AllSouth Federal Credit Union v. Transure Enterprise Ltd c/o Host Master
Claim Number: FA0904001256922
Complainant is AllSouth Federal Credit Union (“Complainant”), represented by John
C. McElwaine, of Nelson Mullins Riley & Scarborough, LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <allsouthsouthfederalcreditunion.com>, registered with Above, Inc.
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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 9, 2009; the National Arbitration Forum received a hard copy of the Complaint on April 10, 2009.
On April 13, 2009, Above, Inc. confirmed by e-mail to the National Arbitration Forum that the <allsouthsouthfederalcreditunion.com> domain name is registered with Above, Inc. and that Respondent is the current registrant of the name. Above, Inc. has verified that Respondent is bound by the Above, 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 April
21, 2009, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 11, 2009
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@allsouthsouthfederalcreditunion.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 14, 2009, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <allsouthsouthfederalcreditunion.com> domain name is confusingly similar to Complainant’s ALLSOUTH FEDERAL CREDIT UNION mark.
2. Respondent does not have any rights or legitimate interests in the <allsouthsouthfederalcreditunion.com> domain name.
3. Respondent registered and used the <allsouthsouthfederalcreditunion.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, AllSouth Federal Credit Union, is a federally chartered credit union which has been continuously doing business under the ALLSOUTH FEDERAL CREDIT UNION mark since March 2004. Since that time, Complainant has grown to include more than 20 locations and has served more than 90,000 customers worldwide.
Respondent registered the <allsouthsouthfederalcreditunion.com> domain name on March 26, 2009. The disputed domain name resolves to a website that contains links to websites offering services by Complainant’s competitors.
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.
Although Complainant does not have a trademark registration for the ALLSOUTH FEDERAL CREDIT UNION mark, previous panels have determined that a federal registration is not required to establish rights in a mark, so long as Complainant can establish common law rights through proof of secondary meaning associated with the mark. See British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”); see also Winterson v. Hogarth, D2000-0235 (WIPO May 22, 2000) (finding that the Policy does not require that a complainant’s trademark be registered by a government authority or agency in order for the complainant to establish rights in the mark).
The Panel finds that Complainant has established common law
rights in the ALLSOUTH FEDERAL CREDIT UNION mark for purposes of Policy ¶ 4(a)(i) through its continuous use of the mark in commerce
since at least as early as 2004. See Kahn Dev. Co. v. RealtyPROshop.com, FA 568350 (Nat. Arb.
Forum June 23, 2006) (holding that the complainant’s VILLAGE AT SANDHILL mark
acquired secondary meaning among local consumers sufficient to establish common
law rights where the complainant had been continuously and extensively
promoting a real estate development under the mark for several years); see also Stellar Call Ctrs.
Pty Ltd. v. Bahr, FA 595972 (Nat. Arb. Forum Dec. 19, 2005) (finding that
the complainant established common law rights in the STELLAR CALL CENTRES mark
because the complainant demonstrated that its mark had acquired secondary
meaning).
Complainant contends that
Respondent’s <allsouthsouthfederalcreditunion.com>
domain name is confusingly similar to its ALLSOUTH
FEDERAL CREDIT UNION mark. The <allsouthsouthfederalcreditunion.com>
domain name differs from Complainant’s mark in three
ways: (1) the geographically descriptive and repetitive term “south” has been
added to the mark; (2) the spaces between the terms have been removed; and (3)
the generic top-level domain (“gTLD”) “.com” has been added to the mark. The Panel finds that these changes do not
minimize or eliminate the resulting likelihood of confusion, and so
Respondent’s disputed domain name is confusingly similar to Complainant’s mark
pursuant to Policy ¶ 4(a)(i). See
Gannett Co. v. Chan, D2004-0117
(WIPO Apr. 8, 2004) (“…it is well established that a domain name consisting of
a well-known mark, combined with a geographically descriptive term or phrase,
is confusingly similar to the mark.”); see also Am. Online, Inc. v. Oxford
Univ., FA 114654 (Nat. Arb. Forum Aug. 21, 2002) (“Neither the addition of
an ordinary descriptive word nor a geographic qualifier transform Respondent’s
domain name into separate and distinct marks for the purpose of a Policy ¶
4(a)(i) analysis.”); see also Am. Int’l
Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb.
Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic
top-level domain, such as ‘.com,’ ‘.net,’
‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed
domain name [<americangenerallifeinsurance.com>] is confusingly similar to the
complainant’s [AMERICAN GENERAL] mark.”); see also Rollerblade,
Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top
level of the domain name such as “.net” or “.com” does not affect the domain
name for the purpose of determining whether it is identical or confusingly
similar).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks all rights and legitimate interests in the disputed domain name. Under Policy ¶ 4(a)(ii), after the complainant makes a prima facie case against the respondent, the respondent then has the burden of showing evidence that it does have rights and legitimate interests in the disputed domain name. The Panel finds that Complainant has made a prima facie case under Policy ¶ 4(a)(ii). See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)); 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 contends that Respondent is not commonly known
by the disputed domain names, nor has it ever been the owner or licensee of the
ALLSOUTH FEDERAL CREDIT UNION mark. Respondent has been identified as “Transure Enterprise Ltd c/o Host Master,” and nothing
in the WHOIS information indicates that Respondent has ever been commonly known
by any variant on the ALLSOUTH FEDERAL CREDIT UNION mark. In addition, Respondent has failed to show any
evidence contrary to Complainant’s contentions, and therefore, the Panel finds
that Respondent is not commonly known by the disputed domain names pursuant to
Policy ¶ 4(c)(ii).
See Braun
Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding
that the respondent was not commonly known by the disputed domain names where
the WHOIS information, as well as all other information in the record, gave no
indication that the respondent was commonly known by the disputed domain names,
and the complainant had not authorized the respondent to register a domain name
containing its registered mark); see also Wells Fargo & Co. v. Onlyne Corp. Services11, Inc.,
FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information
for the disputed domain [name], one can infer that Respondent, Onlyne Corporate
Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”).
Respondent maintains a website at <allsouthsouthfederalcreditunion.com> that features links to third-party websites which offer goods and services in competition with Complainant, and therefore, the Panel finds that Respondent’s use of the domain name <allsouthsouthfederalcreditunion.com> 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). See Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that the respondent’s use of domain names confusingly similar to the complainant’s WAL-MART mark to divert Internet users seeking the complainant’s goods and services to websites competing with the complainant did not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (concluding that the use of a confusingly similar domain name to operate a portal with hyperlinks to various third-party websites, some of which may be in direct competition with a complainant, does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
According to Complainant’s contentions, Respondent is using the disputed domain name to divert Internet customers from Complainant’s website to Respondent’s website, through the confusion caused by the similarity between the ALLSOUTH FEDERAL CREDIT UNION mark and the <allsouthsouthfederalcreditunion.com> domain name. Respondent’s website in question contains links to the business websites of Complainant’s competitors. The Panel finds that Respondent’s use of the disputed domain name disrupts Complainant’s business, and is evidence of registration and use in bad faith pursuant to Policy ¶ 4(b)(iii). See Franpin SA v. Paint Tools S.L., D2000-0052 (WIPO May 25, 2000) (finding bad faith where the respondent, a company financially linked to the complainant’s main competitor, registered and used the domain name in question to disrupt the complainant’s business); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).
Complainant also contends that Respondent is gaining commercially through this diversion, by collecting “click-through” fees from the third-party websites of Complainant’s competitors, whose links appear on the website that resolves from the <allsouthsouthfederalcreditunion.com> domain name. In the Panel’s estimation, Respondent’s use of the disputed domain name is an intentional use of the disputed domain name for commercial gain through a likelihood of confusion with Complainant’s mark, and so, pursuant to Policy ¶ 4(b)(iv), this use is also evidence of registration and use in bad faith. See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
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 <allsouthsouthfederalcreditunion.com> domain name be TRANSFERRED from Respondent to Complainant.
James A Crary, Panelist
Dated: May 27, 2009
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