Xerox
Federal Credit Union v. Anthony Peppler d/b/a RealTimeInternet.com, Inc.
Claim
Number: FA0202000104583
PARTIES
Complainant is Xerox Federal Credit Union, El
Segundo, CA (“Complainant”). Respondent is
Anthony Peppler d/b/a RealTimeInternet.com, Inc., Fort Wayne, Indiana
(“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The domain name at
issue is <xfcu.com>,
registered with eNom, Inc.
PANEL
The undersigned
certifies that she has acted independently and impartially and that to the best
of her knowledge she has no known conflict in serving as Panelist in this
proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
PROCEDURAL
HISTORY
Complainant submitted
a Complaint to the National Arbitration Forum (the “Forum”) electronically on February
11, 2002; the Forum received a hard copy of the Complaint on February 14, 2002.
On February 11, 2002, eNom,
Inc. confirmed by e-mail to the Forum that the domain name <xfcu.com> is registered with eNom, Inc. and that Respondent
is the current registrant of the name. eNom,
Inc. has verified that Respondent is bound by the eNom, Inc. registration
agreement and has thereby agreed to resolve domain-name disputes brought by
third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution
Policy (the “Policy”).
On February 15, 2002,
a Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of March 7, 2002 by which
Respondent could file a Response to the Complaint, was transmitted to
Respondent via e-mail, post and fax, to all entities and persons listed on
Respondent’s registration as technical, administrative and billing contacts,
and to postmaster@xfcu.com by e-mail.
Having received no
Response from Respondent, using the same contact details and methods as were
used for the Commencement Notification, the Forum transmitted to the parties a
Notification of Respondent Default.
On March 13, 2002,
pursuant to Complainant’s request to have the dispute decided by a single-member
Panel, the Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the
communications records, the Administrative Panel (the “Panel”) finds that the
Forum has discharged its responsibility under Paragraph 2(a) of the Rules for
Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ
reasonably available means calculated to achieve actual notice to
Respondent.” Therefore, the Panel may
issue its decision based on the documents submitted and in accordance with the
ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and
principles of law that the Panel deems applicable, without the benefit of any
Response from Respondent.
RELIEF
SOUGHT
Complainant requests
that the domain name be transferred from Respondent to Complainant.
PARTIES’
CONTENTIONS
A. Complainant
makes the following allegations:
The <xfcu.com>
domain name is identical to Complainant's XFCU mark. Respondent has no rights or legitimate interests in the disputed
domain name. Respondent registered and used the disputed domain name in bad
faith.
B. Respondent did not
file a Response in this proceeding.
FINDINGS
Complainant
has used the XFCU mark since 1985 on its marketing materials, member
statements, website and all other member communications. Complainant has used <xfcu.org> as the
website for its credit union members sine 1997.
Complainant
notes that it used to own <xfcu.com> but accidentally failed to
renew the domain name, resulting in Respondent's purchase of the disputed
domain the very day Complainant's registration expired. Respondent has diverted the domain name to
<infostart.com> and when Internet users attempt to close out of the
window various other advertisements pop-up causing much dismay to credit union
customers who accidentally go to <xfcu.com> instead of
<xfcu.org>.
DISCUSSION
Paragraph
15(a) of the Rules instructs this Panel to “decide a complaint on the basis of
the statements and documents submitted in accordance with the Policy, these
Rules and any rules and principles of law that it deems applicable.”
In view
of Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of the Complainant's undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate pursuant to paragraph 14(b) of
the Rules.
Paragraph 4(a) of the
Policy requires that Complainant must prove each of the following three
elements to obtain an order that a domain name should be cancelled or
transferred:
(1) the domain name
registered by Respondent is identical or confusingly similar to a trademark or
service mark in which Complainant has rights; and
(2) Respondent has no
rights or legitimate interests in respect of the domain name; and
(3) the domain name
has been registered and is being used in bad faith.
Complainant
established in this proceeding that it has common law rights in the XFCU
trademark in issue through continued use since 1985. See MatchNet PLC. V. MAC Trading,
D2000-0205 (WIPO May 11, 2000) (citing British Broadcasting Corp. v. Renteria,
D2000-0050 (WIPO Mar. 23, 2000)) (noting that the UDRP “does not distinguish
between registered and unregistered trademarks and service marks in the context
of abusive registration of domain names” and applying the UDRP to “unregistered
trademarks and service marks”).
The
<xfcu.com> domain name is identical to Complainant's XFCU mark,
because it incorporates the entirety of Complainant's mark and merely adds the
generic top-level domain name ".com". It has been established that the addition of a generic top-level
domain name is irrelevant when considering whether a domain name is identical
or confusingly similar. See
Pomellato S.p.A v.
Tonetti, D2000-0493 (WIPO July 7, 2000) (finding
<pomellato.com> identical to Complainant’s mark because the generic
top-level domain (gTLD) “.com” after the name POMELLATO is not relevant).
The
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent
did not file a Response and in such circumstances the Panel is permitted to
presume that Respondent has no rights or legitimate interests in the disputed
domain name. See Pavillion Agency, Inc. v. Greenhouse Agency
Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to
respond can be construed as an admission that they have no legitimate interest
in the domain names).
Furthermore,
when Respondent fails to submit a Response, the Panel is permitted to make all
inferences in favor of Complainant. See Talk City, Inc.
v. Robertson, D2000-0009, (WIPO Feb. 29, 2000)
(“In the absence of a response, it is appropriate to accept as true all
allegations of the Complaint”).
Respondent
is using a domain name identical to Complainant's mark in order to divert
Complainant's customers to Respondent's website. This activity is not a bona fide offering of goods and services
pursuant to Policy ¶ 4(c)(i). See
Toronto-Dominion Bank
v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001) (finding no
rights or legitimate interests where Respondent diverted Complainant’s
customers to his websites); see also Big
Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding
no legitimate use when Respondent was diverting consumers to its own website by
using Complainant’s trademarks).
There
is no evidence on the record, and Respondent has not come forward to establish
any evidence, to show that Respondent is commonly known by the <xfcu.com>
domain name pursuant to Policy ¶ 4(c)(ii).
See Broadcom Corp. v.
Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no
rights or legitimate interests because Respondent is not commonly known by the
disputed domain name or using the domain name in connection with a legitimate
or fair use); see also CBS
Broadcasting, Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000)
(finding that Respondent has failed to demonstrate any rights or legitimate
interests in the <twilight-zone.net> domain name since Complainant had
been using the TWILIGHT ZONE mark since 1959).
It
can be inferred based on the fact that Respondent diverts Complainant's
customers to a website with "pop-up" advertisements that Respondent
is intentionally diverting Internet users to its website for its own commercial
gain and is therefore not making legitimate noncommercial, or fair use of the
disputed domain pursuant to Policy ¶ 4(c)(iii). See Kosmea Pty Ltd.
v. Krpan, D2000-0948 (WIPO Oct. 3, 2000) (finding no rights in the domain
name where Respondent has an intention to divert consumers of Complainant’s
products to Respondent’s site by using Complainant’s mark); see also Vapor Blast Mfg. Co. v. R & S Tech.,
Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s
commercial use of the domain name to confuse and divert Internet traffic is not
a legitimate use of the domain name).
The
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The
<xfcu.com> domain name is identical to Complainant's mark and the
Internet user will likely believe that there is an affiliation between
Respondent and Complainant. Since <xfcu.com>
is identical to an established mark, the mere registration of <xfcu.com>
by Respondent is evidence of bad faith pursuant to Policy ¶ 4(b)(iv). See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000)
(finding that bad faith registration and use where it is “inconceivable that
Respondent could make any active use of the disputed domain names without
creating a false impression of association with the Complainant”).
Respondent's
use of Complainant's mark is a misappropriation of Complainant's goodwill. This
also constitutes bad faith. See National Rifle Ass'n. v. fredg.com, FA
95837 (Nat. Arb. Forum Nov. 30, 2000) (finding bad faith where Respondent
registered the domain names <friendsofnra.com>, <friendsofnra.net>,
and <friendsofnra.org> with
the intention of using the domain names in connection with individual NRA
fundraising, but without permission from Complainant to use the registered
marks); see also Reuters Ltd. v.
Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding bad faith
where the Respondent attracted users to a website sponsored by the Respondent
and created confusion with Complainant’s mark as to the source, sponsorship, or
affiliation of that website.
The
Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Having
established all three elements required under the ICANN Policy, the Panel
concludes that the requested relief shall be hereby granted.
Accordingly,
it is Ordered that the domain name <xfcu.com> be transferred from
Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated:
March 25, 2002.
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