AllSouth Federal Credit Union v. Above.com Domain Privacy
Claim Number: FA1406001562703
Complainant is AllSouth Federal Credit Union (“Complainant”), represented by John C. McElwaine of Nelson Mullins Riley & Scarborough, LLP, South Carolina, USA. Respondent is Above.com Domain Privacy (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <allsouthfedrealcreditunion.com>, registered with ABOVE.COM PTY LTD.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 3, 2014; the National Arbitration Forum received payment on June 3, 2014.
On June 6, 2014, ABOVE.COM PTY LTD. confirmed by e-mail to the National Arbitration Forum that the <allsouthfedrealcreditunion.com> domain name is registered with ABOVE.COM PTY LTD. and that Respondent is the current registrant of the name. ABOVE.COM PTY LTD. has verified that Respondent is bound by the ABOVE.COM PTY LTD. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 6, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 26, 2014 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@allsouthfedrealcreditunion.com. Also on June 6, 2014, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 2, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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
Complainant contends as follows:
Complainant, AllSouth Federal Credit Union, has been using the ALLSOUTH FEDERAL CREDIT UNION mark in commerce since March 2004 in connection with financial and banking services, and has operated in this field since 1960.
Complainant has a valid trademark registration with United States Patent and Trademark Office (“USPTO”) for the ALLSOUTH FEDERAL CREDIT UNION mark (Reg. No. 2,977,711, registered July 26, 2005).
The domain name <allsouthfedrealcreditunion.com> is confusingly similar to a trademark in which Complainant has rights.
Respondent is not commonly known by the disputed domain name.
Respondent is using the disputed domain name to link to websites offering products offered by Complainant’s competitors.
Respondent is engaging in the practice of typosquatting.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has trademark rights in the ALLSOUTH FEDERAL CREDIT UNION mark through registration of the mark with the USPTO.
Respondent registered the at-issue domain name subsequent to Complainant acquiring rights in the ALLSOUTH FEDERAL CREDIT UNION mark.
Respondent is not authorized to use Complainant’s trademark in any capacity.
Respondent is using the at-issue domain name to link to websites offering the products of 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."
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.
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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant shows it has trademark rights in the ALLSOUTH FEDERAL CREDIT UNION mark through its registration thereof with the USPTO. It is irrelevant to Policy ¶4(a)(i) analysis that Respondent may operate outside the jurisdiction of the trademark’s registrar. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also, Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
Respondent’s at-issue domain name contains the ALLSOUTH FEDERAL CREDIT UNION mark with the letters “e” and “r” in the word ”federal” transposed, less the spaces, and with the addition of the generic top-level domain “.com”. The transposition of two letters in Complainant’s trademark does not differentiate the domain name from Complainant’s trademark under the Policy. See Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding <googel.com> to be confusingly similar to the complainant’s GOOGLE mark and noting that “[t]he transposition of two letters does not create a distinct mark capable of overcoming a claim of confusing similarity, as the result reflects a very probable typographical error”). Similarly, adding the necessary top-level domain, here “.com,” and eliminating the spaces in Complainant’s trademark are immaterial to Policy ¶4(a)(i) analysis. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Therefore, the Panel concludes pursuant to Policy ¶ 4(a)(i) that the <allsouthfedrealcreditunion.com> domain name is confusingly similar to Complainant’s ALLSOUTH FEDERAL CREDIT UNION mark.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶4(c) circumstances Complainant’s prima facie showing acts conclusively.
WHOIS information for the at-issue domain name lists “Above.com Domain Privacy” as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the <allsouthfedrealcreditunion.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
Respondent is using the at-issue domain name to address a webpage displaying links to websites offering products by Complainant’s competitors. Such links include “Credit Union Credit Card”, “Apply For Credit Card”, and “Federal Credit Union Loan.” Using the at-issue domain name in this manner constitutes 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 H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]respondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use). Additionally, and as will be discussed below, Respondent’s conduct in registering and using the <allsouthfedrealcreditunion.com> domain name amounts to typosquatting and is further evidence that Respondent lacks rights and interests in the domain name. See, e.g., LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>, <ltdcommmodities.com>, and <ltdcommodaties.com> domain names were intentional misspellings of Complainant's LTD COMMODITIES mark and this “‘typosquatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names”).
Given the forgoing, Complainant satisfies its initial burden and absent evidence to the contrary conclusively demonstrates that Respondent lacks both rights and interests in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).
The at-issue domain name was registered and is being used in bad faith. As discussed below, Policy ¶ 4(b) bad faith circumstances are present and there is additional non-Policy ¶ 4(b) evidence from which the Panel may also conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
First, on the webpage addressed by the at-issue domain name Respondent has placed a link stating “Inquire about this domain.” To the extent that such statement may be construed as an offer to sell the domain name, it suggests bad faith under Policy ¶4(b)(i).
Next, Respondent uses the domain name to ultimately direct Internet users to Complainant’s competitors via generically phrased advertisements to credit card services. Such use of the domain name is disruptive to Complainant’s business and demonstrates that Respondent has registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).
Characterized another way, Respondent uses the <allsouthfedrealcreditunion.com> domain name for commercial gain by capitalizing on the confusion and inadvertent mistakes of consumers. Respondent does so by directing Complainant’s potential customers to products sold by Complainant’s competitors and by likely collecting related click-through revenue and sponsored advertisement revenue from third parties. As mentioned above, the confusingly similar at-issue domain name leads Internet users to a webpage featuring hyperlinks such as “Credit Union Credit Card”, “Apply For Credit Card”, and “Federal Credit Union Loan.” Therefore, the Panel finds that Respondent has acted in bad faith pursuant to Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
Finally and as mentioned above, Respondent is a typosquatter. Respondent designed its <allsouthfedrealcreditunion.com> domain name to capitalize on particular typographical errors made by Internet users determined to reach Complainant via the ALLSOUTH FEDERAL CREDIT UNION trademark. Typosquatting, in itself, is evidence of Policy ¶ 4(a)(iii) bad faith. See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <allsouthfedrealcreditunion.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: July 8, 2014
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page