Visual Credit Counseling, Inc. v. Debt Consolidation
Credit Counseling / Visual Credit Counseling Services
Claim Number: FA0210000128071
Complainant is Visual Credit Counseling, Inc., Tucson, AZ (“Complainant”)
represented by Julian H. Spirer and Elizabeth Diaz of Spirer
& Goldberg, PC. Respondent is Visual Credit Counseling Services Inc.,
Tucson, AZ (“Respondent”), pro se.
The
seven (7) Domain Names at issue are <visualcredit.com>,
<visual-credit.com>, <visualcreditcounseling.com>,
<visual-credit-counseling.com>, <visualcreditcounseling.net>,
<visual-credit-counseling.net>, and <visualcreditcounseling.org>, registered with Go Daddy Software, 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.
M. KELLY TILLERY, ESQUIRE as Panelist.
Complainant submitted a Complaint to the
National Arbitration Forum (the “Forum”) electronically on October 11, 2002;
the Forum received a hard copy of the Complaint on October 15, 2002.
On
October 11, 2002, Go Daddy Software, Inc. confirmed by e-mail to the Forum that
the Domain Names <visualcredit.com>,
<visual-credit.com>, <visualcreditcounseling.com>,
<visual-credit-counseling.com>, <visualcreditcounseling.net>,
<visual-credit-counseling.net>, and <visualcreditcounseling.org> are registered with Go Daddy
Software, Inc. and that the Respondent is the current Registrant of the
names. Go Daddy Software, Inc. has
verified that Respondent is bound by the Go Daddy Software, 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
October 15, 2002, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of November 4, 2002 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@visualcredit.com, postmaster@visual-credit.com,
postmaster@visualcreditcounseling.com, postmaster@visual-credit-counseling.com,
postmaster@visualcreditcounseling.net, postmaster@visual-credit-counseling.net,
and postmaster@visualcreditcounseling.org by e-mail.
A timely Response was received and determined
to be complete on October 16, 2002.
Complainant and Respondent both filed
timely Additional Submissions.
On October 30,
2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed M. KELLY TILLERY, ESQUIRE as Panelist.
Complainant requests that the Domain
Names be transferred from Respondent to Complainant.
Complainant contends that:
1.
it is an
Arizona non‑profit organization that provides credit counseling services
which has since October 27, 2001 used the common law service mark VISUAL CREDIT COUNSELING;
2.
on August
28, 2002, it filed an Application with the United States Patent and Trademark
Office to register the service mark VISUAL
CREDIT COUNSELING (Serial No. 78/158939) for the credit counseling
services;
3.
before
Respondent registered the disputed Domain Names, Complainant registered
<visualcredit.org>; <visualcredit.net>;
<visual-credit-counseling.org>; <visualdebtsolutions.com> for use with
its services;
4.
it has used
"Visual Credit Counseling"
as its corporate and business name since its incorporation on June 30, 2000;
5.
it has
expended over $50,000 establishing goodwill in its mark through advertising,
website creation and the creation and dissemination of promotional material;
6.
over the
past six months, it has been working with an Internet marketing company to
advance its listings on the search engines and as of April 2002, its websites
were receiving approximately 200 daily visitors;
7.
since about
May/June 2002, Respondent has used the disputed Domain Names to divert users
from Complainant’s websites to another competing business, 1st
National Credit Services;
8.
on June 24,
2002, as part of an investigation to determine the identity of the individual/company
using the Disputed Domain Names, Mr. Michael Kelly, an employee of Complainant,
submitted an online application for credit counseling services to <visualcredit.com>,
a web site owned by Respondent;
9.
in response
to his application, Mr. Kelly was
contacted by a Mr. Joel Caldera, who identified himself as a Credit Counselor
representing 1st National Credit Services and said that <visualcredit.com>
was one of the websites that 1st National Credit Services owned and
that 1st National Credit Services received "a lot of
clients" from the above website;
10.
in June 30,
2002 Mr. Kelly received an e-mail communication ostensibly from a Mr. George
Lynch of 1st National Credit Services, in which Mr. Lynch
acknowledged that Respondent owned nine (9) variations of Complainant’s mark and made an offer to sell
the seven (7) disputed Domain Name registrations to Complainant for a total of
$100,000;
11.
in July 10, 2002 Complainant’s Counsel contacted
Mr. Lynch, informed him of Respondent’s infringing activities, after which Mr.
Lynch agreed to recommend to Respondent to deactivate all the disputed Domain
Names within a week;
12.
the disputed Domain Names contain the elements
of Complainant's distinctive common law mark--VISUAL CREDIT COUNSELING--in
several variations and are accordingly confusingly similar to Complainant’s
distinctive mark in which Complainant has prior common law rights;
13.
there is no indication that Respondent has used
the term "Visual" in association with credit counseling services
prior to the registrations of the disputed Domain Names; the evidence suggests
that Respondent has registered and uses the disputed Domain Names solely to
collect and provide leads and to redirect Complainant’s clients and prospective
clients to a competitor, 1st National Credit Services, thus,
Respondent has no legitimate interest in using Complainant’s mark in
association with credit counseling services;
14.
Respondent has demonstrated its bad faith by its
attempt to sell the disputed Domain Name registrations to Complainant for an
amount far in excess of Respondent’s costs.
Respondent contends that:
1.
it is a
Non-Profit Florida corporation, incorporated before it received notice of this
proceeding;
2.
it owns the
seven (7) domain name registrations in question, but also owns twenty-three
(23) other variants of this name;
3.
Mr.
Lynch never warranted that Respondent would stop using the websites; Mr. Spirer
did not instruct Respondent to stop using the websites, only to remove the logo
and the “Visual Credit” name and just use a generic credit counseling form
instead. Mr. Spirer told Mr. Lynch he
had one week to take the logo off or he would have to file suit;
4.
it
has four credit counselors and has legitimate business purposes for use of the
disputed Domain Names;
5.
it
did not put up its sites to collect leads for competitor 1st
National, but previously had an
advertising company called “Vision Out of Home Media”;
6.
it
did offer to sell the domain name registrations for in excess of what they
cost, because it was outraged by Mr. Kelley’s “fraudulent” activity;
7.
it
did not purchase the disputed Domain Name registrations in bad faith to sell
the registrations to a competitor;
8.
the alleged
mark is composed of purely generic terms that are not entitled to trademark
protection.
1)
Complainant
Complainant further
contends that:
(a)
Respondent
has proffered no evidence that it was commonly known by the disputed Domain
Names prior to Complainant’s notice of the dispute, that its business has
incurred any expense, or even that any business exists, other than unsupported
statements that it has four counselors, has four hundred clients, and has been
losing money;
(b)
the Florida
corporation may have been set up before Respondent was served with the Complaint,
but, as it acknowledged, it was long after Respondent was alerted that an
arbitration complaint would be filed and even longer after, indeed months
after, it began to use the disputed Domain Names;
(c)
the fact
that Respondent set up a corporation by
the name of “Visual Credit Counseling, Inc.” in Florida gives it no rights in
the mark VISUAL CREDIT COUNSELING in Florida or elsewhere;
(d)
Respondent
acknowledges attempting to sell to the disputed Domain Name registrations to
Complainant “for valuable consideration in excess of [Respondent’s] documented
out‑of‑pocket costs directly related to the [disputed] Domain
Name[s]”, and to owning more than one
thousand five hundred websites and using them to direct clients to his
business;
(e)
in addition
to the multiple registrations of the disputed Domain Names containing several
variations of Complainant’s mark, Respondent has demonstrated a pattern of
registering domain names to prevent trademark owners from reflecting their
trademarks in domain names;
2) Respondent
No new claims made.
1.
Complainant
has met its burden to prove by a preponderance of the credible, relevant,
admissible evidence that Respondent’s domain names are identical or confusingly
similar to a service mark in which Complainant has rights. Policy ¶ 4(a)(i).
2.
Complainant
has met its burden to prove by a preponderance of the credible, relevant,
admissible evidence that Respondent has no rights or legitimate interest in
respect to the domain names. Policy ¶ 4(a)(ii).
3.
Complainant
has met its burden to prove by a preponderance of the credible, relevant,
admissible evidence that Respondent’s domain names have been registered and are
being used in bad faith. Policy ¶ 4(a)(iii).
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 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;
(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 has
used as a common law service mark VISUAL CREDIT COUNSELING in connection with
its credit counseling services since June 30, 2000, the date of its
incorporation. It has also used the
service marks VISUAL CREDIT COUNSELING and
VISUAL CREDIT in at least three (3) domain names
registered prior to any registration and/or use by Respondent of the disputed
Domain Names. Respondent does not
dispute Complainant’s allegations of common law service mark use in any regard.
Thus, Complainant has rights in and to the common law mark VISUAL CREDIT COUNSELING.
Respondent is clearly a second comer and
utilizes its Domain Names in the same business as Complainant. Each of the seven (7) disputed Domain Names
include the two predominant elements of Complainant’s common law mark –
“VISUAL” and “CREDIT” in the same order as in Complainant’s mark. Five (5) of the seven (7) also include the
word “COUNSELING”, again just as used in Complainant’s mark.
The inclusion of
hyphens in three (3) of the Domain Names between the words does not effect the
overall impression given by the Domain Names.
Where the only difference between a mark and a domain name is the
presence of a hyphen between the prominent elements of the mark, such is not
sufficient to negate confusingly similarity.
Numerous ICANN Arbitrators, including this one, have ruled
similarly. Draw-Tite v. Plattsburgh
Spring, D2000-0017 (WIPO Mar. 14, 2000) (<drawtite.com> is
“confusingly similar” to DRAW-TITE trademark despite lack of hyphen in domain
name); Channel Tunnel Group v. Powell, DA2000-0038 (WIPO Mar. 17, 2000)
(<euro-tunnel.com> is “confusingly similar” to EUROTUNNEL trademark
despite lack of hyphen in domain name); Transamerica v. Inglewood Computer
Servs., D2000-0690 (WIPO Aug. 20, 2000) (<trans-america.com> is
“confusingly similar” to trademark TRANSAMERICA despite hyphen in domain name);
Quotesmith.com v. Noble, D2000-1088 (WIPO Nov. 9, 2000) (hyphen is of de
minimis importance); Ranstad Holding v. Brazilai, D2001-0649 (WIPO
July 8, 2001) (hyphen not significant); Chernow Communications, Inc. v.
Jonathan D. Kimball, D2000-0119 (WIPO May 18, 2000) (hyphen not
significant); Nortel Networks Limited v. Raynald Gremer, FA 104104 (Nat.
Arb. Forum March 15, 2002) (hyphen alone does not negate confusing similarity);
Milnot Co./aBeech-Nut Nutrition Corp. v. Scott Ballarda d/b/a Kobashi
Essential Oils, FA 117035 (Nat. Arb. Forum Oct. 7, 2002) (hyphen alone does
not negate confusing similarity).
Although
Complainant has an Application pending with the U.S. Patent and Trademark
Office for Federal Registration of its mark, the mark is not yet
registered. Respondent has not
indicated that it has opposed or will oppose that application.
However,
registration of a mark is not and has never been required under the UDRP. It is sufficient for purposes of Policy ¶
4(a)(i) if Complainant proves that it has common law rights in a mark. Mission KwaSizaantu v. Rost,
D2000-0279 (WIPO June 7, 2000) (recognizing “common law” trademark rights); CSA
Int’l. v. Shannon, D2000-0071 (WIPO Mar. 24, 2000) (UDRP not limited to
registered marks); Gordon Sumner p/k/a Sting v. Urvan, D200-0596 (WIPO
July 24, 2000) (“unregistered” mark can support claim under UDRP); Freedom of Info. Found. of Texas v.
Lisson, D2001-0256 (WIPO Apr. 22, 2001); Manitoba etis Fed. v. Belhumeur,
AF-0829 (eRes June 5, 2001); Pan-American Life Ins. v. Hampton New Media,
FA 96841 (Nat. Arb. Forum April 24,
2001).
Respondent’s only
claim on this point is that the words in Complainant’s mark are generic and/or
merely descriptive without evidence of secondary meaning. While each word individually and/or alone
may indeed be so, VISUAL CREDIT and/or VISUAL CREDIT COUNSELING are not. Neither party has explained what “Visual
Credit Counseling” is or just how it might be generic or merely descriptive
without secondary meaning.
Under these
circumstances, this Arbitrator finds that all seven (7) of the Domain Names in
question are identical and/or confusingly similar to service marks in which
Complainant has rights.
Respondent has not
produced sufficient, credible evidence to establish use of or demonstrable
preparations to use the disputed Domain Names before notice of the
dispute. Policy ¶ 4(c)(i). In fact, Respondent acknowledges notice of
the dispute prior to any use or demonstrable preparations to use the disputed
Domain Names. Under such circumstances,
Respondent has no rights or legitimate interests in respect of the disputed
Domain Names. See Ritz-Carlton
Hotel v. Club Car Executive, D2000-0611 (WIPO Sept. 18, 2000) (finding that
prior to any notice of the dispute, Respondent had not used the domain names in
connection with any type of bona fide offering of goods and services); see
also Wal-Mart Stores, Inc. v.
Walmarket Canada, D2000-0150 (WIPO May 2, 2000) (finding that Respondent
had no rights or legitimate interests where he decided to develop the website
for the sale of wall products after receiving Complainant’s “cease and desist”
notice).
Complainant has established that
Respondent has registered and is using the Domain Names in bad faith because
there is ample evidence that Respondent has registered the disputed Domain
Names primarily to sell the registrations to Complainant for in excess of out-of-pocket
costs (Policy ¶ 4(b)(i)) and that
Respondent has intentionally attempted to attract, for commercial gain,
internet users to its sites, by creating a likelihood of confusion with
Complainant’s mark as to the service, sponsorship, affiliation or endorsement
of its Website and/or its services. (Policy ¶ 4(b)(iv)).
All seven (7)
Domain Names shall be TRANSFERRED to Complainant.
M. KELLY TILLERY, ESQUIRE, Panelist
Philadelphia, PA
Dated: November 13, 2002
Click Here to return
to the main Domain Decisions Page.
Click
Here to return to our Home Page