The UDRP rulings get nutter and more inconsistent by the day and today a one member panel denied PNC Financial Services Group, Inc which owns and operates PNC Bank on 9 domains all containing the term PTCbank even though the domains were parked and the domain owner used a logo on the parked domains that a copy of Complainant’s “PowerLink” logo and has the same colors as those used in Complainant’s design.
The panel found “PNC is the dominant component of the trademark”
“PTC is the dominant component of the disputed domain names, and the Panel does not consider them to be sufficiently similar”…Panel therefore considers it unlikely that the disputed domain names would be confused with Complainant’s PNC mark”
Wow
Here are the domains at issue:
ptcbank.net
ptcbank.org
ptcbank.info
ptcbank.biz
ptcbank.mobi
ptcbank.ws
ptcbank.cc
ptcbank.co
ptcbank.me
Here are the relevant facts and findings by the one member panel:
“The disputed domain names were registered or acquired by Respondent in 2012 and 2013.”
“Complainant asserts that Respondent is using the domain names for a commercial website that offers a fraudulent pay-per-click advertising service under the name “PTC Bank,” using a copy of Complainant’s “PowerLink” logo and the same colors as those used in Complainant’s design mark.”
“Respondent has submitted e-mail correspondence apparently addressed to Complainant in lieu of a formal response. In relevant part, Respondent denies that the domain names are related to Complainant or its marks. Respondent claims to have found Complainant’s logo via a Google image search and used it without realizing that it belonged to a real company, and subsequently deleted the logo upon receiving an objection from Complainant.”
FINDINGS
The Panel finds that the disputed domain names are not identical or confusingly similar to a trademark in which Complainant has rights.
A domain name that contains a misspelled version of a trademark—a practice commonly referred to as “typosquatting”—is normally deemed to be confusingly similar to the mark for purposes of the Policy.
When a mark exists within a crowded field, a higher degree of similarity may be required for a domain name to be deemed confusingly similar to the mark.
“The Panel is extremely reluctant to find confusing similarity between a trademark consisting of a three-letter acronym and a domain name that has only two of those letters in common with the mark, especially where the domain name is not simply an obvious misspelling of the trademark. ”
“The letters PTC in the disputed domain names here presumably refer to Respondent’s “paid-to-click” business model, but could also refer to any number of other terms or entities. ”
“Wikipedia contains a description of the “paid-to-click” business model on a page that apparently dates back to 2007, long before Respondent’s registration of the disputed domain names. “See Paid to Click, Wikipedia, http://en.wikipedia.org/wiki/Paid_To_Click.
“Presumably there are many other things that PTC may refer to.”
“In addition, Complainant’s mark and the PTC variation exist within an extremely crowded trademark field: there are numerous U.S. trademark registrations for PTC, as well as for PAC, PBC, PCC, PDC, PEF, and for nearly every other three-letter combination beginning with P and concluding with C.
The Panel therefore considers it unlikely that the disputed domain names would be confused with Complainant’s PNC mark.
“Complainant has a stronger case for confusing similarity between the disputed domain names and its PNCBANK mark.
Nonetheless, PNC is the dominant component of that mark, while PTC is the dominant component of the disputed domain names, and the Panel does not consider them to be sufficiently similar”
Respondent’s use of Complainant’s logo on his website does not alter this conclusion, as the content of the website has no bearing on whether the domain names are confusingly similar to Complainant’s marks.””
ABCnews
BBCnews
CBCnews
NBCnews
When dealing with a 3-letter acronym, changing one letter can make all the difference.
I’m surprised there’s surprise at this one. PNC, which stands for Pittsburgh National Corporation, is hardly THAT close to PNC, even if you’re looking at just letters. Say it outloud. Doesn’t sound close, does it?
The letters on the keyboard aren’t even that close, and if you’re typing, they’re not even on the same hand. 😉
Nat
Yes assuming your an actual broadcaster in your example or an actual bank in reference to this case
pnc and ptc seem very different to me.
I am not confused.
I came here thinking it was pncbank.net and was going to say what an outrageous decision and this time got it wrong against the TM holder. But after seeing pTc……I think this was the right call.
What on earth?..
“At PTC Bank, you get paid to click on ads and visit websites. The process is easy! You simply click a link and view a website for a few seconds to earn money. You don’t need any skills. All you need to do is visit the sites we provide you with. You can earn even more by referring friends. Payment requests can be made every 15 days and are processed through Paypal and Payza. The minimum payout is $100.00”
http://web.archive.org/web/20120928063945/http://www.ptcbank.net/?
and the logo is nearly identical:
https://www.google.com/search?q=pnc+bank+logo&bav=on.2,or.r_cp.r_qf.&bvm=bv.49641647,d.eWU,pv.xjs.s.en_US.NyLNrjc7wJY.O&biw=1280&bih=639&um=1&ie=UTF-8&hl=en&tbm=isch&source=og&sa=N&tab=wi&ei=5U3wUZz-J5LQ9gTdlIGoCQ
@Mike
You’re the lawyer, not me. But it strikes me that the panelist had to find that PTC is not confusingly similar to PNC, otherwise ABC, BBC, CBC, and NBC couldn’t all have trademarks as newscasters.
The panelist didn’t say the use was legitimate, in fact he didn’t address it. His analysis was limited to simply whether PTCbank is confusingly similar to PNCbank.
It’s refreshing when a panelist actually takes seriously the test that a domain name has to be confusingly similar to the Complainant’s TM.
All too often, panelists are willing to trample over this requirement to get to what they view as the ‘fair’ result.
For example, panels have found that
bodacious-tatas.com is confusingly similar to TATA
and that
maddhattentertainment.com is confusingly similar to MADD
I give Sorkin credit for respecting the UDRP requirements as they are written.
Nat
except the domain holder is not a bank and is running what could be called a scam
See Domo above and was/is using a confusingly similar Logo
the first test is-
“the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights”
It has nothing to do with how the domain is used, or whether there is a scam website hosted at the domain. The question is only whether the domain is confusingly similar to the Complainant’s TM.
Sorkin probably would have turned the principles of trademark law upside down if he had found that ‘PTC bank’ is confusingly similar to ‘PNC bank’. There are probably many banks that have acronyms that are just as similar as PTC and PNC, and who wouldn’t be able to trademark their 3-letter acronyms if the difference of one letter was found to make their trademark confusingly similar to another bank’s trademark.
Again, the test that the Complainant failed had nothing to do with how the domain was used, and Sorkin is not saying that the use was legitimate.
what will happen if domain name are singular and plural?
well I have seen much worst decisions than this one. given that the names are different I can accept the decision. the biggest issue is the logo which is very similar. so given the bias toward big corporations one would expect a decision against the domain holder. the surprise comes more from that than the inner works of the decision.