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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Patelco Credit Union v. Activeideas.com, Inc.

Case No. D2005-1295

 

1. The Parties

The Complainant is Patelco Credit Union, San Francisco, California, United States of America, represented by Moore, Brewer, Jones & Tyler, United States of America.

The Respondent is Activeideas.com, Inc., Quaker Hill, Connecticut, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name, <patelcocu.org> is registered with the registrar #1 Domain Names International, Inc d/b/a 1dni.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 14, 2005. On December 15, 2005, the Center transmitted by e-mail to #1 Domain Names International, Inc. d/b/a 1dni.com a request for registrar verification in connection with the domain name at issue. On December 27, 2005, #1 Domain Names International, Inc. d/b/a 1dni.com transmitted by e-mail to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contacts. 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 January 11, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was January 31, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 2, 2006.

The Center appointed Jonathan Hudis as the sole panelist in this matter on February 22, 2006. The Panel finds that it was properly constituted. After checking for possible conflicts of interest, the Panel submitted a 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

As Respondent did not answer the Complaint, the following facts are undisputed.

According to the records of the U.S. Patent and Trademark Office, Complainant owns Service Mark Registration No. 3,008,411 for the mark PATELCO CREDIT UNION for “credit union services, namely, providing banking services, savings and checking accounts, certificates of deposit, home and business loans, and credit cards”.

Complainant also claims common law rights in and to its mark as evidenced by Complainant’s continuous, substantial and exclusive use of the PATELCO CREDIT UNION mark in the United States since at least as early as 1979. Complainant has been in existence since 1936. Information about Complainant’s registered mark and its use on the Internet was attached to the Complainant. Complainant asserts use of its mark to identify its credit union services as identified in its federal U.S. registration.

Complainant says it has invested a large amount of money in developing its presence over the Internet. Complainant states that it annually spends approximately $300,000 (20% of its annual $1.5 million marketing budget) on marketing its online banking services and advertising its other financial products and services over the Internet. Complainant boasts having over 205,000 members and assets exceeding $3.5 billion; that it is the 3rd largest credit union in California; that it is the 11th largest credit union in the United States in terms of asset size; and that it is the 28th largest credit union in the United States in terms of number of members according to Callahan and Associates 2006 Credit Union Directory. A copy of selected pages from the Callahan publication was attached to the Complaint. Complainant asserts that its members are located throughout the United States.

Complainant also claims that on May 28, 1995, it registered the domain name <patelco.org> with the registrar Network Solutions, LLC. Complainant operates a web site using the domain name <patelco.org>. This domain name also, apparently, is the e-mail address for Complainant’s staff who regularly receive e-mails from customers concerning their accounts and who regularly send e-mails to customers using the <patelco.org> e-mail address.

Complainant states that its web site provides online banking services and information about Complainant; financial information; and information on how to become a member of Complainant. Complainant estimates that 50% of its members/customers use its online banking services. A copy of Complainant’s 2004 Annual Report was attached to the Complaint.

Complainant contends that its name and mark have become distinctive identifiers of Complainant’s services. Complainant says it has received substantial media recognition in California and throughout the United States for its services. Due to Complainant’s professed significant marketing and promotional efforts, Complainant states it has developed considerable and valuable goodwill and reputation with respect to its name and mark. In order to reach its decision, the Panel did not consider the extent of the goodwill and reputation regarding Complainant’s name and mark PATELCO CREDIT UNION.

According to the Registrar’s WhoIs database, Respondent registered the disputed domain name on August 20, 2005. Complainant says that Respondent is using the disputed domain name in connection with a “landing page” i.e., a non-active web site that offers a search engine for Internet users to locate products and services that compete with Complainant’s products and services and to locate non-competing products and services that Complainant neither endorses nor recommends to its members/customers. The initial search engine either links the user to multiple search engines for the category listed or to web sites. Some of the links for products and services that compete with Complainant are found under the “Popular Category” section, and include such categories as “Financial Planning” with subcategories, “debt”, “credit cards”, “loans.”

For example, says Complainant, when the user clicks the “credit cards” link, the user is taken to a web page that features a category “Sponsored Links” including links to sites with headings such as “credit cards”, “American Express Card”, “credit card application.” These links take the user to a bank’s web site (Orchard Bank), the American Express web site, and cardoffersonline.com web site, respectively. The initial search engine web page also contains a “Sponsored Links” feature that Complainant says changes hour by hour (or minute by minute) and may differ depending on the user. On at least several occasions that Complainant accessed Respondent’s web site, there were links to restaurants in various cities around the world. Some of the other links for web sites not competing with Complainant contain the headings “health and beauty”, “vitamins” and “weight loss drugs. Copies of Respondent’s landing page using the domain name <patelcocu.org> as it appeared on November 1, 2005 and November 2, 2005, from two different users, was attached to the Complaint. Complainant asserts that Respondent’s landing page and the links change regularly.

In or about August, 2005, Complainant first learned of the disputed domain name registered by Respondent and the web site relating to the disputed domain name. Complainant says it did not authorize Respondent’s registration of the disputed domain name or its use on any web site. On September 6, 2005, Complainant, through its attorneys, sent an e-mail (a copy of which was attached to the Complaint) to Respondent, with a copy sent to the domain name registrar. Through counsel, Complainant demanded that Respondent immediately cease and desist from any use of the disputed domain name. Complainant says that it received no response to this e-mail from Respondent, and that the web site for <patelcocu.org> remains active on the Internet.

 

5. Parties’ Contentions

A. Complainant

Complainant asserts that the <patelcocu.org> domain name is confusingly similar to the PATELCO CREDIT UNION mark in which Complainant has rights; that Respondent has no rights or legitimate interests in respect of the domain name; and that the domain name was registered and is being used in bad faith.

B. Respondent

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

 

6. Discussion and Findings

Transfer or cancellation of the contested domain names will be ordered if Complainant has shown that the following three elements are present:

(i) the contested domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) the domain name registrant has no rights or legitimate interests in respect of the domain name; and

(iii) the contested domain name has been registered and is being used in bad faith.

In an administrative proceeding pursuant to the Policy, Rules and Supplemental Rules, the Complainant must prove that each of these three elements is present. Policy, Para. 4(a).

The following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith (Policy, Para. 4(b)):

(i) circumstances indicating that the registrant registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or

(ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that it is shown that the registrant has engaged in a pattern of such conduct; or

(iii) the registrant registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to his web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s web site or location or of a product or service on his web site or location.

On the other hand, any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate the registrant’s rights or legitimate interests to the domain name (Policy, Para. 4(c )):

(i) before any notice to the registrant of the dispute, his use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the registrant (as an individual, business, or other organization) have been commonly known by the domain name, even if the registrant has acquired no trademark or service mark rights; or

(iii) the registrant is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Respondent had the opportunity to respond and present evidence that it has rights or legitimate interests in respect of the contested domain names. Respondent chose not to do so. Complainant is not entitled to relief simply by reason of Respondent’s default, however, but the Panel can and does draw evidentiary inferences from Respondent’s failure to respond. Talk City, Inc. v. Robertson, WIPO Case No. D2000-0009 (February 29, 2000).

For example, Paragraph 14 of the Rules provides that:

“(a) In the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by these Rules or the Panel, the Panel shall proceed to a decision on the complaint.

(b) If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.”

The Panel now must decide whether Complainant has come forward with sufficient evidence to satisfy the requirements of Paras. 4(a)(i), (ii) and (iii) of the Policy.

A. Identical or Confusingly Similar

Complainant has demonstrated its rights in the PATELCO CREDIT UNION mark to the Panel’s satisfaction by its submission with the Complaint of its federal U.S. service mark registration for this mark, as well as evidence of common law usage of the mark.

The disputed domain name <patelcocu.org> is confusingly similar to the mark PATELCO CREDIT UNION in which Complainant has rights. The domain name shares the dominant portion of Complainant’s mark (“patelco”) with the added descriptive letters “cu”. These letters, says Complainant, are the commonly known acronym used by credit unions when identifying themselves to their members and the public as a credit union. The addition of the descriptive letters “cu” does not alter the meaning or significance of the term comprising the contested domain name so as to negate the confusing similarity of Complainant’s mark with the disputed domain name. Citigroup, Inc. v. Horoshiy, Inc., NAF Case No. 0406000290633 (NAF August 11, 2004). In addition, Respondent is trading off of Complainant’s name and mark by placing them (“patelco” in combination with “cu”) on the landing page for the disputed domain name, <patelcocu.org>, and using them for commercial gain without Complainant’s authorization.

Therefore, Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy to the Panel’s satisfaction.

B. Rights or Legitimate Interests

According to its web site (“www.activeideas.com”), Respondent “specializes in the Acquisition and Development of Internet Properties, Domain Names, and Websites.” Printed pages from Respondent’s web site were attached to the Complaint. When the user accesses the “Portfolio” link, then the “searchww.com” link, the user is taken to a landing page substantially in the same format as the landing page for the disputed domain name <patelcocu.org>. From this, Complainant avers that there is no evidence that, at any time prior to the September 6, 2005 notice from Complainant, Respondent used the disputed domain name in connection with a bona fide offering of goods or services. Rather, says Complainant, Respondent uses the disputed domain name for purposes of providing a landing page with search engines to re-direct consumers looking for Complainant’s web site to other web sites. In the absence of contrary evidence or argument from Respondent, the Panel is constrained to agree with Complainant’s contentions.

There is no proof that Respondent is commonly known by the disputed domain name. Respondent’s web site does not show that it does business as “patelcocu”, “patelco” or any other name similar to Complainant’s name and mark, PATELCO CREDIT UNION.

There also is no proof that Respondent is making a legitimate non-commercial or fair use of the disputed domain name. Complainant states that Respondent uses the disputed domain name to re-direct Internet users interested in Complainant’s products and services to a commercial web site that offers a search engine for users to locate competitive products and services as well as non-competitive products and services that are not endorsed by Complainant. In the absence of contrary evidence or argument from Respondent, the Panel is constrained to agree with Complainant’s assertions. Do the Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624 (August 21, 2000). Such activity is not a legitimate or non-commercial fair use of the disputed domain name. Citigroup, Inc. v. Horoshiy, Inc., Case No. 0406000290633 (NAF August 11, 2004).

Therefore, Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy to the Panel’s satisfaction.

C. Registered and Used in Bad Faith

Complainant asserts that credit unions commonly have “cu” in their domain names. Credit unions, as nonprofit corporations, also commonly use the suffix .org in their domain names. As support for these contentions, Complainant directs the Panel to the “www.creditunionsonline.com web site for a listing of credit unions and the domain names they use by clicking on each credit union’s name. Complainant alleges that Respondent chose Complainant’s name “patelco” followed by the descriptive acronym “cu” for the purpose of confusing and diverting Internet traffic, rightfully bound for the <patelco.org> web site, to the <patelcocu.org> web site. The use of the suffix .org with the acronym “cu”, says Complainant, further confuses consumers into thinking that Respondent’s web site is that of a nonprofit organization, in particular, a credit union. In the absence of contrary evidence or argument from Respondent, the Panel is constrained to agree with Complainant’s statements.

Complainant believes that Respondent’s use of the disputed domain name is done to create a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or location or of a product or service on Respondent’s web site or location as a result of the following conduct by Respondent: (a) Respondent’s use of a domain name that is confusingly similar to the mark PATELCO CREDIT UNION; (b) Respondent’s unauthorized placement of Complainant’s name and mark (“patelco” in combination with “cu”) on Respondent’s web site; (c) Respondent’ primary business activities being that of acquiring and developing Internet properties, domain names and web sites and creating and providing custom landing pages so that when accesses the Internet and types in “www.patelcocu.org” s/he will be directed to a landing page on which Respondent has placed content and links to search engines and web sites that are relevant to what they believe visitors to the <patelcocu.org> domain are searching for. According to Complainant, it is only because these visitors are familiar with Complainant and its mark that they may end up at the <patelcocu.org> landing page. Respondent’s web site contains links to search engines and web sites for financial service providers that compete with Complainant, and for non-competing products and services that are not endorsed by Complainant.

Complainant asserts that Respondent’s use of the disputed domain name <patelcocu.org> is done with the intent to attract, for commercial gain, Internet users to Respondent’s web site as a result of the following conduct by Respondent: Respondent’s conduct described in items (a) and (b) of the foregoing paragraph; and Respondent’s stated business activities as described in paragraph (c) of the foregoing paragraph. In the absence of contrary evidence or argument from Respondent, the Panel is constrained to agree with Complainant’s assertions.

Complainant further contends Respondent is aware that members of Complainant and persons familiar with Complainant who do not know Complainant’s domain name are likely to type in “patelcocu.org” when trying to locate Complainant’s web site because they are familiar with Complainant’s name and service mark and “cu” is the commonly known acronym for “credit union” and “.org” is a common suffix used for credit union Internet addresses. The Panel finds that this is mere supposition on the part of Complainant, with no proof submitted as to what Respondent is aware of or not regarding Complainant’s members.

Complainant finally asserts that Respondent acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant for valuable consideration in excess of Respondent’s out-of-pocket costs directly related to the domain name. Complainant bases this assertion upon that fact that Respondent is in the business of acquiring and developing Internet properties, domain names and web sites. The Panel cannot accept Complainant’s leap of logic in this respect.

The Panel does not accept all of Complainant’s arguments regarding Respondent’s alleged registration and use of the contested domain name in bad faith. However, Complainant has submitted sufficient evidence and argument to satisfy the requirements of paragraph 4(a)(iii) of the Policy to the Panel’s satisfaction.

 

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 domain name <patelcocu.org> be transferred to the Complainant.


Jonathan Hudis
Sole Panelist

Dated: February 27, 2006

 

Источник информации: https://internet-law.ru/intlaw/udrp/2005/d2005-1295.html

 

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