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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Westminster Savings Credit Union v. Hart Industries Inc. and Gregory Hart
Case No. D2002-0637
1. The Parties
Complainant is Westminster Savings Credit Union, a credit union incorporated pursuant to the laws of British Columbia, Canada, 108 – 960 Quayside Drive, New Westminster, British Columbia, Canada, V3M 6G2.
Respondents are Hart Industries Inc. and Gregory Hart, P.O. Box 73155, Puyallup, Washington 98373, United States of America and 701 Fifth Avenue 5000, Seattle 98104-7078, United States of America, respectively.
2. The Domain Name and Registrar
The domain name at issue is <westminstersavings.com> (hereinafter referred to as the Domain Name).
The Registrar for the Domain Name is Register.com. (hereinafter referred to as the Registrar).
3. Procedural History
On July 9, 2002, Complainant filed a complaint, drafted in the English language, with the WIPO Arbitration and Mediation Center (hereinafter referred to as the "Center"). The Complaint was received via e-mail on July 9, 2002. The hardcopy of the Complaint was received on July 12, 2002, and an extra copy was received on July 19, 2002.
On July 11, 2002, the Acknowledgement of Receipt by the Center was sent to the Complainant copying the Respondent. On the same date, the Center sent the Request for Registrar Verification.
On July 12, 2002, the Registrar provided the Center with the full contact details available in its WHOIS database for the Domain Name registrant and further confirmed that:
- it is the current Registrar of the Domain Name registration;
- the Respondent Gregory Hart is the current registrant of the Domain Name registration;
- the Uniform Domain Name Dispute Resolution Policy (hereinafter referred to as the ICANN Policy) applies to the Domain Name;
- the Domain Name will remain locked during the pending administrative proceeding;
- the language of the Registration Agreement is in English;
- the jurisdiction at the location of the principal office of the Registrar for court adjudication does apply as per the Registration Agreement.
E-mail communications have been made between the Center and the parties in which the Respondents claimed that the dispute had been resolved. Counsel for the Complainant stated that there was absolutely no foundation at all for the Respondents to make such an assertion and that this was an attempt to derail the dispute resolution process and requested that the Complaint proceed without delay.
The Center proceeded to verify that the Complaint satisfied the formal requirements of the Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter referred to as the ICANN Rules) and the World Intellectual Property Organization Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter referred to as the WIPO Supplemental Rules), including the payment of the requisite fees. The verification of compliance with the formal requirements was completed in the affirmative on July 16, 2002.
The Panel has reviewed the documentary evidence provided by the parties and agrees with the Center’s assessment that the Complaint complies with the formal requirements of the ICANN Rules and the WIPO Supplemental Rules.
On July 17, 2002, the Center informed the Respondents of the commencement of the proceedings as of July 17, 2002, and of the necessity of responding to the Complaint within 20 calendar days, the last day for sending a response to the Center being August 6, 2002.
On July 19, 2002, the Respondents objected by e-mail addressed to the Center to the continuation of the proceedings. The Center answered by e-mail on July 29, 2002, advising the Respondents of the deadline to file a response and notifying them that all correspondence must be and will be copied to the Complainant.
On July 30, 2002, the Center received an e-mail from the Respondents, stating to be the Response to the Complaint and read as follows:
"Once more, our response to your "complaint" is the following: We object! The Canadian company is attempting to pirate this USA name from us. If you continue with this venue we’ll sue them and your organization. You have no right to assist pirates in their theft attempt of intellectual properties."
On August 1, 2002, the Center sent the Respondents a Response Deficiency Notification.
On August 16, 2002, the Center issued a Notification of the Appointment of Administrative Panel and of the projected decision date to the parties and transmitted the Case File.
The Panel is satisfied that it was constituted in compliance with the ICANN Rules and the WIPO Supplemental Rules and has also issued a Statement of Acceptance and Declaration of Impartiality and Independence.
The Panel has received no further submissions from either party since its formation.
The Panel is obliged to issue a decision on or prior to August 30, 2002, in the English language.
4. Factual Background
The following uncontradicted and unchallenged facts appear from the Complaint and the documents submitted in support thereof:
Westminster Savings Credit Union ("Westminster Savings") is a financial institution incorporated pursuant to the laws of British Columbia, Canada. Westminster Savings has actively and continuously been in business since October 1944. Westminster Savings offers deposit accounts, loans, mortgages and other financial services to its members.
The Respondent Gregory R. Hart is a recent member of Westminster Savings who has been involved in a dispute with Westminster Savings over the use of his credit union account (Annex 5 of the Complaint). As the Complainant understands it, the Respondent Hart Industries Inc. is a corporation of which the Respondent Gregory R. Hart is the principal.
Westminster Savings holds the registered Canadian trademark WESTMINSTER SAVINGS CREDIT UNION, registration number TMA495,429, based on a filing date of April 13, 1993 and a registration date of May 28, 1998. Westminster Savings has owned this trademark since 1998. The registration certificate for the trademark and trademark database search results dated June 26, 2002, are attached as Annex 3 of the Complaint.
Barry Forbes is the chief executive officer of Westminster Savings.
5. Parties’ Contentions
The Complainant contends Westminster Savings also holds the website addresses <westminstersavings.ca>, which it does not actively use, and <wscu.com> and <betterbanking.com>, both of which it has operated since January 1997.
The Domain Name in dispute, <westminstersavings.com> is identical or confusingly similar to Westminster Savings’ trademark. There is nothing in the Domain Name to distinguish it from Westminster Savings’ trademark or business operations.
The Respondents have no rights or legitimate interests in respect of the Domain Name. The Respondents have never been known by the Domain Name and carry on no business or other good faith activity under the name Westminster Savings.
The Domain Name in dispute was registered in bad faith. The Respondents registered the Domain Name for the sole purpose of attracting current or potential members of Westminster Savings or other members of the public to the website in dispute, to divert business away from Westminster Savings and therefore disrupt its business, and to tarnish the reputation and profile of Westminster Savings.
The Domain Name in dispute is not being used for a bona fide offering of goods or services. It in fact offers no goods or services at all, and the only reference to any is the indirect one comprising the links created to the websites of competitors of the Complainant.
The Respondents have intentionally used the Domain Name for the purpose of attempting to coerce Westminster Savings into settling Gregory Hart’s dispute concerning his Westminster Savings account.
The Respondents have offered to sell the Domain Name for US$65,000 as of June 24, 2002, and US$100,000 , from June 28, 2002, to date, which is many times the out-of-pocket costs incurred by the Respondents to obtain the Domain Name. The complete contents of the website as of June 26, 2002, June 27, 2002, June 28, 2002, and July 9, 2002, are attached to the Complaint as Annex 4.
The website contains language which is disparaging of Westminster Savings and also the links to competing financial institutions.
Direct and express evidence of the Respondents’ bad faith, and an explicit admission of the confusion created by the Respondents’ actions and of their malicious intent in creating the confusion, are also set out in the e-mail message sent by the Respondent Gregory Hart to the chief executive officer of Westminster Savings on June 22, 2002, (Annex 5 of the Complaint).
The Respondents have failed to file a timely response with the Center, except as mentioned above in the Procedural History.
6. Discussion and Findings
Pursuant to the Uniform Domain Name Dispute Resolution Policy (hereinafter refered to as the ICANN Policy), the Complainant must convince the Panel of three elements if it wishes to have the Domain Name transferred. It is incumbent upon the Complainant to cumulatively show:
(i) that the Domain Name is identical or confusingly similar to a trademark or service mark in which it holds rights; and
(ii) that the Respondent has no rights or legitimate interests in the Domain Name; and
(iii) that the Domain Name is registered and used in bad faith.
These three elements are considered below.
(i) Identity or Confusing Similarity between the Domain Name and Complainant's Trademark or service mark in which it has rights
The Panel finds that Complainant holds rights in the WESTMINSTER SAVINGS CREDIT UNION trademark having used it in connection with services related to the operation of a credit union financial institution and which was registered in Canada under TMA 495,429 on May 28, 1998.
While the Domain Name is not identical to Complainant's WESTMINSTER SAVINGS CREDIT UNION trademark, the Panel finds that it is confusingly similar, since it is formed of the essential elements of Complainant’s trademark. This finding would seem to be admitted by the Respondents when they write to Mr. Barry Forbes on June 22, 2002:
"Oh... and what do you think of my new email address (email@example.com)? You know, with an email address like mine there could be a lot of confusion with activist groups, news media etc."
The Panel is therefore of the opinion that the Complainant has satisfactorily met its burden of proof as required by paragraph 4(a)(i) of the ICANN Policy.
(ii) Rights or Legitimate Interests in the Domain Name by Respondents
The Panel understands that the dispute between the parties is causing great frustration and concerns to the Respondents. However, as stated in Bett Homes Limited and Bett Brothers PLC v. Bill McFadyen, WIPO Case No. D2001-1018, the forum for resolving the dispute between the parties to this Complaint as to the alleged wrongdoings of the Complainant is not the ICANN Policy. This being said, the Panel finds that the Respondents' frustration and concerns cannot confer on them a right or legitimate interest in the Domain Name.
Respondents have not carried on any good faith activities under the name Westminster Savings as established by the evidence submitted by the Complainant attached as annex 4 of the Complaint. Using the Domain Name as a threat or to embarrass the Complainant in order to settle a dispute, cannot be considered as being the exercise of a right or the expression of a legitimate interest in the Domain Name. An example of such a threat can be found in the e-mail addressed by the Respondents to Mr. Barry Forbes on June 22, 2002:
"This site will soon be posted on more than 40, 000 website search engines if you continue to ignore me. If you don't understand such an impact, then I suggest you talk to someone in the "understanding of computers and the Internet" for your clear interpretation".
The Panel adopts the finding in Bett Homes Limited and Bett Brothers PLC v. Bill McFadyen, WIPO Case No. D2001-1018:
"For these reasons, whilst the Panel accepts that the Respondent may be free publicly to comment on the Complainant’s workmanship on the Internet, the Panel does not consider that such freedom confers a right or legitimate interest in the use of a domain name which is identical to the Complainant’s trade-mark."
(iii) Bad faith in Registration and Use of the Domain Name by the Respondent
Clearly, the registration and use of the Domain Name was intended to disrupt the Complainant’s business by taking advantage of the fact that Internet users seeking the Complainant’s site are likely to go to the address of the Domain Name. From the evidence submitted, it appears that the Respondents are threatening to use their website to damage the business and reputation of the Complainant and of its employees if the Complainant does not favorably respond to the Respondent's demands. An example of this can be found in an e-mail dated June 25, 2002, addressed by the Respondent, Mr. Gregory Hart, to Mr. Barry Forbes (Annexes 4 and 5):
"Your personal information and the personal information of your associates and/or employees (information of which is public knowledge) will be found on my website for the world to view.
My website will be advertised in local news papers.
Barry Forbes, I demand that you reinstate my account or as I said, you SHALL suffer the consequences!"
On these grounds, the panel concludes that the Respondents have registered and are using the Domain Name in bad faith.
For the foregoing reasons, the Panel finds that:
- The Domain Name registered by the Respondents is confusingly similar to the trademark in which the Complainant holds rights; and
- The Respondents have no rights or legitimate interests in respect of the Domain Name; and
- The Domain Name has been registered and is being used by the Respondents in bad faith.
Accordingly, pursuant to Paragraphs 4(i) of the ICANN Policy and 15 of the ICANN Rules, the Panel orders that the registration of the Domain Name <westminstersavings.com> be transferred to the Complainant and directs the Registrar to do so forthwith.
Hugues G. Richard
Dated: August 30, 2002