Kinecta Federal Credit Union v.
Claim Number: FA0802001153943
Complainant is Kinecta Federal Credit Union (“Complainant”), represented by Timothy
I. Oppelt, of Styskal, Wiese & Melchione, LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <kinecta.com>, registered with Specific Name, Inc.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 27, 2008; the National Arbitration Forum received a hard copy of the Complaint on February 27, 2008.
On March 12, 2008, Specific Name, Inc. confirmed by e-mail to the National Arbitration Forum that the <kinecta.com> domain name is registered with Specific Name, Inc. and that Respondent is the current registrant of the name. Specific Name, Inc. has verified that Respondent is bound by the Specific Name, 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 March 24, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 14, 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 postmaster@kinecta.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <kinecta.com> domain name is identical to Complainant’s KINECTA mark.
2. Respondent does not have any rights or legitimate interests in the <kinecta.com> domain name.
3. Respondent registered and used the <kinecta.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Kinecta Federal Credit Union, is a large credit union, which has over $4 billion in assets and is currently serving 214,000 member-owners across the country. Complainant owns the trademark registration with the United States Patent and Trademark Office (“USPTO”) for the KINECTA mark (Reg. No. 2,592,584 issued July 9, 2002), which Complainant uses extensively to promote and provide its services.
Respondent, Stanley Pace, registered the <kinecta.com> domain name on December 18, 2007 and is currently using the disputed domain name to display links to third party websites, many of which offer products and services in direct competition to Complainant.
Respondent has been also been the respondent in another UDRP
arbitration, Neiman Marcus Group, Inc. v.
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 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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also 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.”).
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 alleges right in KINECTA mark based on its USPTO trademark registration. Under the Policy, registration of a mark with an appropriate government authority, such as the USPTO, confers rights in the mark to the complainant. The Panel finds that Complainant has successfully established rights to the KINECTA mark for the purposes of Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”).
Complainant further alleges Respondent’s <kinecta.com> domain name is identical
to its KINECTA mark. The disputed domain
name contains Complainant’s mark in its entirety and adds the generic top-level
domain name (“gTLD”) “.com.” The Panel
finds the addition of a gTLD is irrelevant in distinguishing the disputed
domain name because by the nature of the Internet all domain names are required
to have a top-level domain. Therefore,
the Panel concludes that Respondent’s <kinecta.com>
domain name is identical to Complainant’s KINECTA mark pursuant to Policy ¶ 4(a)(i). See Pomellato
S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding
<pomellato.com> identical to the complainant’s mark because the generic
top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Daedong-USA, Inc. v. O’Bryan Implement Sales, FA 210302
(Nat. Arb. Forum Dec. 29, 2003) (“Respondent's domain name, <kioti.com>,
is identical to Complainant's KIOTI mark because adding a top-level domain name
is irrelevant for purposes of Policy ¶ 4(a)(i).”).
The Panel finds that
Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have rights or legitimate interests in the <kinecta.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests under Policy ¶ 4(a)(ii). Based on the allegations made in the Complaint, the Panel finds that Complainant has established a prima facie case pursuant to Policy ¶ 4(a)(ii). Since Respondent has not responded to the Complaint, the Panel may assume Respondent lacks rights and legitimate interests in the disputed domain name, but will examine the record to determine if such rights or interests are present, pursuant to Policy ¶ 4(c). See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Euromarket Designs, Inc. v. Domain For Sale VMI, D2000-1195 (WIPO Oct. 26, 2000) (“In the absence of direct evidence, the complainant and the panel must resort to reasonable inferences from whatever evidence is in the record. In addition . . . Paragraph 14(b) of the Rules [authorizes] a panel to draw such inferences from respondent’s failure to respond ‘as it considers appropriate.’”).
Complainant alleges Respondent is not commonly known by the <kinecta.com> domain name. The WHOIS information identifies Respondent
as “Stanley Pace” and the record does not provide any other information
suggesting Respondent might be known by the disputed domain name. Therefore, the Panel concludes that
Respondent lacks rights and legitimate interests in the <kinecta.com> domain name pursuant to Policy ¶ 4(a)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum
Further, Respondent is using the <kinecta.com> domain name to
display a web page advertising goods and services in direct competition with
Complainant. The Panel presumes
Respondent is earning click-through fees for each redirected Internet
user. The Panel concludes this use of
the <kinecta.com> domain name
is not in connection with a bona fide offering of goods and services pursuant
to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶
4(c)(iii). See Bank of Am. Corp. v. Nw.
Free Cmty. Access, FA 180704
(Nat. Arb. Forum Sept. 30, 2003) (“Respondent's
demonstrated intent to divert Internet users seeking Complainant's website to a
website of Respondent and for Respondent's benefit is not a bona fide offering
of goods or services under Policy ¶ 4(c)(i) and it is
not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Wells Fargo & Co. v. Lin
Shun Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that using a
domain name to direct Internet traffic to a website featuring pop-up
advertisements and links to various third-party websites is neither a bona
fide offering of goods or services under Policy ¶ 4(c)(i)
nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) because the
registrant presumably receives compensation for each misdirected Internet
user).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
As noted above, Respondent is using the <kinecta.com> domain name to redirect Internet users to a
website that displays links to Complainant’s competitors. This use of the disputed domain name likely
disrupts Complainant’s business by diverting potential customers to websites of
Complainant’s competitors in violation of Policy ¶ 4(b)(iii). See Lambros v. Brown, FA 198963 (Nat. Arb. Forum Nov. 19, 2003) (finding that
the respondent registered a domain name primarily to disrupt its competitor
when it sold similar goods as those offered by the complainant and “even
included Complainant's personal name on the website, leaving Internet users
with the assumption that it was Complainant's business they were doing business
with”); see also Travant
Solutions, Inc. v. Cole, FA 203177 (Nat. Arb. Forum Dec. 6, 2003)
(“Respondent registered and used the domain name in bad faith, pursuant to
Policy ¶ 4(b)(iii), because it is operating on behalf of a competitor of
Complainant . . .”).
Further, Respondent’s <kinecta.com> domain name resolves to a website featuring links to Complainant’s competitors. Respondent presumably receives referral fees from these advertisers. By incorporating Complainant’s entire KINECTA mark, Respondent has also created a likelihood of confusion as to the affiliation and endorsement of the disputed domain name and corresponding website. The Panel therefore concludes Respondent has engaged in bad faith registration and use of the <kinecta.com> domain name pursuant to Policy ¶ 4(b)(iv). See Amazon.com, Inc. v. Shafir, FA 196119 (Nat. Arb. Forum Nov. 10, 2003) (“As Respondent is using the domain name at issue in direct competition with Complainant, and giving the impression of being affiliated with or sponsored by Complainant, this circumstance qualifies as bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iv).”); see also Fanuc Ltd v. Mach. Control Servs., FA 93667 (Nat. Arb. Forum Mar. 13, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by creating a likelihood of confusion with the complainant's mark by using a domain name identical to the complainant’s mark to sell. . . products); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by displaying the complainant’s mark on its website and offering identical services as those offered by the complainant).
Complainant also alleges Respondent has a pattern of registering domain names to prevent the owner of a trademark from reflecting the mark in a corresponding domain name. See Nat’l Abortion Fed’n v. Dom 4 Sale, Inc., FA 170643 (Nat. Arb. Forum Sept. 9, 2003) (finding bad faith pursuant to Policy ¶ 4(b)(ii) because the domain name prevented the complainant from reflecting its mark in a domain name and the respondent had several adverse decisions against it in previous UDRP proceedings, which established a pattern of cybersquatting); see also Armstrong Holdings, Inc. v. JAZ Assocs., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names that infringe upon others’ famous and registered trademarks). Evidence shows that Respondent has been involved in another UDRP arbitration that resulted in ordering Respondent to transfer the disputed domain name to Complainant, further evidence of bad faith registration and use of the <kinecta.com> domain name pursuant to Policy ¶ 4(b)(ii).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <kinecta.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: May 2, 2008
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