Royal Credit Union v. WebQuest.com
Claim Number: FA0802001143489
Complainant is Royal Credit Union (“Complainant”), represented by Anthony J Bourget, of Bourgetlaw.com, Wisconsin, USA. Respondent is WebQuest.com (“Respondent”), represented by David M. Dingeman, Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <rcu.net>, registered with Moniker.
The undersigned certifies that he has acted independently and impartially and, to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 8, 2008; the National Arbitration Forum received a hard copy of the Complaint on February 11, 2008.
On February 8, 2008, Moniker confirmed by e-mail to the National Arbitration Forum that the <rcu.net> domain name is registered with Moniker and that the Respondent is the current registrant of the name. Moniker has verified that Respondent is bound by the Moniker 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 13, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 4, 2008 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 firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on March 3, 2008.
On March 10, 2008 Complainant filed a timely Additional Submission. On March 16, 2008, Respondent filed a timely Additional Submission.
On March 6, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant, Royal Credit Union (RCU), contends that it has common law rights in the service mark RCU based on long standing and substantial use of the mark in commerce.
The domain name <rcu.net> is confusingly similar to Royal Credit Union’s federally registered mark of RCU E-BRANCH, the domain names RCU owns and RCU’s common law mark RCU used in connection with its banking services.
Respondent, WebQuest.com, has no rights or legitimate interests with respect to the domain name. WebQuest.com’s use of <rcu.net> is to detract RCU’s clients and users from RCU’s website of <rcu.org>. On the website <rcu.net> WebQuest.com has links that state “Royal Credit Union” and “Rcu EAU Claire” and these links provide avenues to search results for advertisements of other financial websites. WebQuest.com does not provide any services or products on this website. WebQuest.com has not been commonly known by <rcu.net>. WebQuest.com is not using <rcu.net> for a legitimate noncommercial or fair use of the mark without intent for commercial gain.
WebQuest.com has registered and is using <rcu.net> in bad faith. Particularly, WebQuest.com has intentionally attempted to attract, for commercial gain, Internet users to its web site (or other on-line locations), by creating a likelihood of confusion with RCU’s service mark as to the source, sponsorship, affiliation and endorsement of their website and its content. First, WebQuest.com uses the domain <rcu.net> which is confusingly similar to RCU’s service mark. Second, Webquest.com provides advertisements on <rcu.net> of other institutions offering financial services similar to RCU’s financial services. Third, WebQuest.com provides content on <rcu.net> that is descriptive of RCU’s business including the links of “Rcu ORG” (RCU’s home website is <rcu.org>), “Royal Credit Union” (which is RCU’s complete business name), “Rcu EAU Claire” (RCU’s home offices are located in Eau Claire, WI), and “Royal Credit Union EAU Claire” (again, WebQuest.com uses RCU’s full name in connection with RCU’s home office location). WebQuest.com has been using <rcu.net> in an attempt to intentionally attract, for commercial gain, Internet users away from RCU’s website by creating a likelihood of confusion.
Respondent admits Complainant has a U.S. federal trademark registration in the stylized design plus word, compound mark for RCU E-BRANCH as listed on the U.S. PTO website for registration number 2510187. Complainant’s federal registration of the mark issued on November 20, 2001 and the application for this registration was filed on February 9, 2001. Respondent denies Complainant’s stylized compound mark, RCU E-BRANCH is identical or confusingly similar to RCU.
Respondent was unaware of Complainant’s rights in RCU E-BRANCH or alleged exclusive rights in RCU and registered <rcu.net> on October 31, 2000 because Complainant had not yet filed their trademark application and <rcu.net> was an available three or four letter generic type domain name of which no one had exclusive rights to or registered. This registration occurred before Complainant applied for their RCU E-BRANCH trademark registration application.
With respect to Complainant’s alleged common-law trademark rights in RCU, Complainant uses a stylized RCU image in the upper left-hand corner of its websites <royalcreditunion.com>, <royalcreditunion.net> and <rcu.org>, and, at best, only uses this image as a trade name, not a trade mark or service mark.
Complainant does not use this mark as an identifier of goods and/or services nor has Complainant provided any evidence to substantiate their claims of common law trademark rights. Complainant has not provided any evidence that they have acquired secondary meaning in the mark RCU. Complainant’s possible use of the acronym RCU as a trade name is not a “trade or service mark right.”
Complainant’s use of the stylized RCU shows that no notice of trademark rights are provided, such as using a superscripted “TM” after the image or using it as a source of goods or services.
Complainant has never applied for a federally registered trademark for RCU because they cannot prove that they have acquired secondary meaning in the term as a service mark. Complainant’s use is not exclusive; a Google search of “RCU credit union” returned 13,100 results including Redwood Credit Union, Rochdale Credit Union, Rosenort Credit Union, Railways Credit Union, Riverside Credit Union, Revelstoke Credit Union, and Riverview Credit Union who use RCU in the html title and search terms, all of whom appeared in the first 50 result. Complainant has never filed any infringement suits against any of the 54 other RCU federal credit unions who may claim use of RCU as a trade name or mark.
Specifically, Complainant has failed to prove common-law rights in the mark RCU as source of services in banking or financial services and Complainant failed to show it had acquired secondary meaning in connection with banking or financial services.
Respondent’s registration of <rcu.net> in October, 2000, pre-dates Complainant’s trademark application filing date of February 9, 2001 and registration date of November 20, 2001 for RCU E-BRANCH; The long established policy of UDRP Panels is that a trademark registration must predate the domain registration.
On October 31, 2000, Respondent registered <rcu.net> simply because it was an available 3-letter domain name that it believed no party had exclusive rights to. Respondent has registered many domain names which are either generic, common words or random 3 or 4 letter acronym combinations. Because the domain name is merely a three-letter abbreviation, the Respondent has rights or legitimate interests in <rcu.net> pursuant to Policy ¶ 4(a)(ii).
At the time of registering this domain name, no one had applied for a trademark registration for RCU or any variation thereof.
Respondent has had <rcu.net> registered since October 2000 without any notice of dispute prior to receiving notice of this UDRP complaint. Respondent registered this domain name eight years ago to add to its collection of generic and 3 or 4 letter acronym websites for use with a bona fide offering of goods or services, i.e., to use in advertising pay-per-click sites.
Respondent never knew or suspected that RCU is or was a valid service mark. The fact that Respondent owns generic domain names or acronym domain names is not evidence of bad faith.
Complainant has not provided any evidence that Respondent registered <rcu.net> to specifically divert customers from or disrupt the business of Complainant.
Respondent operated <rcu.net> for eight (8) years as a pay-per-click search engine without dispute.
Respondent, who has registered <rcu.net> continuously since the year 2000, has made no attempt to sell the domain name to the Complainant or its competitors during the eight years of registration.
Respondent is not, and has not been, attempting to divert or confuse by claiming sponsorship, endorsement or affiliation with the Complainant. Respondent had a third party advertising company responsible for content on <rcu.net>. Once it was learned that someone claimed alleged rights in the mark RCU, Respondent immediately switched third party advertising providers and eliminated any contested material.
Respondent has not engaged in a pattern of registrations designed to block or prevent the Complainant from registering their trademarked name.
Respondent never received constructive notice of a dispute through a cease and desist letter, trademark registration or otherwise that Complainant believes he has rights in the mark RCU.
Respondent never attempted to profit from Complainant’s alleged use of RCU as it had never heard of such alleged use nor given constructive notice; Respondent never diverted customers from Complainant.
C. Complainant’s Additional Submission
Complainant contends that it has established common law rights. Complainant has used the RCU mark as a trademark/service mark. Complainant has established common law rights in the RCU trademark pursuant to Policy ¶ 4(a)(i) through the continuous and extensive use of the RCU mark since at least as early as 1971. Over at least the past 37 years the customers of Complainant and the general public have come to associate the RCU mark with Complainant. Both the word mark aspect and stylized variety of the mark have been extensively and continuously used by Complainant, and such use pre-dates registration of the domain name <rcu.net>. Complainant’s large base of customers/members spans beyond Wisconsin, and also enjoys the services of Complainant via the longstanding and well-established website at <rcu.org>.
Moreover, RCU is inherently distinctive of Complainant’s services. Even so, Complainant’s ongoing and extensive uses further demonstrate the RCU mark has also acquired secondary meaning and thus further supports a finding that Complainant enjoys common law rights in the mark.
In addition to RCU having secondary meaning and/or being inherently distinctive, the federal registration of the mark RCU E-BRANCH supports the position that RCU functions as a trademark, and not merely a trade name. RCU E-BRANCH is a compound mark in which RCU is a separately identifiable component, and used specifically as a service mark. RCU is not a term that is disclaimed in the registration. The RCU mark is set in its own font and bold print, and is clearly identifiable as its own component. RCU also appears as the first component of the composite, and is highlighted as the only lettering in complete bold. RCU, as the initial bolded term, is the dominant aspect of the registration. Even if RCU is not the most dominant aspect, that term is used as an identifier of services and not solely as a trade name as Respondent contends. The federal registration is further evidence that RCU has been used as a service mark in connection with electronic banking services since at least July 17, 2000, prior to registration of <rcu.net>. Given such evidence, together with the use of the stylized and word versions of the mark, it is clear RCU is a common law trademark of Complainant.
While Complainant uses the term RCU as both a trademark and in some instances as a trade name, such dual use does not defeat the common law rights enjoyed by Complainant for so many years. Also, while others may use the RCU mark to identify their respective services, such third party use does not defeat Complainant’s own common law trademark rights. There is no requirement in the UDRP Policy requiring a Complainant to own the exclusive rights in the mark. Rather, Paragraph 4(a)(i) requires only that the domain name registered by Respondent to be identical or confusingly similar to a trademark or service mark in which Complainant has rights.
Use of the stylized version of the mark does not demonstrate the mark is merely a trade name lacking common law rights rather, the stylized version also functions as a trademark as it too is used in advertisement of Complainant’s services. Complainant also extensively uses the word mark RCU on its website and elsewhere. Further, Complainant has used the RCU mark to identify the source of its electronic banking services at least since April 24, 1996 when it registered the domain name <rcu.org> and established its RCU Personal Branch website.
It is irrelevant whether Complainant has ever applied for a federally registered trademark for the single term RCU; it is irrelevant whether Complainant ever filed any infringement suits against other credit unions; and it is irrelevant whether other users show up on a Google search. Also, using a “TM” legend in connection with a mark that identifies goods and/or services is not required to receive common law rights in the mark. Such rights exist upon use, not upon registration or affixation of a legend.
Accordingly, Complainant has established that RCU is “a trademark in which Complainant has rights.” The domain name is identical to the RCU common law trademark. Thus, the first element of the Policy under Paragraph 4(a) is satisfied.
The domain name is confusingly similar to the federally registered RCU E-BRANCH service mark. The RCU component is a distinctive portion of the E-BRANCH mark. The design element and E-Branch wording components of the registration do not constitute an inseparably integrated part of the term RCU, and thus the term RCU is considered as being an independent element from the remaining portions. The services offered under Complainant’s RCU mark and through the disputed domain name <rcu.net> are identical. Further, the services referred to under the domain name specifically target customers or potential customers of Complainant. Indeed, the <rcu.net> pages specifically reference Complainant by name, offer identical services, and even promote an association with Eau Claire, Complainant’s home office and headquarters. Having identical services offered under a confusingly similar mark is especially troubling in an online financial environment where concerns of identity theft and other mischief are real. Considering the mark in its entirety, in light of the similarity of the marks and identical nature of the services, the domain name in dispute is at least confusingly similar to Complainant’s federally registered mark. Thus, the first element of the Policy is again satisfied.
There should be no finding that Respondent has rights or legitimate interests in <rcu.net>.
If the mark and domain name are identical, as in this case, using the mark in a domain name for commercial gain does not create a legitimate interest in the domain name. Also, since Respondent cannot demonstrate that it has been commonly known by the domain name under Policy ¶ 4(c)(ii), it has failed to establish any rights or legitimate interest to the domain name for purposes of Policy ¶ 4(a)(ii).
At the time of registration of the present domain name, Complainant’s <rcu.org> domain name and related websites had already been operational for a period of about five years. Moreover, use of the <rcu.org> domain name and related website containing the RCU trademark identifying Complainant’s services was not hidden and was certainly accessible and on notice to the world at that time.
Respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to Complainant and presumably with the purpose of earning a commission or pay-per-click referral fee does not evidence rights or legitimate interests in the domain name.
Respondent registered and used the <rcu.net> in bad faith. The <rcu.org> domain and website had been operational for several years prior where the mark RCU was used to identify Complainant’s services. Respondent has been attempting to divert or confuse by claiming sponsorship, endorsement or affiliation with the Complainant even though a third-party may have controlled the information on <rcu.net>, pages reference RCU, Royal Credit Union EAU Claire, Rcu EAU Claire, among other confusing uses of Complainant’s mark. Providing this content on its website without the permission of Complainant is clear evidence of using the website in bad faith to drive users from Complainant’s website and services to Respondent’s website or some other website. Even if a third party was hired to place information on Respondent’s website, it is clear Respondent is responsible for the contents of the website. The fact of Complainant’s <rcu.org> domain and accompanying website were known to Respondent as evidenced by such use.
D. Respondent’s Additional Submission
Complainant has failed to show extensive use of the mark. For a name to become distinctive through secondary meaning, Complainant must prove secondary meaning by evidence such as sales under the mark, advertising, consumer surveys and media recognition. Complainant has failed to provide such evidence. As a result, Complainant has not shown that the trade name RCU is distinctive.
Complainant argues the date of first use of a mark trumps date of registration; however, UDRP decisions have always used the date of trademark application and registration as relevant.
Respondent has rights or legitimate interests in respect of the disputed domain name.
Respondent did not register <rcu.net> eight years ago in bad faith because Respondent did not contemplate that Complainant existed. Complainant even admitted that it only advertised in the Wisconsin area. It was not until a year later that Complainant filed for an application for RCU E-BRANCH.
It is irrelevant that <rcu.org> was registered prior to <rcu.net>; Panelists have only considered Complainant’s trademark registration date relative to Respondent’s registration of the domain name. Respondent registered <rcu.net> prior to Complainant’s application and registration of its compound trademark.
Complainant admits that <rcu.org> was used to “identify Complainant’s services” Complainant admits that <rcu.org> was not used to identify it as a source of goods or services. This is the definition of a trade name; not a trademark/service mark. Panelists have not found that the mere existence of a domain name provides trademark notice of rights in the name.
Respondent did allow a third party to determine the content; however, once Respondent became aware of Complainant’s alleged trademark rights, it immediately changed service providers.
Currently RCU has a federally registered mark in RCU E-BRANCH, which was registered on November 11, 2001 and has registration number 2,510,187. RCU E-BRANCH is a service mark registered for online banking services.
Further, RCU owns the following domain names, among numerous others pertaining to RCU: <rcu.org> - owned since April 24, 1996; <royalcreditunion.com> - owned since at least June 30, 2007; and <royalcreditunion.net> - owned since at least June 19, 2007. RCU uses these domain names in connection with its online banking services.
RCU has used the mark RCU in addition to the written out “Royal Credit Union,” to assist in distinguishing itself from other credit unions providing banking services since 1964.
Respondent, WebQuest.com, Inc., is in the business of providing pay-per-click search engines pertinent to generic domain names, since at least as early as 1998.
Respondent’s domain names including <rcu.net> are operated by a third party advertising company who adds content based on the top search engine results for the search term entered.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”
Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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.
As Complainant has failed to satisfy the third element of registration and use in bad faith, it is unnecessary for the Panel to address the first two elements.
Registration and Use in Bad Faith
The Panel finds that the <rcu.net> domain name is comprised of an abbreviation which may stand for several different things and is generic in nature. Although there is evidence of recent use of the domain name indicating Respondent’s actual knowledge of Complainant and its mark, there is no evidence showing that Respondent had such knowledge when it registered the domain name eight years ago. Therefore, Complainant has failed to prove registration in bad faith under Policy ¶ 4(a)(iii). See Hydrologic Servs., Inc. v. Name Delegation, FA 707617 (Nat. Arb. Forum July 12, 2006) (finding no bad faith registration and use of the <hysr.com> domain name because “Given the brevity of the disputed domain name, the obscurity of the mark, the geographic locations of Respondent had actual knowledge of Complainant or its mark when it registered the disputed domain name.”); see also U.S. Fire Arms Mfg. Co. v. Salvia Corp., FA 612350 (Nat Arb. Forum Feb. 1, 2006) (finding no bad faith registration and use by the respondent of the <usfa.com> domain name because at least seventeen entities other than the complainant used the mark and the respondent did not register the domain name with the complainant specifically in mind). Complainant has failed to sustain its burden of proof under Policy ¶ 4(a)(iii) that Respondent registered the disputed domain name in bad faith.
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <rcu.net> domain name not be transferred from Respondent to Complainant.
The Honorable Charles
K. McCotter, Jr. (Ret.), Panelist
Dated: March 21, 2008
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