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 firstname.lastname@example.org, email@example.com, firstname.lastname@example.org, email@example.com, firstname.lastname@example.org, email@example.com, and firstname.lastname@example.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.
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;
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
Dated: November 13, 2002
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