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and Mediation Center
Desert Schools Federal Credit Union v. Michael Huang
Case No. D2005-0203
1. The Parties
Complainant is Desert Schools Federal Credit Union, Phoenix, Arizona, United States of America, represented by Fennemore Craig, United States of America.
Respondent is Michael Huang, Singapore.
2. The Domain Name and Registrar
The disputed domain name <desertschoolsfederalcreditunion.com> is registered
with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 22, 2005. On February 22, 2005, the Center transmitted by email to Moniker Online Services, LLC a request for Registrar Verification in connection with the domain name at issue. On the same date, Moniker Online Services, LLC transmitted by email to the Center its Verification Response confirming that Respondent is listed as the Registrant and providing the contact details for the administrative, billing, and technical contact and also confirming that the Domain Name Dispute Resolution Policy applies to the domain name at issue.
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 Respondent of the Complaint, and the proceedings commenced on March 8, 2005. In accordance with the Rules, Paragraph 5(a), the due date for Response was March 28, 2005. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s Default on March 24, 2005.
The Center appointed Henry Olsson as the sole panelist
in this matter on April 4, 2005. 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,
4. Factual Background
The Panel notes that Complainant, in accordance with Paragraph 3(b)(xiii) of the Rules, agrees to submit, only with respect to any challenge that may be made by Respondent to a decision by the Administrative Panel to transfer or cancel the domain name that is the subject of this Complaint, to the jurisdiction of the Courts of the Southern District of Florida, which is the location of the principal office of the Registrar of the disputed domain name.
The Panel also notes that the domain name at issue
was registered on March 26, 2003.
5. Parties’ Contentions
Complainant contends that Respondent is required to submit to a mandatory administrative proceeding because:
1) the domain name at issue is identical or confusingly similar to a trademark or a service mark in which Complainant has rights,
2) Respondent has no rights or legitimate interests in respect of the domain name, and
3) the domain name is registered and is being used in bad faith.
Identity or Confusing Similarity
Complainant first contends that it is the exclusive owner of the Desert Schools Federal Credit Union trademarks. It refers in this context to the U.S. Service Mark Registration No 2,527,242 and the U.S. Service Mark Application No 78/302,697, copies of which are attached to the Complaint. As regards the first-mentioned registration, the Record shows that the Filing Date was December 7, 2000, the date for Publication for Opposition October 16, 2001, and the Registration Date January 8, 2002.
As regards the service mark, Complainant adds that it has been using that mark since 1972 and that the mark serves at identifying the services of Desert Schools and to distinguish the source of services provided by the Schools from the services of competitors.
According to Complainant, Respondent’s domain name is identical to Complainant’s mark and that, by typing that mark as a URL address, potential customers arrive at Respondent’s website. Complainant has submitted a printout of a website “desertschoolsfederalcreditunion.com” followed by the text “What you need, when you need it” and with a number of services indicated under the headings “Popular Categories” and “Favorite Categories.” Among those latter ones are “Leisure” including, for instance, “Dating” and “Gambling” (“Free Casino Gambling” and “Poker”, etc.) The website also contains a frame “Popular Links” to, for instance credit unions and various banking services.
Complainant alleges that by using the Complainant’s mark in the domain name at issue, Respondent creates a likelihood of confusion regarding the sponsorship and approval of Respondent’s website by Complainant.
Complainant contends that the domain name at issue is identical to Complainant’s mark in appearance, meaning and sound and that Respondent’s intent, when selecting the disputed domain name, was to divert Complainant’s customers to Respondent’s site. Customers are, according to Complainant, likely to believe that Complainant has authorized or approved the domain name at issue. An even greater confusion is, according to Complainant, created by the fact that the site under the Popular Links heading contains references to Arizona businesses and credit unions. Furthermore, Respondent has used the line “what you need, when you need”, which is a trademark owned by the FCC National Bank for credit card services, something that created an even greater confusion.
Rights or Legitimate Interests
In this respect, Complainant first notes that the Respondent did not register the disputed domain name until Complainant’s trademark was established. Furthermore, Complainant has, according to Complainant, failed to establish any rights or legitimate interests in the domain name at issue.
Registration and Use in Bad Faith
Complainant refers to the circumstances mentioned in Paragraph 4(b) of the Policy as indicating evidence of bad faith and alleges that it is appropriate to look at the totality of circumstances in order to determine whether Respondent has registered and used the domain name in bad faith. Complainant specifically alleges that bad faith can be established where Respondent intends to disrupt the business of the trademark owner and attract users by creating a likelihood of confusion.
According to Complainant, Respondent registered the domain name at issue with knowledge of the trademark. Thus, the registration of the trademark occurred more than a year before the registration of the domain name, and Respondent used the domain name to link to a website that deals with credit unions and financial services.
Furthermore, Complainant alleges, the use of the domain name at issue does disrupt the business of Complainant. According to Complainant, the website of Respondent was initially linked to a site known to “download spyware, advertisements, viruses or worms” on the computer of a user. Sometimes users install a filtering software to prevent these sites from coming so that such downloads can not take place. In such cases the website screen will show “Action cancelled. Internet Explorer was unable to link to the Web page you requested…” Complainant stresses that also this is damaging to Complainant because it appears that either the website of Complainant is inactive or does not exist or that the website is used to distribute harmful software.
Complainant also alleges that Respondent is intentionally creating confusion by creating and benefiting from “initial source confusion” by the hits obtained from Internet users who are looking for Complainant.
Complainant contends that it has thus established the third necessary element to prevail on a claim of abusive domain name registration.
For the reasons which have been described and briefly summarized above and in accordance with Paragraph 4(i) of the Policy, Complainant requests that the Administrative Panel issue a decision that the domain name at issue be transferred to Complainant.
Respondent did not reply to the Complainant’s
contentions and is thus in Default.
6. Discussion and Findings
Rule 15 of the Rules prescribes that the Panel shall decide a Complaint on the basis of the statements made and documents submitted and in accordance with the Policy, the Rules and any principles of law that it deems applicable.
In the case of a Default by a Party, Paragraph 14 of the Rules prescribes that if a Party, in the absence of exceptional circumstances, does not comply with a provision of, or a requirement under, these Rules, the Panel shall draw such conclusions therefrom as it considers appropriate. In this case, no Response has been submitted and none of the contentions by Complainant have been contested by Respondent despite the opportunity given to do so. The Panel will therefore have to operate and consider the case on the basis of the factual circumstances contained in the Complaint and the documents available to support those contentions.
The Registrar Verification confirms that the Policy is applicable to this case. Consequently, Respondent is obliged to submit to a mandatory administrative proceeding as the one now initiated in respect of the domain name at issue.
The Panel is satisfied that the Complaint has been properly communicated to Respondent and that there is from this point of view no obstacle to considering the case.
Paragraph 4(a) of the Policy directs that Complainant has to prove each of the following:
- that the domain name registered by Respondent is identical with, or confusingly similar to, a trademark or a service mark in which Complainant has rights,
- that Respondent has no rights or legitimate interests in the domain name, and
- that the domain name has been registered and is being used in bad faith.
In the following parts of this Decision, the Panel discusses each of those elements.
A. Identical or Confusingly Similar
In this respect, Complainant has, according to Paragraph 4(a)(i) of the Policy, to prove that the domain name at issue is identical with, or confusingly similar to, a trademark or a service mark in which Complainant has rights.
The domain name at issue is <desertschoolsfederalcreditunion.com>.
The evidence submitted by Complainant shows, inter alia, that Complainant is, on the basis of an application filed on December 7, 2000, and a subsequent registration on January 8, 2002, the owner of the word mark DESERT SCHOOLS FEDERAL CREDIT UNION in the United States. Complainant’s allegation that the mark has been used since 1972 has not been contested. The Panel is therefore satisfied that Complainant has service mark rights in the mark in the United States (with the disclaimer that no claim is made to the exclusive right to use “FEDERAL CREDIT UNION” apart from the mark as shown).
The domain name contains the same words as contained in Complainant’s mark, the only difference being that all the words in the mark are written together in one word, as is in fact natural in the case of a domain name, in particular if several words are involved as is the case here. Any user of the Internet who is looking for Complainant is likely to type the words in Complainant’s mark together in order to find the corresponding website.
In the view of the Panel these circumstances clearly indicate that there is a confusing similarity between the service mark in which Complainant has rights and the domain name at issue.
B. Rights or Legitimate Interests
In this respect, Complainant has, according to Paragraph 4(a)(ii) of the Policy, to prove that Respondent has no rights or legitimate interests in the domain name.
In a case like this, where there is no Response from Respondent, it is naturally difficult for any Complainant to prove the absence of rights or interests on the part of the opposite Party.
In this case, the fairly long and very specific name of a United States Credit Union has been registered by a person in Singapore for purposes which seem to indicate, among several other matters, connections with various financial services. In this situation, the Panel considers that the Respondent has to prove or at least provide credible evidence that it has some rights or legitimate interests in the domain name at issue. No circumstances have been presented to this effect and the Panel can not draw any conclusion other than that Respondent has in fact no rights or legitimate interests in the domain name at issue.
C. Registered and Used in Bad Faith
Complainant has, according to Paragraph 4(a)(iii) of the Policy, to prove that the domain name has been registered and is being used in bad faith. Furthermore, Paragraph 4(b) of the Policy sets out some circumstances which, in particular but without limitation, shall, if found to be present by the Panel, be considered to be evidence of registration and use in bad faith.
The Panel has, as indicated above, come to the conclusion that Respondent has no rights or legitimate interests in the domain name, which includes in a confusingly similar way the service mark belonging to a financial institution in another part of the world. The Panel finds it to be established without any doubt that Respondent had knowledge about the service mark of Complainant at the time of the registration of the domain name. The Panel can, on the basis of the circumstances in the case, find no explanation other than a wish to disrupt the business of Complainant by creating a likelihood of confusion, a likelihood which is made even more confusing by the links to various financial services. The Panel also draws the conclusion that Respondent has in fact lead users to believe in some sort of association between Complainant and the website at issue and also finds that the circumstances present in the case indicate that Respondent has tried to attract users to its website by creating a likelihood of confusion.
When considering the totality of the circumstances present in the case, the Panel arrives at the conclusion that the domain name at issue has been registered and is being used in bad faith.
On the basis of the foregoing, the Administrative Panel concludes that it has
been established in this case that the domain name at issue is confusingly similar
to the service mark in which Complainant has rights, that Respondent has no
rights or legitimate interests in the domain name and that the domain name has
been registered and is being used in bad faith. Complainant’s request
for a transfer of the domain name to Complainant shall consequently be approved.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <desertschoolsfederalcreditunion.com> be transferred to Complainant.
Date: April 6, 2005