national arbitration forum

 

DECISION

 

Amplify Federal Credit Union v. Domain Park Limited a/k/a hostmaster hostmaster

Claim Number: FA0811001235241

 

PARTIES

Complainant is Amplify Federal Credit Union (“Complainant”), represented by Dwayne K. Goetzel, Texas, USA.  Respondent is Domain Park Limited a/k/a hostmaster hostmaster (“Respondent”), Germany.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <goamplify.org>, registered with Moniker Online Services Inc.

 

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.

 

James A Crary as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on November 20, 2008; the National Arbitration Forum received a hard copy of the Complaint on November 24, 2008.

 

On November 21, 2008, Moniker Online Services Inc. confirmed by e-mail to the National Arbitration Forum that the <goamplify.org> domain name is registered with Moniker Online Services Inc. and that Respondent is the current registrant of the name.  Moniker Online Services Inc. has verified that Respondent is bound by the Moniker Online Services 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 November 26, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 16, 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@goamplify.org by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On December 22, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A Crary as Panelist.

 

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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <goamplify.org> domain name is confusingly similar to Complainant’s AMPLIFY mark.

 

2.      Respondent does not have any rights or legitimate interests in the <goamplify.org> domain name.

 

3.      Respondent registered and used the <goamplify.org> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Amplify Federal Credit Union, is a credit union based in Austin, Texas, USA. It has been providing financial services under the AMPLIFY mark since as early as 2006. Complainant registered the <goamplify.com> domain name in August 2006 and has since used it as a home website for its credit union members. Moreover, Complainant currently owns a United States Patent and Trademark Office (“USPTO”) registration for the AMPLIFY mark (Reg. No. 3,304,765 issued October 2, 2007, filed July 20, 2006) in connection with credit union services. 

 

Respondent’s <goamplify.org> domain name was registered on August 22, 2007 and currently resolves to a search engine and commercial links page that redirects Internet users to unrelated third parties. Additionally, Respondent has been the subject of previous UDRP proceedings in which the then-subject domain names were transferred away from Respondent. See, e.g., Sears Brand, LLC v. Domain Park Ltd., FA 1218779 (Nat. Arb. Forum Sept. 23, 2008); see also Diners Club Int’l Ltd. v. Domain Park Ltd., FA 1211556 (Nat. Arb. Forum Aug. 7, 2008).

 

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 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.

 

Identical and/or Confusingly Similar

 

The Panel finds that Complainant has sufficiently established rights in the AMPLIFY mark dating back to the filing date through registration of the mark with the USPTO pursuant to Policy ¶ 4(a)(i). See Lockheed Martin Corp. v. Hoffman, FA 874152 (Nat. Arb. Forum Jan. 31, 2007) (finding that the complainant had sufficiently established rights in the SKUNK WORKS mark through its registration of the mark with the USPTO); see also Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (“Complainant asserts rights in the KISSES trademark through registration of the mark with the…USPTO…As such rights date back to the filing date of the trademark application and predate Respondent’s registration…Complainant has established rights in the KISSES mark for purposes of satisfying Policy ¶ 4(a)(i).”).

 

Respondent’s <goamplify.org> domain name contains Complainant’s AMPLIFY mark followed by the generic top-level domain (“gTLD”) “.org.” Additionally, the disputed domain name precedes Complainant’s mark with the generic term “go.” Complainant’s <goamplify.com> domain name is identical to the disputed domain name but for the different gTLD “.com.” The <goamplify.com> domain name is Complainant’s homepage for the AMPLIFY mark. First, the Panel considers, in accordance with previous UDRP precedent, that Respondent’s incorporation of the gTLD “.org” is irrelevant to a Policy ¶ 4(a)(i) analysis. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the addition of a gTLD, whether it be “.com,” “.net,” “.biz,” or “.org,” is irrelevant to a Policy ¶ 4(a)(i) analysis). Moreover, the Panel finds the use of the term “go” with Complainant’s mark to be an inconsequential difference because, in consideration of Complainant’s use of the <goamplify.com> domain name, the addition of the term has an obvious relationship to Complainant’s business – it renders the disputed domain name almost identical to Complainant’s homepage. For these reasons, the Panel finds that the <goamplify.org> domain name is confusingly similar to Complainant’s AMPLIFY mark pursuant to Policy ¶ 4(a)(i). See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007) (“The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).”).

 

The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Before the Panel may proceed to consider the Complaint under Policy ¶ 4(a)(ii), Complainant must first establish a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name. See VeriSign Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000) (“Respondent's default, however, does not lead to an automatic ruling for Complainant. Complainant still must establish a prima facie case showing that under the Uniform Domain Name Dispute Resolution Policy it is entitled to a transfer of the domain name.”). The Panel finds that Complainant has met this threshold and that the burden is accordingly shifted under Respondent to now prove that it does have rights or legitimate interests in the disputed domain name. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name)

 

Respondent has failed to reply to the Complaint. Therefore, the Panel may presume that Respondent lacks all rights and legitimate interests in the disputed domain name. Nevertheless, the Panel will proceed to examine the record in consideration of the elements listed under Policy ¶ 4(c). See 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 Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because Respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed.  In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”).

 

Complainant contends that Respondent is not authorized or otherwise permitted to use the AMPLIFY mark in any way. Additionally, the WHOIS information identifies Respondent solely as “Domain Park Limited a/k/a hostmaster hostmaster.” Without any further information in the record, the Panel finds that Complainant is not commonly known by the <goamplify.org> domain name pursuant to Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).

 

The <goamplify.org> domain name resolves to a general commercial search engine and links page. The links redirect Internet users to unrelated third-parties. The Panel finds that this use of a confusingly similar disputed domain name is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding that the respondent was not using a disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by redirecting Internet users to a commercial search engine website with links to multiple websites that may be of interest to the complainant’s customers).

 

The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Respondent has been the subject of numerous previous UDRP proceedings in which the subject domain names were transferred away from Respondent. See, e.g., Sears Brand, LLC v. Domain Park Ltd., FA 1218779 (Nat. Arb. Forum Sept. 23, 2008); see also Diners Club Int’l Ltd. v. Domain Park Ltd., FA 1211556 (Nat. Arb. Forum Aug. 7, 2008). The Panel finds that this history establishes that Respondent is engaging in a pattern of registering infringing domain names. As a result, the Panel determines that this creates a rebuttable presumption that Respondent has registered and is using the <goamplify.org> domain name in bad faith pursuant to Policy ¶ 4(b)(ii). See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants); see also 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).

 

Moreover, the disputed domain name resolves to a commercial search engine and links page that redirects Internet users to various unrelated third parties. The Panel presumes that this use commercially benefits Respondent through some form of referral fee. Considering this use in conjunction with the confusing similarity of the disputed domain name with Complainant’s mark, the Panel finds further evidence that Respondent registered and is using the <goamplify.org> domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (holding that the use of a confusingly similar domain name to display links to various third-party websites demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 16, 2007) (concluding that Internet users would likely be confused as to the source or sponsorship of the <blackstonewine.com> domain name with the complainant because the respondent was redirecting Internet users to a website with links unrelated to the complainant and likely receiving click-through fees in the process).

 

The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <goamplify.org> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

 

James A Crary, Panelist

Dated:  January 2, 2009

 

 

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