Claim Number: FA0908001280654
Complainant is Missoula Federal Credit Union (“Complainant”), represented by Shane
A. Vannatta, of Worden Thane P.C.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <missoulafederalcreditunion.com>, registered with Rebel.com.
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 August 20, 2009; the National Arbitration Forum received a hard copy of the Complaint on August 24, 2009.
On August 21, 2009, Rebel.com confirmed by e-mail to the National Arbitration Forum that the <missoulafederalcreditunion.com> domain name is registered with Rebel.com and that Respondent is the current registrant of the name. Rebel.com has verified that Respondent is bound by the Rebel.com 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 September 2, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 22, 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@missoulafederalcreditunion.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 28, 2009, 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.
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 <missoulafederalcreditunion.com> domain name is identical to Complainant’s MISSOULA FEDERAL CREDIT UNION mark.
2. Respondent does not have any rights or legitimate interests in the <missoulafederalcreditunion.com> domain name.
3. Respondent registered and used the <missoulafederalcreditunion.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Missoula Federal
Credit Union, offers a variety of financial services including deposit and checking
accounts, home and auto loans, personal loans, credit cards, bill pay, and
other online banking services.
Complainant has used the MISSOULA FEDERAL CREDIT UNION since its
formation in 1956. Complainant has
submitted evidence of this trademark use in advertisements. Complainant currently has 42,766 members and
manages assets exceeding $281 million.
Respondent, Whois Watchdog c/o Domain Administrator, registered the <missoulafederalcreditunion.com> domain name on July 27, 2004. The disputed domain name resolves to a website that contains advertisements for financial services that directly compete with Complainant’s business.
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.
The Panel finds that Complainant need not hold a registration of the MISSOULA FEDERAL CREDIT UNION mark in order to establish rights in the mark under Policy ¶ 4(a)(i) provided that Complainant can establish common law rights in the mark through a sufficient showing secondary meaning in the mark. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)).
Complainant began using the MISSOULA FEDERAL CREDIT UNION mark in 1956 and since that time used the mark in connection with its financial services business. Complainant has also submitted evidence of use of the mark in advertisements. In addition, Complainant currently has 42,766 members and manages assets exceeding $281 million. The Panel finds that Complainant has made a sufficient showing of secondary meaning in the mark through this evidence. The Panel further finds that Complainant has established common law rights in the MISSOULA FEDERAL CREDIT UNION mark under Policy ¶ 4(a)(i) through this sufficient showing of secondary meaning in the mark. See Ass’n of Tex. Prof’l Educators, Inc. v. Salvia Corp., FA 685104 (Nat. Arb. Forum May 31, 2006) (holding that the complainant had demonstrated common law rights in the ATPE mark through continuous use of the mark in connection with educational services for over twenty-five 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).
Respondent’s <missoulafederalcreditunion.com> domain name contains Complainant’s MISSOULA FEDERAL CREDIT UNION mark in its entirety and merely adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that Respondent’s mere addition of the “.com” gTLD to Complainant’s mark does not sufficiently distinguish the disputed domain name from Complainant’s mark. Therefore, the Panel finds that the <missoulafederalcreditunion.com> domain name is identical to Complainant’s MISSOULA FEDERAL CREDIT UNION mark under Policy ¶ 4(a)(i). See W. Union Holdings, Inc. v. XYZ, D2005-0945 (WIPO Oct. 20, 2005) (finding <wuib.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name WUIB is part of the Internet address and does not add source-identifying significance); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).
The Panel finds that Policy ¶ 4(a)(i) has been
satisfied.
Pursuant to Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights and legitimate interests in the disputed domain name. Once Complainant makes this prima facie showing, the burden then shifts to Respondent and Respondent must establish that it has rights or legitimate interests in the disputed domain name. The Panel finds that Complainant has sufficiently made its prima facie showing under Policy ¶ 4(a)(ii). 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); see also 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).”).
The WHOIS information for the <missoulafederalcreditunion.com> domain name lists “Whois Watchdog c/o Domain Administrator” as the
registrant. The Panel finds that
Respondent is not commonly known by the <missoulafederalcreditunion.com>
domain name under 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 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).
Respondent’s identical <missoulafederalcreditunion.com> domain name resolves to a website that displays advertisements for financial services that directly compete with Complainant’s financial services business. The Panel presumes that Respondent receives click-through fees for these advertisements. Accordingly, the Panel finds that Respondent’s use of the <missoulafederalcreditunion.com> domain name does not represent 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 Skyhawke Techs., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name 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).”); see also Carey Int’l, Inc. v. Kogan, FA 486191 (Nat. Arb. Forum July 29, 2005) (holding that the respondent’s use of disputed domain names to market competing limousine services was not a bona fide offering of goods or services under Policy ¶ 4(c)(i), as the respondent was appropriating the complainant’s CAREY mark in order to profit from the mark).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Since its registration of the
<missoulafederalcreditunion.com> domain name on July 27,
2004, Respondent has been using the disputed
domain name to redirect Internet users to Complainant’s competitors through the
use of advertisements. The Panel finds
that such conduct disrupts Complainant’s business. The Panel further finds that such disruption
constitutes bad faith registration and use under Policy ¶ 4(b)(iii). See
David Hall Rare Coins v.
Moreover, the Panel finds that Respondent’s use of the identical <missoulafederalcreditunion.com> domain name creates a likelihood of confusion as to Complainant’s affiliation with the disputed domain name. In addition, Respondent is presumably receiving click-through fees from the advertisements displayed on the resolving website. Therefore, the Panel finds that Respondent is presumed to be commercially gaining from this likelihood of confusion. Accordingly, the Panel finds that Respondent’s conduct constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was commercially gaining from the likelihood of confusion between the complainant’s AIM mark and the competing instant messaging products and services advertised on the respondent’s website which resolved from the disputed domain name); see also Dell Inc. v. Innervision Web Solutions, FA 445601 (Nat. Arb. Forum May 23, 2005) (finding evidence of bad faith under Policy ¶ 4(b)(iv) where the respondent was using the <dellcomputerssuck.com> domain name to divert Internet users to respondent’s website offering competing computer products and services).
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 <missoulafederalcreditunion.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: October 8, 2009
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