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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Patelco Credit Union v. Nevis Domains LLC

Case No. D2007-0223

 

1. The Parties

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

The Respondent is Nevis Domains LLC of Charlestown, Nevis, Saint Kitts and Nevis.

2. The Domain Name and Registrar

The disputed domain name <patelcocu.org> is registered with #1 Domain Names International, Inc. dba 1dni.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 14, 2007. On February 19, 2007, the Center first transmitted by email to #1 Domain Names International, Inc. dba 1dni.com a request for registrar verification in connection with the domain name at issue. Several reminders from the Center were subsequently sent to the Registrar. On April 12, 2007, #1 Domain Names International, Inc. dba 1dni.com finally transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and confirming the contact details for the administrative and technical contact. 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 13, 2007. In accordance with paragraph 5(a) of the Rules, the due date for Response was May 3, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 8, 2007.

The Center appointed Brigitte Joppich as the sole panelist in this matter on May 15, 2007. 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 paragraph 7 of the Rules.

 

4. Factual Background

The Complainant is a California state-chartered credit union and non-profit corporation with its principal place of business in San Francisco. It currently has over 205,000 members and assets exceeding US D$3.5 billion. The Complainant owns a US service mark registration for PATELCO CREDIT UNION (registration number 3008411, the “PATELCO Mark”) as well the domain name <patelco.org>.

The Respondent registered the disputed domain name on November 4, 2006.

The disputed domain name was already subject of earlier proceedings under the Policy and transferred to the Complainant following the administrative panel decision in Patelco Credit Union v. Activeideas.com, Inc., WIPO Case No. D2005-1295. It is unclear, however, how the Complainant lost the domain name again.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are given in the present case:

(i) The domain name is confusingly similar to the Complainant’s trademark as it is identical to the name PATELCO, which is combined with the commonly known acronym CU used by credit unions when identifying themselves to their members and the public as a credit union. Due to significant marketing and promotional efforts, the Complainant has developed considerable and valuable goodwill and reputation with respect to its name and the PATELCO Mark and has thereby attained the necessary secondary meaning in its name and such mark to establish common law rights.

(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name for several reasons: The Respondent is not a licensed financial institution, there is no evidence that the Respondent used the disputed domain name in connection with a bona fide offering of goods or services, the Respondent is not commonly known by the disputed domain name, and the Respondent is not making a legitimate non-commercial or fair use of the disputed domain name as it uses the disputed domain name to re-direct Internet users interested in the Complainant’s products and services to a commercial web site that offers a search engine for users to locate financial products and services as well as advertisements placed by competitors of the Complainant.

(iii) The domain name was registered and is used in bad faith: The Complainant contends that the Respondent’s use of the disputed domain name is done to create a likelihood of confusion with the PATELCO Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location as a result of the Respondent’s conduct. In particular, even though the Respondent’s primary business activity is not that of providing financial services, the Respondent has placed content and links to search engines and websites that are relevant to financial services on it site. Moreover, previous WIPO and NAF decisions reveal that the Respondent has a history of using domain names in bad faith. In the Complainant’s view, the use of the disputed domain name <patelcocu.org> is furthermore done with the intent to attract, for commercial gain, Internet users to the Respondent’s website. Finally, the Complainant believes that the Respondent acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring it to the Complainant for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the domain name.

B. Respondent

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

 

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements are present:

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

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

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

A. Identical or Confusingly Similar

The disputed domain name fully incorporates the distinctive part of the PATELCO Mark (i.e. “patelco”) in which the Complainant has exclusive rights. The added descriptive letters CU (standing for “credit union”) correspond to the addition CREDIT UNION in the PATELCO Mark and do not alter the meaning or significance of the domain name (cf. Patelco Credit Union v. Activeideas.com, Inc., WIPO Case No. D2005-1295).

Furthermore, it is well established that the specific top level domain name is not an element of distinctiveness that can be taken into consideration when evaluating the identity and similarity of the complainant’s trademark and the disputed domain name (cf. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2005-1525; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374).

Therefore, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by the Respondent, shall demonstrate its rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.

(i) before any notice to the respondent of the dispute, the use by the respondent 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 respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the service marks at issue.

The Respondent did not file a response in this proceeding. Therefore, the Complainant’s assertions that the Respondent lacks rights and legitimate interests stand unrebutted. Based on the evidence before the Panel, the Respondent apparently did not make any bona fide offering of goods or services in connection with the domain name and is neither commonly known by the domain name nor contends to make a legitimate non-commercial or fair use of the domain name. Accordingly, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests under paragraph 4(a)(ii) and (c) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.

(i) circumstances indicating that the respondent has 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 respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent 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 the respondent has engaged in a pattern of such conduct; or

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

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 respondent’s website or location or of a product or service on its website or location.

The circumstances mentioned in paragraph 4(b) of the Policy are not exclusive, while the two elements of the third requirement of the Policy are cumulative conditions: the Complainant must show that the domain name was registered in bad faith and is being used in bad faith.

As to bad faith registration, the following circumstances are, in the absence of contrary argument from the Respondent, sufficient for the Panel to find that the Respondent knew about the Complainant’s trademark rights when registering the disputed domain name: (1) the Respondent chose the Complainant’s exact name “Patelco”, (2) the Complainant asserted not only registered trademark rights but also a secondary meaning and common law rights in such name, (3) such name is followed in the disputed domain name by the acronym “cu” (standing for the descriptive nouns “credit” and “union” that are part of the Complainant’s PATELCO Mark), and (4) the suffix “.org” is typical of credit unions as nonprofit corporations.

As to bad faith use, the Respondent’s attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s Mark is sufficient for the Panel for a finding under paragraph 4(b)(iv) of the Policy. By fully incorporating the PATELCO Mark into the domain name, the Respondent seems indeed to be trying to divert traffic intended for the Complainant’s website to the Respondent’s own active website which is headed “For resources and information on Credit report and Credit” and where the Respondent provides search engines like “Credit” or “Mortgages” as well as links to the Complainant’s competitors. The Respondent is thus engaging in the revenue generating activity sometimes called click-through, whereby the Respondent typically collects fees from third parties for each Internet user referred to the Respondent’s site. In order to maximise traffic, the Respondent has appropriated the Complainant’s trademark and goodwill, relying on Internet users to find the Respondent’s website through search techniques or by presuming that <patelcocu.org> would be one of the domain names used by the Complainant. The finding of bad faith use is supported by the fact that the Respondent has been involved in eight different UDRP cases in 2006, which all ended with the transfer of the disputed domain name to the complainant. On this evidence, the Panel finds bad faith proven under paragraph 4(b)(iv) of the Policy.

Therefore, the Complainant has also satisfied the requirements of paragraph 4(a)(iii) of the Policy.

 

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.


Brigitte Joppich
Sole Panelist

Dated: May 29, 2007

 

Источник информации: https://internet-law.ru/intlaw/udrp/2007/d2007-0223.html

 

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