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and Mediation Center
ADMINISTRATIVE PANEL DECISION
Alliant Credit Union v. Texas International Property Associates
Case No. D2007-1086
1. The Parties
Complainant is Alliant Credit Union, an association, with offices in Chicago, Illinois, United States of America, represented by Brinks, Hofer, Gilson & Lione, also of the United States of America.
Respondent is Texas International Property Associates, an entity with offices in Dallas, Texas, United States of America, represented by the Law Office of Gary Wayne Tucker, also of the United States of America.
2. The Domain Name and Registrar
The disputed domain name, <aliantcreditunion.com>,
is registered with Compana, LLC.
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 Compana, LLC. a request for registrar verification in connection with the domain name at issue. On August 10, 2007, Compana LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and confirming certain details of the registration agreement. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (“Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“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 August 13, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was September 2, 2007. Respondent submitted a Response on September 3, 2007.1
The Center appointed Debra J. Stanek as sole panelist on September 12, 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
Complainant began using the marks ALLIANT and ALLIANT CREDIT UNION in January 2004 when it adopted a new name. Under the ALLIANT and ALLIANT CREDIT UNION marks, including on the “www.alliantcreditunion.com” website, Complainant offers credit union services.
The disputed domain name was registered on January 30, 2005. The website offers links to other websites, including those that offer products and services that compete with those of Complainant.
5. Parties’ Contentions
Complainant makes the following contentions, many of which are supported by the affidavit of its Senior Vice President, Corporate Affairs:
Complainant previously offered credit union services to employees and retirees of United Airlines under the name: United Airlines Employees’ Credit Union. After changing its name to Alliant Credit Union in January 2004, it continued to offer those same services under the marks ALLIANT and ALLIANT CREDIT UNION.
Since Complainant’s board approved the name change in August 2003, Complainant has spent over $10 million in marketing, signs, and advertising that features its marks. Much of Complainants marketing efforts are through its website at its “www.alliantcreditunion.com” which permits a variety of online financial transactions, including permitting new members to sign up and open new accounts.
In addition, since August 2003, Complainant has sought to acquire, and has acquired, new members in its credit union through establishing relationships with other entities. Complainant is currently the eighth largest credit union in the United States of America.
Complainant therefore has strong and well-established common law rights in its ALLIANT and ALLIANT CREDIT UNION mark.
The disputed domain name is confusingly similar to Complainant’s distinctive ALLIANT and ALLIANT CREDIT UNION marks. The disputed domain name incorporates Complainant’s ALLIANT CREDIT UNION mark, except for one of the “l”s in “alliant,” which Complainant contends is typosquatting.
Respondent has no rights or legitimate interests in respect of the disputed domain name. Complainant has not authorized Respondent to use the <aliantcreditunion.com> domain name and Respondent is not affiliated with Complainant.
Respondent’s use of the domain name for a website that contains links to other sites, without offering any original content is not a bona fide offering of goods or services. Respondent cannot make any bona fide offering, because its use of the domain name “inevitably” infringes Complainant’s ALLIANT and ALLIANT CREDIT UNION marks. Further, the links provided on Respondent’s website include links to products that compete with those of Complainant suggesting that Respondent is seeking to attract visitors looking for Complainant’s website and then diverting them for commercial gain.
The Respondent registered and is using the disputed domain name in bad faith because:
- Other panels have found Respondent to have registered other domain names in bad faith.
- Respondent is using the domain name to attract visitors seeking Complainant’s website and presumably generating “click through” revenue when redirecting them to other competing sites.
- The domain name is a “typosquat” version of Complainant’s mark.
- Respondent’s website refers to Complainant, demonstrating awareness of Complainant’s mark.
Respondent makes the following contentions:
Complainant does not have enforceable rights in the marks ALLIANT and ALLIANT CREDIT UNION because the United States Patent and Trademark Office (“USPTO”) has refused registration of Complainant’s application to register the mark ALLIANT CREDIT UNION finding that the mark would be likely to cause confusion with an existing registration for the mark ALIANT for banking services and with a prior filed application to register ALLIANT RESOURCES NETWORK for financial services.
Complainant should have disclosed the USPTO’s refusal to register the ALLIANT CREDIT UNION mark because:
had Complainant disclosed the USPTO action, it could not argue that it has any rights to the trade name it is claiming but that another entity not a party to this action may well have a superior claim to not only the disputed domain name but to the domain name Complainant operates as well.
Complainant has not established rights at common law because it has offered no “evidence of consumer surveys, focus group studies, or even substantial anecdotal evidence” and has provided “little evidence of any independent or unsolicited media coverage of the actual term at issue or its own use of that term.”
Further, the distinctions between Complainant’s claimed trademark and the disputed domain name are “critical”
Complainant has not established that Respondent has no rights or legitimate interests in the disputed domain name. The links provided on Respondent’s website are provided automatically by Google in response to search requests by users. Respondent has no intent to target Complainant and has no control over the terms that appear on its site.
Respondent may fairly use descriptive or generic terms as a commercial domain name, regardless of whether they are federally-registered; the fact that advertising revenues may be generated by Respondent’s activity demonstrates a legitimate interest.
Respondent registered and began using the disputed domain long before notice of this dispute with no knowledge of Complainant’s unregistered trade name.
Respondent registered the disputed domain name because it believed it was a descriptive term to which no party had exclusive rights. This evidences Respondent’s good faith intent to register common generic words.
Complainant has not demonstrated that the disputed domain name was registered and is being used in bad faith.
Because Complainant has no service or trademark, it follows that Respondent did not register, and is not using, the disputed domain name in bad faith.
Respondent is in the business of providing locator services. Respondent is not attempting to pass itself off as Complainant. Rather, Respondent has created a good faith business that is valuable to Internet users seeking to locate providers of goods and services, through reference to common, well-known, generic, descriptive, and geographically descriptive terms.
Respondent had no actual knowledge of Complainant’s mark and as panels have recognized the mere registration without actual knowledge does not impute a finding of bad faith.
6. Discussion and Findings
In order to prevail, Complainant must prove:
(i) The <aliantcreditunion.com> domain name is identical or confusingly similar to Complainant’s mark; and
(ii) Respondent has no rights or legitimate interests in respect of the <aliantcreditunion.com> domain name; and
(iii) The <aliantcreditunion.com> domain name has been registered and is being used in bad faith.
Policy, Paragraph 4(a). The Policy sets out examples of circumstances that may evidence a Respondent’s rights or legitimate interests in a domain name, see, Policy, Paragraph 4(c), as well as circumstances that may evidence a Respondent’s bad faith registration and use, see Policy, Paragraph 4(b).
A. Identical or Confusingly Similar
Complainant must establish that the disputed domain name is either identical or confusingly similar to its mark.
Complainant alleges that it has been using the ALLIANT and ALLIANT CREDIT UNION marks since 2004 and that it has marketed its services extensively. Complainant’s allegations are supported by the affidavit of a senior officer providing details regarding the length of time Complainant has used its marks, number of members in Complainant’s credit union, amount of money on deposit, and amounts spent on advertising and promotion featuring the marks. The Panel finds, consistent with the consensus view, that Complainant has demonstrated rights in the ALLIANT CREDIT UNION mark. See, e.g., WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Paragraph 1.7 (setting out consensus view as requiring complainant asserting rights in unregistered trademark rights to show that the mark has become a distinctive identifier associated with complainant or its goods and services, such as by providing evidence of length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition).
While it might have been preferable for Complainant to disclose the fact and status of its pending trademark application, the Panel declines to suggest that Complainant had a duty to do so.2 Further, the Panel does not accept Respondent’s argument that the USPTO’s refusal to register Complainant’s ALLIANT CREDIT UNION mark means that Complainant is barred from asserting that it has “any rights” in that mark. That refusal is related to the federal registration of the mark, not whether or not Complainant may use, or has common law rights in the mark.
As a general matter, a domain name is likely to be deemed confusingly similar to a mark if it incorporates the mark or a variation of the mark. Here, the domain name does incorporate a very slight variation to the distinctive and dominant portion of the mark – “alliant” – followed by the identical descriptive term “credit union.”
Accordingly, the Panel finds that Respondent’s domain name is confusingly similar to a mark in which Complainant has rights.
B. Rights or Legitimate Interests
The Panel, consistent with the consensus view, finds that Complainant may establish that Respondent has no rights or legitimate interests in respect of the <aliantcreditunion.com> domain name by making a prima facie showing that none of the three examples of rights or legitimate interests in a domain name set forth in paragraph 4(c) of the Policy are applicable. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Question 2.1 (once complainant makes prima facie case, respondent has burden of showing rights or legitimate interests in the domain name).
Paragraph 4(c) of the Policy sets out the following examples:
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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 does not contend that it is commonly known by the <aliantcreditunion.com> domain name or a similar name. The Panel concludes that Complainant has made an adequate prima facie showing that Respondent was not, before notice of the dispute, using the domain name in connection with a bona fide offering of goods or services and was not making a legitimate noncommercial or fair use of the domain name.
Respondent has not met its burden of showing any rights or legitimate interests in the domain name. Under these circumstances, the Panel rejects Respondent’s arguments that it may “fairly use descriptive or generic terms as a commercial domain name, regardless of whether they are federally-registered” and its assertion that it “registered the Disputed Domain because it believed it was a descriptive term to which no party had exclusive rights.” In particular, the Panel does not find that “Alliant Credit Union” is a descriptive or generic term (recognizing, however, that the term “credit union” is generic) and does not find Respondent’s assertion that it believed that the ALLIANT CREDIT UNION mark was descriptive to be credible.
As noted above, the disputed domain name is confusingly similar to Complainant’s mark. Visitors to the site are presented with what appear to be links related to the same or similar services as those of Complainant. Given the distinctive nature of the initial and dominant portion of Complainant’s mark and the trivial difference between Complainant’s mark and the disputed domain name, it is difficult to conceive of circumstances in which Respondent might make a bona fide offering, particularly of similar goods or services.
Instead, the Panel concludes that on the facts presented, and the inferences drawn from those facts, Respondent has no rights or legitimate interests in respect of the <aliantcreditunion.com> domain name.
C. Registered and Used in Bad Faith
As noted above, the disputed domain name is confusingly similar to the ALLIANT CREDIT UNION mark. It is therefore reasonable to conclude that Respondent’s site would attract visitors who are actually seeking Complainant.
Further, as noted above, the Panel cannot conceive of any use of the domain name, by virtue of the fact that it contains of the most minor of variations of the distinctive “Alliant” component of Complainant’s mark plus the generic term “credit union”, that would be other than to “intentionally attempt to attract, for commercial gain, Internet users . . . , by creating a likelihood of confusion with the 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”. See, Rules paragraph 4(b).
Under these circumstances, the Panel finds that Respondent has registered and is using the domain name in bad faith.
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, <aliantcreditunion.com> be transferred to Complainant.
Debra J. Stanek
Dated: September 26, 2007
1 Based on the time that it was received by the Center, it appears that the Response was transmitted from the United States on September 2, 2007, and is therefore considered timely filed.
2 Complainant’s pending U.S. trademark application is based, as is permitted under U.S. law, 15 U.S.C. § 1051(b), on its bona fide intention to use the mark. Thus, the application merely establishes that, on the date that it was filed, applicant intended to use the mark as a trademark.