National Arbitration Forum
DECISION
Claim Number: FA0806001210174
PARTIES
Complainant is Hawaii Community Federal Credit Union (“Complainant”), represented by Kasey
Weirich, of Hawaii Community Federal Credit Union,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hawaiicommunityfcu.com>, registered
with Compana,
Llc.
PANEL
The undersigned certifies that he or she has acted independently and
impartially and to the best of his or her knowledge has no known conflict in
serving as Panelist in this proceeding.
Mr. Peter L. Michaelson, Esq. as Panelist.
PROCEDURAL HISTORY
The Complaint was brought pursuant to the Uniform Domain Name Dispute
Resolution Policy (“Policy”), available at <icann.org/services/udrp/udrppolicy24oct99.htm>, which was
adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on
August 26, 1999, and approved on October 24, 1999, and in accordance
with the ICANN Rules for Uniform Domain Name Dispute Resolution Policy
(“Rules”) as approved on October 24, 1999, as supplemented by the National
Arbitration Forum Supplemental Rules for Uniform Domain Name Dispute Resolution
Policy then in effect (“Supplemental Rules”).
Complainant submitted a Complaint to the National Arbitration Forum
(“Forum”) electronically on June 16, 2008; the Forum received a hard copy of
the Complaint on June 30, 2008.
On June 18, 2008, Compana, Llc confirmed by e‑mail to the Forum
that the <hawaiicommunityfcu.com>
domain name is registered with Compana, Llc and that Respondent is the current
registrant of the name. Compana, Llc has
verified that Respondent is bound by the Compana, Llc registration agreement
and has thereby agreed to resolve domain‑name disputes brought by third
parties in accordance with the Policy.
On July 8, 2008, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of July 28, 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@hawaiicommunityfcu.com by e‑mail.
A timely Response was received and determined to be complete on July
28, 2008.
On August 6, 2008, pursuant to Complainant’s request to have the dispute decided by a single‑member Panel, the Forum appointed Mr. Peter L. Michaelson, Esq. as Panelist and set a due date of August 20, 2008 to receive the decision from the Panel. Owing to unexpected time conflicts experienced by the Panel all of which constituted unforeseen circumstances, the Forum, at the request of the Panel, extended this due date to September 3, 2008.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. Confusing similarity/identical
Complainant contends that the disputed domain name is confusingly similar to its mark HAWAII COMMUNITY FEDERAL CREDIT UNION.
Specifically, Complainant alleges that the disputed domain name consists of the words “HAWAII COMMUNITY” followed by the letters “FCU”, with the latter being a commonly known abbreviation for “federal credit union”.
Hence, Complainant concludes that it has met the requirements of paragraph 4(a)(i) of the Policy.
2. Rights and legitimate
interests
Complainant contends that, for any of various reasons, Respondent has no rights or legitimate interests in the disputed domain name under paragraph 4(a)(ii) of the Policy.
First, Complainant states that Respondent is not associated, in any
manner, with Complainant.
Second, Complainant alleges that Respondent’s ownership, registration and operation of the
name, particularly given its inclusion of the abbreviation “FCU”, implies to
Internet users that Respondent is associated, in some fashion, with a federal
credit union. Given that no such
association exists, Respondent could potentially use the name in conjunction
with some malicious activity towards members of Complainant’s credit union,
such as through phishing and/or constructing and operating a mock website which
would mimic Complainant’s current website, all to Complainant’s ultimate
detriment.
Third, inasmuch as the name
specifically references Complainant ‑‑ given the meaning generally
accorded to the abbreviation “FCU”, Respondent, which is named “Texas International Property Associates,”
is highly unlikely to be known by or identifiable through the name.
Lastly, Respondent is not making either a bona fide or legitimate fair use of the name. Specifically, Respondent uses the name to point to a site which contains a listing of sponsored (pay‑per‑click) links which forward Internet users, who click on any such link, to a non‑specific URL that pertains to the disputed domain name. By so using the name, Respondent is misleadingly diverting those users to third‑party sites that have nothing to do with Complainant and its services. Furthermore, Respondent’s website, resolvable through the name is also an adult dating site and also has references to personal webcams, webcam chat, flirt chat, online dating, and gay chat, none of which has any relevance to any federal credit union, let alone Complainant and its services, but any of which could potentially mislead Internet users and tarnish Complainant’s mark. Such a use does not constitute either a fair use or a legitimate bona fide use of the disputed domain name.
3. Bad faith use and
registration
Complainant contends that, for any
one of multiple reasons, Respondent has registered and is using the disputed
domain name in bad faith, hence in violation of paragraph 4(a)(iii) of the
Policy.
First, Complainant alleges that Respondent uses the name in a pay‑per‑click
environment that is designed to lure Internet users away from Complainant’s
website.
Second, Respondent has registered the name in order to prevent
Complainant from reflecting its trademark in a name.
Third,
Complainant alleges that Respondent, through its use of the name as an address
of a website of sponsored links, having no connection whatsoever with
Complainant or its services, is intentionally attempting to attract, for
commercial gain, Internet users to Respondent’s site by creating a likelihood
of confusion with Complainant’s site.
B. Respondent
1. Confusing
similarity/identical
Respondent disputes Complainant’s contention of confusing similarity
for the simple reason that Complainant has not shown that it has any trademark
rights in the term “Hawaii Community Federal Credit Union” as required under
paragraph 4(a)(1) of the Policy, thus Complainant has failed to qualify under
that paragraph.
Specifically, in support of its view, Respondent argues that: (a)
despite the fact that Complainant has a “registered trademark,” its
registration is not federal in nature but rather state‑issued; and
(b) Complainant has apparently confused a trade name registration in the
State of
Moreover, as best understood by the Panel, Respondent takes the
position that, if Complainant has an Hawaiian State trademark registration,
then that registration conveys no exclusive trademark rights for the simple
reason that prior panels have held that state trademark registrations are not
examined and thus do not represent persuasive evidence of ownership of a valid,
distinctive trademark citing to, inter
alia, Aquascape Designs, Inc. v.
Vertical Axis, Inc., FA 629222 (Nat. Arb. Forum March 7, 2006).
Further, Respondent contends that, absent any federal registration, Complainant
is relegated to showing that it has rights under a common law mark, but the
record of devoid of any evidence that it has established such rights.
2. Rights and legitimate
interests
Respondent, contrary to Complainant’s view, argues that it has rights
and legitimate interests in the disputed domain name.
First, Respondent contends that click‑through sites, such as the
one it operates, constitutes a bona fide
offering of goods and services in the absence, as here, of any bad faith on the
part of Respondent in registering and using the name. In that regard, Respondent admits it
contracts with “Hitfarm,” which connects its own websites to Respondent’s site,
but does so to offer a legitimate business of targeted advertising
searches. Those searches are undertaken
by Google and Yahoo in accordance with their terms of business and are
triggered by search requests entered by Internet users who visit Respondent’s
site. Respondent has no control over
what terms for which advertisers bid on either Google or Yahoo and hence what
terms will appear on Respondent’s website.
Respondent further bases its view, citing to, inter alia, Admiral Ins.
Servs. v. Dicker, D2005‑0241 (WIPO June 4, 2005), with the
proposition that a domain name holder is not responsible for potentially
offending content where that holder has a contract with third‑parties,
such as Google or Yahoo, which control the content.
Second, Respondent contends that it is simply using descriptive,
generic and geographic terms which it combined together into a composite term
as a commercial domain name, which it is legitimately entitled to do so
regardless of whether the composite term is federally‑registered or, as
here, not, and with registration of the composite term as the disputed domain
name merely being on a “first come, first served basis”.
3. Bad faith use and
registration
Respondent disputes Complainant’s position that registered and used the
disputed domain name in bad faith.
First, Respondent states that on the date, March 18, 2006, on which the
name was registered and continuing to the present, no federally registered
trademark existed for the mark “HAWAII COMMUNITY FEDERAL CREDIT UNION.” Further, on March 18, 2006, Respondent, being
separated by “some 3700 miles and a large part of the
Second, Respondent contends that Complainant has failed to demonstrate,
as required, that Respondent intended to confuse consumers who then sought out Complainant.
Third, Respondent has registered thousands of domain names which consist, as here, of electronically registered generic words and descriptive phrases to which no other party can claim exclusive use. Such actions are a legitimate business and are done in good faith. Last, Respondent did not register the name to sell to Complainant or
any other party.
FINDINGS
A copy of the WHOIS registration record for
the disputed domain name appears in Exhibit C to the Response. As indicated, the domain name was registered
on March 18, 2006.
A. Complainant’s HAWAII
COMMUNITY FEDERAL CREDIT UNION Mark
Complainant owns a state trademark
registration, issued by the Department of Commerce and Consumer Affairs of the
State of
(stylized lettering with design)
State
of
Renewed: April 21, 2003; Expires: June 18, 2013
This mark is currently registered for use in
connection with "promoting thrift among its members and creating a source
of credit for provident and productive purposes.”
B. The Parties
Complainant is a
federally chartered credit union which provides financial services to more than
35,000 members in the State of
Respondent’s website at <hawaiicommunityfcu.com> is linked to a “Hitfarm” website which performs a targeted advertising search, using the disputed domain name as input, to display a list of links related to that name and through which Respondent earns click‑through (pay‑per‑click) revenue. Specifically (and rather unfortunately the pleadings are rather sparse on salient details), once an Internet user reaches Respondent’s site, that user is then diverted to the “Hitfarm” website. The latter site, given that the user attempted to reach a site addressed by the disputed domain name, undertakes a search, apparently through either Google or Yahoo, to ultimately yield sponsored advertising links related to that particular name. “Hitfarm” then displays those links on the page returned to the user with Respondent earning revenue each time the user clicks on one of those links.
DISCUSSION
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.
A. Trademark Validity/State
Registrations
Respondent expends significant energy and ink in arguing that inasmuch
as applications for state trademark registrations, such as the Hawaiian
trademark registration here, are not subjected to the same or even a similar
level of scrutiny as a federal trademark application would encounter in the
United States Patent and Trademark Office (USPTO), then the resulting state
trademarks, once registered, are not sufficiently distinctive and thus
effectively convey no rights of exclusivity to their owners. Hence, Respondent basically concludes that
state registrations cannot provide sufficient rights to a complainant under
paragraph 4(a)(1) of the Policy, thus necessitating that Complainant relegate
itself to proving that either it has a federal trademark registration or that
it has acquired adequate rights, through use, to a sufficiently distinctive
common law (unregistered) trademark.
Respondent’s views are sorely misplaced.
First, paragraph 4(a)(1) is not as limited as Respondent would have
this Panel believe. In that regard, all
that this paragraph requires is that a domain name be one which contains a mark
in which “the complainant has rights.”
As plainly evident, this paragraph contains no limitation or restriction
on the genesis of those rights, their extent or the nature of the underlying
examination or process that ultimately yielded those rights. The Policy does not define the term
“rights.” Given that, it seems rather
reasonable to this Panel to proceed under well‑known canons of statutory
construction which mandate that words in a statute or regulation and in the
absence of any definition or language therein to the contrary, are to be
accorded their plain meaning.
Consequently, the wording “complainant has rights” in paragraph 4(a)(1)
can be simply interpreted to mean that Complainant must possess rights in a
mark that can be legally enforced to prevent another from infringing the mark.
As will shortly become clearly evident, trademark registrations issued
by the State of
This Panel, based on its own experience over many years with state
trademark registrations across a number of different states in the US, takes
judicial notice of the well‑known fact that a state trademark issuing
authorities subject their trademark applications to considerably less rigor
than would the USPTO. Nevertheless, the
level of such scrutiny is irrelevant to this Panel, as long as that which
results from whatever process is used at a state level yields trademark rights
that can be judicially enforced.
Such is indeed the case here.
This conclusion becomes rather self‑evident from simply examining,
even just cursorily, the governing Hawaiian statutes in force that govern its
trademark system ‑‑ which clearly Respondent did not do.
Specifically, first, HRS (Hawaiian Revised Statutes) § 482‑21
defines a mark capable of being registered as “[a] mark by which the goods or
services of any applicant for registration may be distinguished from the goods
or services of others” and then lists various exceptions, none of which is
relevant here (but all of which are similar to those enumerated in § 2 of the
Lanham Act which governs federal trademarks).
Under HRS §482‑22, any person may “file in the office of the
director [of the Department of Commerce and Consumer Affairs]... an application for registration of that mark
setting forth ...:
(1) the name and business address of the person ... applying for
registration ...,
(2) the goods or services on or in connection with which the mark is
used, the mode or manner in which the mark is used on or in connection with
such goods and services, and the class in which the goods or services fall;
(3) the date on when the mark was first used anywhere, and the date
when it was first used in this State ...; and
(4) a statement that the applicant is the owner of the mark, the mark
is in use, and to the knowledge of the person verifying the application, no
other person has registered, either federally or in this State, or has the
right to use, the mark either in the identical form thereof or in such near
resemblance thereto as to be likely, when applied to the goods or services of
the other person, to cause confusion, to cause mistake, or to deceive ...”.
Once an application for registration is filed, under HRS § 482‑23(a),
it is then subject to examination: “[u]pon the filing of an application for
registration and payment of the application fee, the director shall cause the
application to be examined for conformity with this part.” Examination includes determining whether that
mark is unregisterable under § 482‑21(1)‑(6) where, of
particular note, paragraph (5) precludes those marks from registration that
are:
(a) merely descriptive or descriptively misdescriptive of the
applicants’ goods or services with which the mark is used,
(b) primarily geographically descriptive or deceptively misdescriptive
of those goods or services, or
(c) is primarily a surname;
and paragraph (6) precludes those marks that consist “of a mark which
so resembles a mark registered in this State or a mark or trade name previously
used by another and not abandoned, as to be likely, when used on or in
connection with the goods or services of the applicant to cause confusion or
mistake or to deceive.” Moreover, § 482‑23(e)
specifies that “if an earlier‑filed application is granted registration,
then other applications seeking registration for the same or confusingly
similar marks for the same or related goods or services shall be rejected. Any rejected applicant may bring an action
for cancellation of the registration upon grounds of prior or superior rights
to the mark ....” It bears emphasizing
that § 482‑21 expressly mandates that states “nothing in this
paragraph shall prevent the registration of a mark used by the applicant which
has become distinctive of the applicant’s goods or services.” Consequently, by collectively viewing HRS §
482‑23 conjunction with § 482‑21 as they must be, the Panel is left
with but one simple and patently obvious conclusion: a mark, registerable under
this statutory scheme, must be sufficiently distinctive, so as to distinguish
the goods and services of its applicant, from marks applied to similar goods or
services of others, else registration will be refused.
Once a mark is so registered, it can be judicially enforced through the
Hawaiian State Courts. In that regard,
HRS § 482‑24 states in pertinent part: “[t]he original or copy ... of a
certificate of registration issued under this part shall be admissible in
evidence as sufficient proof of the registration or a mark in any action or
judicial proceeding in any court of this State.” Infringement is defined under HRS § 482‑31
as being use by any person who “uses without the consent of the registrant, any
reproduction, counterfeit, copy, or colorable imitation of a mark registered
under this part in connection with the sale, distribution, offering for sale,
or advertising of any goods or services on or in which such use is likely to
cause confusion or mistake, or to deceive, as to the source of origin of such
goods or services ....” As remedies to
infringement, a trademark owner may seek, under HRS § 482‑35, injunctive
or monetary relief and/or court‑ordered destruction of infringing goods
as well as, in the case of willful infringement or bad faith actions, treble
damages and attorneys’ fees, this provision stating, in pertinent part:
“[t]he owner of a mark registered under this part may proceed by suit
to enjoin the manufacture, use display, or sale of any counterfeits or
imitations of the mark and any court of competent jurisdiction may grant injunctions to restrain such
manufacture, use, display or sale ... and may require the defendants to pay ... all profits derived from and all
damages suffered by reason of such wrongful manufacture, use, display or
sale; and the court may also order that any counterfeits or imitations ... be destroyed. The court ... may enter judgment for an
amount not to exceed three times the lost
profits and damages incurred by the owner, and award reasonable attorneys’ fees to the owner when the court finds that
the defendants committed the wrongful acts knowingly or in bad faith.”
[emphasis added]
Hence, there can be absolutely no question that the statutory regime in
place in Hawaii for issuing state trademark registrations, sharply contrary to
Respondent’s contention, yields trademark rights that are predicated on marks
that have attained sufficient distinctiveness with those rights capable of
judicial enforcement and moreover susceptible to being tested, through a
cancellation action, to assess the continued validity of those rights. Consequently, those rights clearly qualify
for protection under paragraph 4(a)(1) of the Policy.
Respondent cites to the Aquascape
Designs decision in support its view that state trademark registrations are
uniformly invalid to convey trademark rights sufficient to invoke Paragraph
4(a)(1) of the Policy. There, the panel
expresses its rather conclusory view, as the only reference to state trademarks
and notably without considering the underlying statutory framework, through its
statement, in pertinent part: “Complainant’s Illinois State trademark
registrations are not examined and thus do not represent persuasive evidence of
ownership of a valid, distinctive trademark.”
In light of the discussion above, this view, at least in the context of
Hawaiian trademark registrations, is patently incorrect.
Having found that a trademark system merely yields protectable rights,
it is clearly outside the purview, jurisdiction and competence of this Panel
or, in this Panel’s mind, any ICANN panel to scrutinize the severity of the
underlying examination that resulted in those rights or challenge the validity
of any ensuing registration. Rather, the
Panel must simply defer to the actions and decisions of any governmental body
charged with issuing any such registrations and leave a party, desirous of
pursuing such a challenge, to prosecute it solely before the appropriate
administrative and/or judicial forums legally empowered to entertain such
challenges.
In various prior situations where respondents have urged this Panel to
assess validity of federal trademark registrations, this Panel has uniformly
and repeatedly refused to do so in favor of according significant deference to
determinations of registerability made by the USPTO ‑‑ the federal
governmental body specifically mandated, in the first instance, with that
responsibility and having the requisite expertise to do so. It
is simply not within the purview of any ICANN panel to review and evaluate, let
alone over‑ride, the judgment of the USPTO on such questions. See,
e.g., MySpace, Inc. v. Edwin De Jesus, EDJ Assocs. Inc., D2007‑1878 (WIPO
March 12, 2008); Tetris
Holding, LLC v. Smashing Conceptions, FA1030720 (Nat. Arb. Forum
Sept. 11, 2007); Gerber
Childrenswear Inc. v. Webb, D2007‑0317 (WIPO April 24, 2007); Lockheed Martin Corp. v. The Skunkworx Custom Cycle, D2004‑0824
(WIPO Jan. 18, 2005); Register.com, Inc. v. Reile, FA208576
(Nat. Arb. Forum Jan. 27, 2004);
Such is
the case here with
Absent Respondent having challenged the validity
of the state registration at issue here and attained a final ruling from the
courts of the State of Hawaii, as it must, that Complainant’s Hawaiian
registration is invalid for lack of distinctiveness and thus its mark is no
longer susceptible of continued registration ‑‑ which clearly
Respondent has not done here, this Panel will simply defer, as it must, to the
determination by the Director of the Department of Commerce and Consumer
Affairs of the State of Hawaii, implicit in its having granted a registration
to Complainant for its mark, that this mark is sufficiently distinctive and
thus qualifies for continued state trademark protection and enjoys all the
exclusive rights, including remedies for infringement, accorded thereby.
Identical and/or Confusingly Similar
The Panel finds that the disputed domain name is
confusingly similar to Complainant’s HAWAII COMMUNITY FEDERAL CREDIT UNION Mark.
First, Complainant, as it stated, has a trademark
registration issued by the State of
Given that, then, from a simple comparison of the
disputed domain name, <hawaiicommunityfcu.com>,
to Complainant’s mark, no doubt exists that the name is confusingly similar to
the mark.
The only differences between the disputed domain name
and the mark are the substitution of the abbreviation “FCU” for the terms
“FEDERAL CREDIT UNION” and the appending the gTLD (generic top-level domain)
“.com” to the terms “HAWAII COMMUNITY” to form the name – with the last
addition being irrelevant in assessing confusing similarity or identity under
paragraph 4(a) of the Policy and thus ignored. It is without question that “FCU” is a very
well‑known abbreviation for “federal credit union,” hence being a
difference of no significance.
It is now very well‑established in UDRP precedent, including numerous decisions previously rendered by this Panel, that a minor variation, such as adding short letter or number groups or even generic or highly descriptive words to a mark, is usually insufficient in and of itself, when used in forming a domain name that results from modifying the mark, to confer requisite and sufficient distinctiveness to that name to avoid user confusion. Here, the Panel views substituting a widely recognized abbreviation for corresponding terms in a mark, such as here “FCU” for “federal credit union,” is clearly one such minor variation as well. See, in the context of minor variations, e.g., MySpace, Inc., cited supra; and 322 W. 57th Owner LLC v. Domain Admin., D2008‑0736 (WIPO Aug. 6, 2008); Dreamworks Animation, LLC v. Creahq, D2008‑0505 (WIPO May 28, 2008); Marvel Mfrg. Co. Inc. v. Koba Internet Sales, LP, D2008‑0265 (WIPO May 5, 2008); BlackRock, Inc. v. blackrockfinancialservices.com, D2007‑1627 (WIPO Jan. 4, 2008); F. Hoffmann‑La Roche AG v. Transliner Consultants, D2007‑1359 (WIPO Nov.14, 2007); Nat’l Football League v. Blucher, D2007‑1064 (WIPO Sept. 24, 2007); Toilets.com, Inc. v. Rons Porta Johns, D2007‑0952 (WIPO Aug. 27, 2007); Assoc. Bank Corp. v. Texas Int’l Prop. Assoc., D2007‑0334 (WIPO June 28, 2007); Gerber Childrenswear Inc. v. Webb, D2007‑0317 (WIPO April 24, 2007); SPX Corp. v. Hevun Diversified Corp., FA791657 (Nat. Arb. Forum Nov. 13, 2006); Google Inc. v. Burns, FA726096 (Nat. Arb. Forum Aug. 16, 2006); Cheesecake Factory Inc. & Cheesecake Factory Assets Co., LLC v. Say Cheesecake, D2005‑0766 (WIPO Sept. 12, 2005); Napster, Inc. v. Vinscani, D2005‑0531 (WIPO July 19, 2005); Caesars Entm’t Inc. v. Nova Internet Inc., D2005‑0411 (WIPO June 22, 2005); Lockheed Martin Corp. v. The Skunkworx Custom Cycle, D2004‑0824 (WIPO January 18, 2005); Lockheed Martin Corp. v. Deborah Teramani, D2004‑0836 (WIPO Dec. 1, 2004); Nat’l Collegiate Athletic Assoc. v. Brown, D2004‑0491 (WIPO Aug. 30, 2004); Lane‑Labs USA, Inc. v. Powell Prod., FA 155896 (July 1, 2003); and in particular Cable News Network LP, LLP v. Khouri, FA117876 (Nat. Arb. Forum Dec. 16, 2002).
Moreover, by substituting the abbreviation “FCU” for the words “federal credit union” in Complainant’s mark to form the disputed domain name, the potential for Internet user confusion is likely to be exacerbated, not reduced. In that regard, the services which Complainant offers through its mark are credit union services, such as providing loans and offering savings and related financial advice. Consequently, those Internet users who seek information on Complainant’s services may well be quite likely, given current naming conventions on the Internet used in forming domain names and for sheer simplicity, to enter through their browsers, as a corresponding domain name, the first two words of Complainant’s mark, i.e., “HAWAII COMMUNITY,” followed by the abbreviation “FCU,” rather than spelling out that abbreviation, and then concluding with “.com” (as a widely used gTLD for a business‑oriented site) through which those users would then expect to reach Complainant’s website. Rather than reaching Complainant’s site, each of those users would instead be directed to Respondent’s corresponding site through which that user would be offered third‑party sponsored links having nothing to do with Complainant or its services. Hence, by using a well‑known abbreviation instead of specific equivalent terms in the mark, those users would likely be deceived into thinking that Respondent’s site and the links and goods and services offered there through were somehow affiliated, related to or sponsored by Complainant — when, in fact, they are not. Thus, the Panel finds that that the disputed domain name here, which contains the terms “HAWAII COMMUNITY” followed by the abbreviation “FCU” would tend to aggravate, rather than ameliorate, user confusion and do so to Respondent’s ultimate benefit — and that is very likely the reason why Respondent chose that name. See MySpace, cited supra.
Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s HAWAII COMMUNITY FEDERAL CREDIT UNION Mark as to cause confusion; hence, Complainant has satisfied its burden under paragraph 4(a)(i) of the Policy.
Rights or Legitimate Interests
Based on the
evidence of record here, the Panel finds that no basis exists, under the
circumstances here, that would legitimize a claim to the disputed domain name
under paragraph 4(c) of the Policy.
Complainant has never authorized Respondent to utilize its HAWAII COMMUNITY FEDERAL CREDIT UNION mark or any mark confusingly similar thereto, such as HAWAII COMMUNITY FCU, in conjunction with the services with which Complainant uses that mark or for similar services, nor does Complainant apparently have any relationship or association whatsoever with Respondent. As such, any use to which Respondent were to put Complainant’s mark or one confusingly similar thereto in connection with the identical or even similar services to those currently provided by Complainant, those essentially being credit union services as recited in its state trademark registration, would violate the exclusive trademark rights now residing with Complainant. See, e.g., MySpace, Blackrock, F. Hoffmann‑La Roche AG, Nat’l Football League, Toilets.com, Inc., and Associated Bank, all cited supra. See also GoDaddy.com, Inc., v. GoDaddysDomain.com, D2007‑0303 (WIPO May 7, 2007); Citgo Petroleum Corp. v. Antinore, D2006‑1576 (WIPO March 14, 2007); New Destiny Internet Group, LLC & Xplor Media, Inc. v. SouthNetworks, D2005‑0884 (WIPO Oct. 14, 2005); Cheesecake Factory Inc., Napster and Caesars Entm’t, Inc., all cited supra; Pelmorex Communications Inc. v. weathernetwork, D2004‑0898 (WIPO Dec. 28, 2004); Sybase, Inc. v. Analytical Sys., D2004‑0360 (WIPO June 24, 2004); Caesars World, Inc. & Park Place Entm’t Corp. v. Nippon, D2003‑0615 (WIPO Sept. 30, 2003); Leiner Health Servs. Corp. v. ESJ Nutritional Products, FA 173362 (Nat. Arb. Forum Sept. 16, 2003); AT&T Corp. v. Abreu, cited supra; MPL Communications, Ltd. v. 1WebAddress.com, FA 97092 (Nat. Arb. Forum June 4, 2001); Am. Online, Inc. v. Fu, D2000‑1374 (WIPO Dec. 11, 2000); and Treeforms, Inc. v. Cayne Indus. Sales, Corp., FA95856 (Nat. Arb. Forum Dec. 18, 2000). Consequently, Respondent could not legally acquire any public association between it and Complainant’s HAWAII COMMUNITY FEDERAL CREDIT UNION mark or one similar thereto, at least for the services rendered by Complainant, or, broadly speaking, any service likely perceived by its users to be so similar and/or to emanate from or be related, in any fashion, to those then offered by Complainant.
Further, there is absolutely no evidence of record that Respondent has ever been commonly known by the disputed domain name. Nor could Respondent in this case ever become so known, in light of Complainant’s exclusive trademark rights, dating back certainly more than 3 years prior to March 18, 2006 on which Respondent registered the name (particularly since Complainant’s 4,002,127 trademark registration specifically referenced above is a renewal in April 2003 of a pre‑existing but then expiring state registration which, given a current 10‑year life of Hawaiian state trademark registrations, presumably dated back to 1993) and the reputation, at least in the State of Hawaii, which Complainant’s mark undoubtedly acquired since its initial registration and use. See, MySpace and Treeforms, Inc., cited supra.
Hence, based on the evidence before the Panel, Respondent does not fall within paragraph 4(c)(ii) of the Policy.
Moreover, since Respondent’s use of the name, which in this Panel’s view infringes Complainant’s trademark rights, can not constitute a bona fide offering of services and is unquestionably commercial in nature, Respondent’s conduct does not fall within paragraphs 4(c)(i) or 4(c)(iii) of the Policy either.
Accordingly, the Panel concludes that Respondent has no rights or legitimate interests in the disputed domain name within paragraph 4(a)(ii) and 4(c) of the Policy.
Registration and Use in Bad Faith
The Panel finds that Respondent’s actions, with respect to the disputed domain name, constitute bad faith registration and use under paragraph 4(a)(iii) of the Policy.
The Panel believes that Respondent was well aware of at least Complainant’s HAWAII COMMUNITY FEDERAL CREDIT UNION mark and the well‑known meaning of the abbreviation FCU as “federal credit union” when the Respondent registered the disputed domain name. The formative portion “HAWAII COMMUNITY” of the Mark identically appears in the name and is then immediately followed by the abbreviation “FCU” for the remainder of the mark “FEDERAL CREDIT UNION” to form the entire name (ignoring the gTLD). Respondent asserts that it merely selects and joins together descriptive, generic and geographic names all selected in some “electronic” fashion, to form each of its domain names.
Hence, as best understood by the Panel, Respondent implicitly claims that the fact that its combination of two terms and an abbreviation here just happens to equate to Complainant’s mark is simply a product of coincidence or happenstance, and nothing more. In light of all possible terms in the English language that are geographic, descriptive or generic, the probability of randomly forming the specific sequential combination here of the two particular terms (HAWAII being geographic, and COMMUNITY being generic) followed by an abbreviation (FCU) , that just happens to be a well‑known equivalent for the rest of Complainant’s mark, is so small as to be negligible. Thus, the Panel dismisses Respondent’s claim that it had no prior knowledge of Complainant’s Mark as being utterly implausible.
Consequently, in spite of that knowledge, Respondent intentionally chose and registered the name to opportunistically exploit its potential to generate user confusion for Respondent’s eventual benefit, which here manifested itself as pecuniary revenue derived from Internet users, who expecting to reach Complainant’s website, reached Respondent’s site instead and clicked on any of the sponsored links as then furnished by Hitfarm and appearing on the site. The fact that such links were selected by a third‑party, here being Yahoo or Google, is of no consequence as Respondent benefitted from their use.
Accordingly, it is abundantly
clear to this Panel that Respondent not only intentionally chose and registered
the name to opportunistically exploit its potential to generate user confusion
for Respondent’s eventual benefit, but also ultimately used the name to achieve
just that end, hence violating paragraph 4(b)(iv) of the Policy. See, e.g., MySpace and F. Hoffmann‑La Roche AG, cited
supra.
Thus, the Panel concludes that Complainant
has provided sufficient proof of its allegations to establish a prima facie
case under Paragraph 4(a) of the Policy upon which the relief it now seeks can
be granted.
DECISION
In accordance with Paragraph 4(i) of the Policy and Paragraph 15 of the
Rules, the relief sought by Complainant is hereby GRANTED.
Accordingly, the Panel orders that the disputed domain name, <hawaiicommunityfcu.com>, is to
be TRANSFERRED from Respondent to Complainant.
Peter L. Michaelson, Esq., Panelist
Dated: September 3, 2008
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