the dispute, there is no evidence of Respondent’s use of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to Disputed Domain Name in connection with a bona fide offering of goods or services. Complainant further notes that Respondent has never been known either by the name “PNY Technologies” or the Disputed Domain Name, and that instead, all indications are that it uses and is commonly known by the names “Domain Buyer” or “John Reynolds”.

Respondent has provided no arguments or evidence of legitimate interests to counter Complainant’s contentions on this issue. By virtue of the legal rights in the PNY TECHNOLOGIES Trademark (provided by the trademark registration in the United States of America (Section 4, Factual Background, supra)), Complainant convincingly argues that Respondent has no rights or legitimate interests in the Disputed Domain Name. The Panel, especially in the absence of any response from Respondent, considers that the circumstances described in paragraph 4(c) of the Policy, of proof of rights or legitimate interests by Respondent in the Disputed Domain Name, do not exist either.

The Panel concludes that the second requirement of the Policy is met.

C. Registered and Used in Bad Faith

Complainant contends that Respondent registered and uses the Disputed Domain Name in bad faith.

Complainant made several arguments and the Panel finds that their cumulative effect is overwhelming to decide the issue in its favor.

Pursuant to paragraph 4(b)(iv) of the Policy, Complainant argues that Respondent uses the Disputed Domain Name “…. for nothing other than private financial gain. The main page of the “www.pnytechnologies.com” website is typical of those established by cybersquatters: a plethora of categories related to the business of the mark owner that link to sponsors who are either direct competitors of the mark owner or who offer for sale products of direct competitors of the mark owner. In this case, the categories include “Memory Upgrades”, “Usb Flash Drives”, “Laptop Memory”, “Pny Technology”, “Video Card”, “Technical Support”, “Download Drivers”, “Flash Memory”, “Driver”, “Tech Support”, “Usb Flash Memory Driver”, “Drivers”, “Computer Memory”, “Graphic Card”, “Attache”, “Attache Flash Drive”, “Card Reader”, “and Usb Driver”. “Complainant accused Respondent of, …creating actual confusion among professionals in the same industry as to the affiliation of the “www.pnytechnologies.com” website with the Complainant. By way of example only, an article posted on the professional photography website “www.digitalimagingmag.com” and the French online directory “www.hotfrog.fr” both incorrectly identify “www.pnytechologies.com” as the website for PNY”.

Pursuant to paragraph 4(b)(ii) of the Policy, the Panel thinks that the Disputed Domain Name prevents Complainant from reflecting its PNY TECHNOLOGIES Trademark in a corresponding domain name, and that Respondent has engaged in a pattern of such conduct. On the latter point, Complainant argued that Respondent, “…appears to be a professional cybersquatter who owns approximately 100 domain name registrations, a number of which wholly incorporate famous trademarks or are confusingly similar to famous trademarks of others….”; and Complainant noted that Respondent was recently ordered to transfer its registration of the domain names <qvchomepage.com> and <qvchomeshoppingnetwork.com> to complainants QVC, Inc., and ER Marks, Inc., owners of the widely-known QVC mark. QVC, Inc., ER Marks, Inc. v. Domain Buyer, WIPO Case No. D2006-1020.

Also, as illustrated by other panels, “cyberflying” (see footnote 1, supra) is in and of itself a clear indication of both bad faith registration and use under paragraph 4(b) of the Policy. See, e.g., Tomas Sziranyi v. RegisterFly.com, WIPO Case No. D2006-0320; PREPADOM v. Domain Drop S.A., WIPO Case No. D2006-0917; Fifth Third Bancorp v. Secure Whois Information Service, WIPO Case No. D2006-0696.

The Panel concludes that the third requirement 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 Disputed Domain Name <pnytechnologies.com> be transferred to the Complainant.

Mark Ming-Jen Yang
Sole Panelist

Dated: January 17, 2008

¹ The identity(ies) of the various recent registrants of the Disputed Domain Name is confusing. Because Respondent failed to respond on this very point against it that it was singularly positioned to rebut and because Complainant’s evidence and arguments are plausible, Panel gives the benefit to Complainant and accepts as a fact, registration by Respondent or its alter ego. Excerpt from Complaint: “Moreover, the Respondent’s actions subsequent to receipt of PNY’s cease-and-desist letter are a clear example of cyberflying. So-called ‘cyberflying’ is ‘an attempt to avoid or delay judicial or UDRP proceedings by changing domain registration details or registrars after learning of the complaint’. PREPADOM v. Domain Drop S.A., WIPO Case No. D2006-0917. At some point after receiving PNY’s cease-and-desist letter, then-registrant ‘John Reynolds’ changed domain registration details with no discernable intent other than to delay or disrupt PNY’s ability to seek reclamation of the domain name <pnytechnologies.com>. Such conduct, while not in response to the ‘learning of a complaint’, still constitutes cyberflying because it was clearly motivated by receipt of PNY’s demand letter. See Fifth Third Bancorp v. Secure Whois Information Service, WIPO Case No. D2006-0696 (finding evidence of cyberflying ‘where a flurry of de-regulation {sic} and re-registration immediately followed the Complainant’s cease-and-desist email’)”.