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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Alliant Credit Union v. Mark Andreev

Case No. D2007-1085

1. The Parties

The Complainant is Alliant Credit Union, Chicago, Illinois, United States of America, represented by Brinks Hofer Gilson & Lione, Chicago, Illinois, United States of America.

The Respondent is Mark Andreev, Gvardieskaya, Kara-Balta, Kyrgyzstan.

2. The Domain Name and Registrar

The disputed Domain Name <alliant.org> is registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 23, 2007. On July 27, 2007, the Center transmitted by email to eNom a request for registrar verification in connection with the Domain Name at issue. On July 27, 2007, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 August 13, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was September 2, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 10, 2007.

The Center appointed Ian Blackshaw as the sole panelist in this matter on October 1, 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 the Rules, paragraph 7.

4. Factual Background

The Complainant is a member-owned, not for profit financial cooperative, founded on October 26, 1935. The Complainant currently has more than 208,00 members with assets of nearly $4.5 billion, making it the eighth largest credit union in the United States of America, out of some 8,000 credit unions.

The Complainant began using the ALLIANT and ALLIANT CREDIT UNION trademarks in January 2004, when it officially changed its name from United Airlines Employees’ Credit Union to Alliant Credit Union. The Complainant currently refers to itself exclusively as “Alliant” and “Alliant Credit Union” including on its website “www.alliantcreditunion.com”.

Since its change of name, the Complainant has invested in excess of $10 million in marketing, signage, and advertising featuring the ALLIANT and ALLIANT CREDIT UNION trademarks, and has created widespread goodwill and consumer recognition by its actual and potential members. Since that time, the Complainant has acquired nearly 63,000 new members; and the number of active on-line users has grown from less than 3,000 to almost 50,000 members. The Complainant’s target for active on-line users is 80,000 by end of 2008 and 100,000 by the end of 2009. To support this influx of active on-line members, the Complainant has completely retooled its on-line channel.

The Complainant markets itself largely through its Internet presence, making wide use of the ALLIANT and ALLIANT CREDIT UNION trademarks. Currently, over 90% of all member transactions of the Complainant, on a monthly basis, are completed electronically, and an ever increasing number of them through the Complainant’s above-mentioned website.

Evidence of these assertions and matters has been provided to the Panel in the form of an Affidavit sworn by the Senior Vice President, Corporate Affairs, of the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions:

A1. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(Policy, paragraph 4(a)(i), Rules, paragraphs 3(b)(viii), (b)(ix)(1))

The disputed Domain Name consists solely of the Complainant’s ALLIANT trademark combined with the gTLD “.org”. The Domain Name, therefore, is identical to the Complainant’s ALLIANT trademark. See Champagne Lanson v. Development Services/MailPlanet.com, Inc., WIPO Case No. D2006-0006, where it was held that “[i]n the present case, the disputed domain name consists of Complainant’s LANSON trademark, with the single addition of the gTLD “.com” and is thus identical to the Complainant’s trademark.”

The disputed Domain Name also consists entirely of the dominant “Alliant” portion of the Complainant’s ALLIANT CREDIT UNION trademark, and is, therefore, confusingly similar thereto. See, e.g., F.M.Tarbell Co. d/b/a Tarbell, Realtors v. Name Catcher/Mark Lichtenberger, WIPO Case No. D2007-0189, concluding that “Tarbell” was the dominant portion of the TARBELL REALTORS mark, in which the Complainant had common law rights, and ordering the transfer of several domain names containing the word “Tarbell”.

Furthermore, the Complainant has extremely strong and well established common law rights in its ALLIANT and ALLIANT CREDIT UNION trademarks, especially on the Internet.

In the light of the above, the Complainant submits that the disputed Domain Name is identical to its ALLIANT trademark and confusingly similar to its ALLIANT CREDIT UNION trademark

A2. The Respondent has no rights or legitimate interests in respect of the domain name;

(Policy, paragraph 4(a)(ii), Rules, paragraph 3(b)(ix)(2))

The Respondent is not affiliated with the Complainant in any way, and the Complainant has never licensed nor otherwise authorized the Respondent to use the ALLIANT or ALLIANT CREDIT UNION marks, or any other trademark of the Complainant. Absent such authorization, the Respondent cannot have legitimate rights in the ALLIANT mark, the ALLIANT CREDIT UNION mark, or the Domain Name. See, e.g., Calvin Klein Trademark Trust and Calvin Klein, Inc. v. Jonathan Dardashti, WIPO Case No. D2001-1158 (“Nothing in the record suggests any legitimate interest of Respondent in the Domain Name. Complainants have not licensed Respondents to use its marks, and the site itself offers no connection (legitimate or otherwise) to the Calvin Klein name.”).

The Respondent is not using or preparing to use the disputed Domain Name in connection with a bona fide offering of goods and services. To date, the Domain Name contains nothing more than links to other websites, and does not itself offer any original content. See, e.g., QVC, Inc. and ER Marks, Inc. v. ActiveIdeas.com, WIPO Case No. D2005-1303 (“The use of a domain name that merely offers links to other websites is not a bona fide offering of goods and services pursuant to paragraph 4(c)(i)”).

In any event, the Respondent could not possibly use the disputed Domain Name in connection with a bona fide offering of goods or services, since such use inevitably would constitute an infringement of the Complainant’s ALLIANT and ALLIANT CREDIT UNION trademarks. See, e.g., Yahoo Inc v. Hugh Hamilton, Syrynx, Inc, WIPO Case No. D2000-1675 (“in the absence of any license or permission from Complainant to use its YAHOO! names and marks or to apply for or use any domain name incorporating those marks, it is clear that no actual or contemplated bona fide or legitimate use of the contested domain names could be claimed by Respondent.”).

The Complainant submits that The Respondent is not making a legitimate noncommercial or fair use without intent for commercial gain, but instead is using the disputed Domain Name in a misleading manner to attract consumers looking for the Complainant’s services, and then diverting them through links to other websites offering products that complete directly with those offered by the Complainant. See, e.g., Societe BIC v. LaPorte Holdings, LLC, WIPO Case No. D2005-0342 (“the Domain Names pointed out to a general page, which provided links to a number of websites offering competing products in competition to those of the Complainant, manufactured and sold under the BIC trademark. The Respondent’s such use does not qualify as bona fide offering of goods and services.”); Clad Holdings Corporation v. Kentech, Inc., WIPO Case No. D2006-0837 (“Nor does the Respondent appear to be using the domain names in relation with a bona fide offering of goods or services… The Respondent only appears to provide links leading to websites unrelated to the Respondent where ALL-CLAD products or competing products may be purchased.”).

In the light of the above, the Complainant respectfully submits that the Respondent has no rights or legitimate interest in the disputed Domain Name. Indeed, the Respondent cannot show any of the circumstances set forth in paragraph 4(c) of the Policy (or any other facts for that matter) which might establish such legitimate rights in the Domain Name.

A3. The domain name was registered and is being used in bad faith.

(Policy, paragraphs 4(a)(iii), 4(b); Rules, paragraph 3(b)(ix)(3))

The Respondent is a serial cybersquatter, having been found by previous panels to have registered domain names in bad faith. See, e.g., PNC Financial Services Group Inc. v. Mark Andreev, Claim No. FA0511000593127 (Nat. Arb. Forum June 16, 2005) (finding that “Respondent intentionally registered a domain name that contains Complainant’s well known mark in its entirety in order to divert Internet users seeking Complainant to Respondent’s website” and ordering transfer of domain name); Garry Kasparov v. Mark Andreev, Claim No. FA0505000471047 (Nat. Arb. Forum June 16, 2005) (finding bad faith by the Respondent and ordering transfer of domain name).

The Respondent’s prior registrations of domain names in bad faith are evidence of bad faith in this case. See, e.g., Weather Shield, Mfg., Inc. v. Domain Magic, LLC, WIPO Case No. D2007-0052 (“Respondent’s bad faith is also evidenced in its pattern of abusive registration, infringement, and cybersquatting”).

The Respondent is using the disputed Domain Name for commercial gain by luring consumers seeking the Complainant’s official website to the Respondent’s website and then directing those consumers through numerous links to other websites offering products competitive with those offered by the Complainant, presumably earning “click through commissions” from the owners of those websites in the process. Such conduct constitutes bad faith under paragraph 4(b)(iv) of the Policy. See, e.g., L’Oreal, Biotherm, Lancome Parfums et Beaute & Cie v. Unasi, Inc., WIPO Case No. D2005-0623 (“Such exploitation of the reputation of trademarks to obtain click-through commissions from the diversion of Internet users is a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous decisions”); Hunter’s Specialities, Inc. v. Hong Kong Names LLC, WIPO Case No. D2006-1250 (finding bad faith where “The domain name in dispute which is confusingly similar has, according to the evidence, no apparent purpose other than to trade on the goodwill of the Complainant’s Trademark and confuse Internet users through a ‘click through’ traffic revenue system”).

The fact that the Respondent’s web page located at the disputed Domain Name refers to the Complainant and contains links to websites associated with the Complainant’s competitors is evidence that the Respondent is aware of the Complainant’s trademark and, therefore, has registered the Domain Name in bad faith. See, e.g., TAG HEUER v. Whois Privacy Protection Service, Inc., WIPO Case No. D2005-0133 (“The fact that the Internet website corresponding to the domain name at issue includes various links to retailers of, among others, discounted TAG Heuer watches, indicates that Respondent is aware of Complainant’s trademark”); Garys & Company Newport Beach, Inc. v. David Webb, WIPO Case No. D2005-0892 (“Respondent’s use of the domain name for a web page offering sponsored search results, including a link named “Garys Island” and links to Complainant’s competitors, indicates that Respondent is aware of Complainant and is intentionally using the domain name to profit from creating a likelihood of confusion with Complainant’s marks”).

The Respondent’s failure to respond to the Complainant’s efforts to resolve this dispute is further evidence of bad faith. See, e.g., Deutsche Telekom AG v. Pimptel Inc., WIPO Case No. D2005-0928 (finding that Respondent’s failure to respond to letters from Complainant constituted evidence of bad faith).

In light of the above, the Complainant respectfully submits that the evidence of the Respondent’s bad faith use and registration of the disputed Domain Name is clear and compelling.

B. Respondent

The Respondent, having been duly notified of the Complaint, did not reply to the Complainant’s contentions nor take any other part in the present proceedings.

6. Discussion and Findings

To qualify for cancellation or transfer of the domain name at issue, the Complainant must prove each of the following elements of paragraph 4(a) of the Policy, namely:

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

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

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

In accordance with paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.

In accordance with paragraph 14(a) of the Rules, in the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by the Rules or the Panel, the Panel shall proceed to a decision on the Complaint; and (b) if a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences as it considers appropriate.

In accordance with paragraph 10(d) of the Rules, the Panel shall determine the admissibility, relevance, materiality and weight of the evidence.

In previous WIPO UDRP cases in which the respondent failed to file a response, the panel decisions were based upon the complainant’s assertions and evidence, as well as inferences drawn from the respondent’s failure to reply. See The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064; and also Kцstritzer Schwarzbierbrauerei v. Macros-Telekom Corp, WIPO Case No. D2001-0936.

Nevertheless, the Panel must not decide in the Complainant’s favor solely based on the Respondent’s default. See Cortefiel S.A. v. Miguel Garcнa Quintas, WIPO Case No. D2000-0140. The Panel must decide whether the Complainant has introduced elements of proof, which allow the Panel to conclude that its allegations are true.

A. Identical or Confusingly Similar

It is well established in previous WIPO UDRP cases that, where a domain name incorporates a complainant’s registered mark, this may be sufficient to establish that the domain name is identical or confusingly similar for the purposes of the Policy. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525.

In the present case, the disputed domain name incorporates identically the Complainant’s trademark ALLIANT.

Furthermore, the addition of the suffix ‘.org’ to the trademark ALLIANT is for registration purposes only, being a requirement of the Internet domain naming system, and does not serve as a distinguishing feature for trademark purposes. See The Bank of the Pacific v. Digi Real Estate Foundation, WIPO Case No. D2006-1112; and Columbia Insurance Company v. G Design, WIPO Case No. D2006-1617.

The Panel agrees with the Complainant’s contention that it has well-established common law rights in its trademark ALLIANT and that under the Policy it is not strictly necessary that a trademark be registered; a common law trademark, based on commercial use, is sufficient. See Consitex S.A. v. Mr. Hugo Bazzo, WIPO Case No. D2003-0520, in which case the panel stated that it “…accepts Complainant’s assertions that, as decided in previous panel decisions, it is not strictly necessary that a trademark is registered, and that a common law trademark is sufficient under the Policy.” And also Askonas Holt Ltd. v. Webocracy, WIPO Case No. D2000-0392, in which case the panel ordered the transfer of the domain name based on the complainant’s common law trademark rights, holding that “…the Policy does not require that a trademark be registered in order to be invoked under the Policy.”

In view of all this, the Panel finds that the disputed domain name registered by the Respondent is identical or confusingly similar to the trademark ALLIANT, in which the Complainant has demonstrated, to the satisfaction of the Panel, that it has well-established trademark rights through extensive prior use in commerce for a number of years.

B. Rights or Legitimate Interests

In order to determine whether the Respondent has any rights or legitimate interests in respect of the disputed domain name (paragraphs 3(b)(ix)(2) of the Rules and 4(c) of the Policy), attention must be paid to any of the following circumstances in particular but without limitation:

- Whether before any notice to the Respondent of the dispute, there is any evidence of the Respondent’s 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;

- whether 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;

- whether the Respondent is making a legitimate non commercial or fair use of the domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue.

There is no evidence to show that the Respondent was acting in pursuance of any rights or legitimate interests when registering the disputed domain name. Indeed, in view of the Complainant’s widely-known trademark ALLIANT and its professional services sold under that brand name, the Respondent must in all likelihood have known, when registering the disputed domain name that the Respondent could not have _or, indeed, claimed_ any such rights or interests. Apart from that, if the Respondent had any such rights and interests, the Respondent would have reasonably been expected to assert them, which the Respondent clearly has not done, by not replying to this Complaint. See 1-800-Flowers.com, Inc, Fresh Intellectual Properties, Inc., Fannie May Confections, Inc., v. G Design, WIPO Case No. D2006-0977.

Nor has the Respondent been authorized or licensed by the Complainant to use the Complainant’s trademark ALLIANT in the disputed domain name. Indeed, the adoption by the Respondent of a domain name confusingly similar to the Complainant’s trademark inevitably leads to the diversion of the Complainant’s consumers to the Respondent’s website (see further on this point below) and the consequential tarnishing of the Complainant’s trademark. In other words, the Respondent is trading for commercial gain on the good name and reputation of the Complainant’s business and its trademark ALLIANT and thereby unfairly attracting to its own business the goodwill that the Complainant has established in its trademark over many years in the United States of America, evidence of which has been provided to the Panel, without any right or legal justification for doing so.

Also, the Panel finds no evidence that the Respondent has used, or undertaken any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. On the contrary, the Respondent has used the disputed domain name for a website that contains no original content but only links to other websites offering products that compete with those of the Complainant. See QVC, Inc. and ER Marks, Inc. v. ActiveIdeas.com, WIPO Case No. D2005-1303, in which it was held that “[t]he use of a domain name that merely offers links to other websites is not a bona fide offering of good and services pursuant to paragraph 4(c)(i).”

Likewise no evidence has been adduce that the Respondent has commonly been known by the disputed domain name; nor, for the reasons mentioned above, is the Respondent making a legitimate non-commercial or fair use of the Disputed domain name.

Therefore, for all the above reasons, the Panel concludes that the Respondent has neither rights to nor legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Regarding the bad faith requirement, paragraph 4(b) of the Policy lists four examples of acts, which prima facie constitute evidence of bad faith. However, this list is not exhaustive, but merely illustrative. See Nova Banka v. Iris, WIPO Case No. D2003-0366.

Paragraph 4(b)(iv) of the Policy is particularly relevant to the present case and provides that there is evidence of bad faith in the following circumstances:

“(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.”

Based on the evidence provided in the case file, the Panel agrees with the Complainant’s contention that the Respondent, by registering the disputed domain name, is trading on the Complainant’s valuable goodwill established in its widely known trademark ALLIANT. Furthermore, the fact that the Respondent’s website refers to the Complainant and contains links to other Websites associated with competitors of the Complainant suggests that the Respondent must have been aware of the Complainant’s trademark and, as such, amounts to bad faith on the part of the Respondent. See TAG HEUER v. Whois Privacy Protection Service, Inc., WIPO Case No. D2005-0133.

Again, by registering and using the disputed domain name incorporating the Complainant’s widely known trademark, ALLIANT, the effect of which is to mislead Internet users and consumers into thinking that the Respondent is, in some way or another, connected to, sponsored by or affiliated with the Complainant and its business; or that the Respondent’s activities are approved or endorsed by the Complainant. None of which, according to the case file is, in fact, the situation. Such misleading consequences, in the view of the Panel, constitute bad faith on the part of the Respondent. See Columbia Insurance Company v. Pampered Gourmet, WIPO Case No. D2004 0649.

Furthermore, the fact that the disputed domain name includes the entire trademark of the Complainant is a further factor supporting a conclusion of bad faith. See Segway LLC v. Chris Hoffman, WIPO Case No. D2005-0023; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028. For a domain name can only be used in good faith by the owner of the respective right or by a licensee, neither of which is the position in the present case.

The Panel, for the reasons and previous WIPO UDRP cases cited above by the Complainant, agrees with the Complainant’s contentions that the Respondent’s previous pattern of behavior of cybersquatting also constitutes bad faith on the part of the Respondent. See, in particular, Weather Shield, Mfg., Inc. v. Domain Magic, LLC, WIPO Case No. D2007-0052, where it was held that “Respondent’s bad faith is also evidenced in its pattern of abusive registration, infringement, and cybersquatting.”

Likewise, the failure by the Respondent to reply to the Complainant’s Complaint or otherwise take any part in these proceedings, in the view of the Panel, also indicates bad faith on the part of the Respondent.

Therefore, for all the above reasons, the Panel concludes that the Respondent has registered and is using the disputed domain name in bad faith.

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 <alliant.org> be transferred to the Complainant.


Ian Blackshaw
Sole Panelist

Dated: October 15, 2007

 

Источник информации: https://internet-law.ru/intlaw/udrp/2007/d2007-1085.html

 

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