The PNC Financial Services Group, Inc. had no idea that someone was watching their trademark registration application at the USPTO.
The same day that they applied for the registration of BRILLIANTLY BORING, someone registered the matching domain BrilliantlyBoring.com. The domain was then listed for sale on Dan.com.
What are the odds?
Cybersquatters who follow trademark registration applications closely often attempt to pull this off but in this case the trademark applicant filed a UDRP.
The Forum panelist agreed:
The disputed domain name was registered on the same day that Complainant applied to register its inherently distinctive BRILLIANTLY BORING mark with the USPTO, and thus on the balance of probabilities, Respondent’s intent was to unfairly capitalize on Complainant’s nascent trademark rights; Respondent has a history of cybersquatting.
Final decision: Order the transfer of the domain name BrilliantlyBoring.com to the Complainant.
Clearly, a brilliantly boring e.g. expected decision.
The PNC Financial Services Group, Inc. v. Expired domain caught by auction winner.***Maybe for sale on Dynadot Marketplace*** / web master
Claim Number: FA2404002092749
PARTIES
Complainant is The PNC Financial Services Group, Inc. (“Complainant”), represented by Mark Sommers of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, District of Columbia, USA. Respondent is Expired domain caught by auction winner.***Maybe for sale on Dynadot Marketplace*** / web master (“Respondent”), Hong Kong.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is brilliantlyboring.com, registered with Dynadot Inc.
PANEL
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Ho-Hyun Nahm, Esq. as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on April 11, 2024; Forum received payment on April 11, 2024.
On April 11, 2024, Dynadot Inc confirmed by e-mail to Forum that the brilliantlyboring.com domain name is registered with Dynadot Inc and that Respondent is the current registrant of the name. Dynadot Inc has verified that Respondent is bound by the Dynadot Inc registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 15, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 6, 2024 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@brilliantlyboring.com. Also on April 15, 2024, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.
On May 7, 2024, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, Forum appointed Ho-Hyun Nahm, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that 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” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, 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
i) Complainant, The PNC Financial Services Group, Inc. traces its commercial banking origins back to the 1800s. Today, Complainant provides retail banking, corporate and institutional banking, and asset management services throughout the United States. In late 2023, Complainant began internally strategizing use of its inherently distinctive BRILLIANTLY BORING brand and advertising campaign. On December 22, 2023, Complainant applied to register its BRILLIANTLY BORING trademark with the United States Patent and Trademark Office (“USPTO”) on an intent-to-use basis (Serial number 98327798). Complainant has attained common law rights in the BRILLIANTLY BORING mark with priority rights of December 22, 2023. The disputed domain name is confusingly similar to Complainant’s BRILLIANTLY BORING mark because it contains the mark in its entirety, merely adding the “.com” generic top-level domain (“gTLD”).
ii) Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant licensed Respondent to use its BRILLIANTLY BORING mark in the disputed domain name. Respondent does not use the disputed domain name in connection with any bona fide offering of goods or services, nor a legitimate non-commercial or fair use. Complainant has been unable to find any use of the disputed domain name, except for a parked webpage. Respondent’s failure to respond to Complainant’s demand letter is further evidence it has no rights or legitimate interests in the disputed domain name.
iii) Respondent registered and uses the disputed domain name in bad faith. Because the disputed domain name was registered on the same day that Complainant applied to register its inherently distinctive BRILLIANTLY BORING mark with the USPTO, its registration and use was in bad faith. Respondent’s intent was to unfairly capitalize on Complainant’s nascent trademark rights. Complainant has been unable to find any use of the disputed domain name, except for a parked webpage. Respondent registered the disputed domain name using false WHOIS contact information. Respondent has a history of cybersquatting.
B. Respondent
Respondent did not submit a Response in this proceeding.
FINDINGS
1. The disputed domain name was registered on December 22, 2023.
2. Complainant filed U.S. Trademark Application No. 98327798 for the mark BRILLIANTLY BORING on December 22, 2023.
3. Complainant has established common law rights in the BRILLIANTLY BORING mark with priority rights of December 22, 2023.
4. The disputed domain name remains inactive.
DISCUSSION
Paragraph 15(a) of the Rules instructs this Panel to “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 applicable.”
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.
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(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Identical and/or Confusingly Similar
Complainant asserts common law rights in the BRILLIANTLY BORING mark with priority rights of December 22, 2023. Despite the short amount of time Complainant used its BRILLIANTLY BORING marks, as a result of Complainant’s reputation and fame, its promotional efforts, as well as the
widespread media attention to its advertising campaign, Complainant holds common-law rights in the BRILLIANTLY BORING marks. The Panel finds that Complainant filed U.S. trademark application 98327798 for the mark BRILLIANTLY BORING on December 22, 2023 with the USPTO on an intent-to-use basis covering “banking services, a full line of financial services, etc.” in International Class 36. The Panel further finds that Complainant has attained a consumer recognition in the industry in connection with the BRILLIANTLY BORING mark by virtue of widespread media coverage as evidenced by Complainant’s exhibits. Around March 18, 2024, Complainant began using its BRILLIANTLY BORING marks in connection with its banking and financial services. Complainant advertises its services using the BRILLIANTLY BORING marks online, including in its social media. Its video advertisements gained immediate and widespread media attention. A search for “brilliantly boring” on Google, Bing, and Yahoo! delivers results dominated by Complainant’s advertising campaign. Complainant provides screenshots from its own website; social media screenshots; third-party media exemplars; and screenshots from search engine search results in support of its contention.
The Panel notes that to establish unregistered or common law trademark rights for purposes of the Policy, Complainant must show that its mark has become a distinctive identifier which consumers associate with Complainant’s goods and/or services. The Panel is of the view that a pending trademark application would not by itself establish trademark rights within the meaning of UDRP paragraph 4(a)(i). The Panel finds that Complainant has established common law rights in the BRILLIANTLY BORING with priority rights of December 22, 2023 under Policy ¶ 4(a)(i) on the grounds that i) the filing of an intent-to-use trademark application with the USPTO, subject to the mark being registered, may constitute constructive use of the mark and confer priority rights as of the filing date under United States trademark law; ii) based on vast media efforts publicizing the launching of the BRILLIANTLY BORING financial services, the public in the relevant industry is likely to associate the mark BRILLIANTLY BORING with Complainant and Complainant’s services; and iii) Complainant’s mark is rather unique and distinctive, and thus it does not require higher degree of consumer recognition unlike a generic or descriptive mark. See Universal Remanufacturing Co. LLC d/b/a Phoenix Chassis v. Super Privacy Service LTD c/o Dynadot and Domain Sales (expired domain caught by auction winner c/o Dynadot), D2022-3700 (WIPO December 23, 2022) (finding that under United States trademark law, the filing of an intent-to-use trademark application, subject to the mark being registered, constitutes constructive use of the mark and confers priority rights as of the date of the application’s filing date. This mark has not yet been registered, and hence the “intent to use” application, by itself, may not be sufficient under the UDRP to recognize Complainant’s trademark rights on that basis. Although the evidence presented is thin, the Panel finds it sufficient to recognize Complainant’s common law trademark rights in PHOENIX CHASSIS in these circumstances, especially given the relatively low “standing” threshold for trademark rights under the first element of the UDRP.).
Complainant argues that the disputed domain name brilliantlyboring.com is confusingly similar to Complainant’s BRILLIANTLY BORING mark because it contains the mark in its entirety, merely adding the “.com” gTLD. The Panel agrees and finds that the disputed domain name is confusingly similar to Complainant’s BRILLIANTLY BORING mark under Policy ¶ 4(a)(i).
Rights or Legitimate Interests
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent lacks rights or legitimate interests in the disputed domain name because Respondent has not been licensed nor commonly known by the disputed domain name; and Complainant has been unable to find any use of the disputed domain name, except for a parked webpage. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA 1613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the statefarmforum.com domain name pursuant to Policy ¶ 4(c)(ii)). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA 1574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The Panel notes that the WHOIS information for the disputed domain name lists the registrant as “Expired domain caught by auction winner.***Maybe for sale on Dynadot Marketplace*** / web master.” Additionally, there is no evidence to suggest that Respondent was authorized to use Complainant’s mark in the disputed domain name. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor for any legitimate non-commercial or fair use. Complainant specifically points out that the disputed domain name remains inactive and resolves to a parked webpage. Failure to make active use of a disputed domain name indicates a respondent does not use the domain for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Morgan Stanley v. Francis Mccarthy / Baltec Marine Llc, FA 1785347 (Forum June 8, 2018) (“both Domain Names resolve to a web site that shows the words, ‘Not Found, The requested URL / was not found on this server.’ Inactive holding of a domain name does not qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or a legitimate non-commercial or fair use within the meaning of Policy ¶ 4(c)(iii).”). Complainant provides a screenshot showing the disputed domain name resolves to a parked webpage. Therefore, the Panel finds that Respondent is not using the domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Registration and Use in Bad Faith
The Panel notes that the disputed domain name resolves to an inactive webpage. As noted above, Complainant provides a screenshot showing the disputed domain name resolves to a parked webpage. The Panel observes that the inactive use of a domain name does not necessarily circumvent a finding that the domain name is being used in bad faith within the requirements of paragraph 4(a)(iii) of the Policy. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (finding that in considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the panel must give close attention to all the circumstances of the respondent’s behavior, and a remedy can be obtained under the Policy only if those circumstances show that the respondent’s passive holding amounts to acting in bad faith.)
The particular circumstances of this case that the Panel has considered are:
i) Complainant traces its commercial banking origins back to the 1800s. Today, Complainant provides retail banking, corporate and institutional banking, and asset management services throughout the United States. In June 2021, Complainant acquired BBVA USA Bancshares, Inc., making it the fifth largest U.S. commercial banking organization, with over $562 billion in assets, over $421 billion in deposits, and a presence in 48 of the largest U.S. markets;
ii) Despite the short amount of time Complainant used its BRILLIANTLY BORING marks, as a result of Complainant’s reputation and fame, its promotional efforts, as well as the widespread media attention to its advertising campaign, Complainant has attained a consumer recognition in the industry in connection with the BRILLIANTLY BORING mark;
iii) The disputed domain name was registered on the same day that Complainant applied to register its inherently distinctive BRILLIANTLY BORING mark with the USPTO, and thus on the balance of probabilities, Respondent’s intent was to unfairly capitalize on Complainant’s nascent trademark rights;
iv) Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name despite Complainant’s demand letter (The Registrar confirmed Complainant’s letter was forwarded to Respondent.), which emphasized that courts have found registration of a domain name in anticipation of another’s nascent trademark rights constitutes bad faith under the Lanham Act and which demanded the disputed domain name be transferred to Complainant’s control; and
v) Respondent has a history of cybersquatting;
Taking into account the circumstances above, the Panel concludes that Respondent’s inactive use of the disputed domain name constitutes bad faith under Policy, paragraph 4(a)(iii) and that Respondent registered and is using the disputed domain name in bad faith.
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the brilliantlyboring.com domain name be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: May 8, 2024
