Navy Federal Credit Union v. ANDY MCVEY / SLAPBACKSEO
Claim Number: FA1411001588698
Complainant is Navy Federal Credit Union (“Complainant”), represented by John Gary Maynard, Virginia, USA. Respondent is ANDY MCVEY / SLAPBACKSEO (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <navy-federal-credit-union.com>, registered with ENOM, 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 5, 2014; the National Arbitration Forum received payment on November 5, 2014.
On November 7, 2014, ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the <navy-federal-credit-union.com> domain name is registered with ENOM, INC. and that Respondent is the current registrant of the name. ENOM, INC. has verified that Respondent is bound by the ENOM, INC. 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 November 10, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 1, 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@navy-federal-credit-union.com. Also on November 10, 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 December 9, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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
1. Complainant owns the NAVY FEDERAL CREDIT UNION mark by virtue of its registration with the United States Patent and Trademark Office ("USPTO") (Reg. No. 2,994,079, registered Sept. 13, 2005).
2. Complainant uses the NAVY FEDERAL CREDIT UNION mark to identify its insurance and financial services.
3. The <navy-federal-credit-union.com> domain name is identical to the NAVY FEDERAL CREDIT UNION mark which was registered in May 2014.
4. Respondent is not commonly known by the subject name, as demonstrated by the WHOIS record. Further, Complainant has not authorized Respondent’s use of the mark.
5. Respondent is using the disputed domain name to divert customers from Complainant’s website to Respondent’s own website for pecuniary gain.
6. The disputed domain name was registered and is being used in bad faith. The disputed domain name redirects users to Respondent’s own website, which hosts a video that claims to be a “Free Online Training Course.” The traffic redirected to Respondent’s own website under the pretext of Complainant’s association likely results in commercial gain.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the NAVY FEDERAL CREDIT UNION mark. Respondent’s domain name is confusingly similar to Complainant’s NAVY FEDERAL CREDIT UNION mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <navy-federal-credit-union.com> domain name, and that Respondent registered and uses the domain name in bad faith.
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.”).
Complainant uses the NAVY FEDERAL CREDIT UNION marks to identify its insurance and financial services. Complainant owns the NAVY FEDERAL CREDIT UNION mark by virtue of its USPTO registration (Reg. No. 2,994,079, registered Sept. 13, 2005) which establishes its Policy ¶ 4(a)(i) rights in the mark. 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)); Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
Complainant argues next that the <navy-federal-credit-union.com> domain name is identical to the NAVY FEDERAL CREDIT UNION mark. The disputed domain name differs from the mark by the addition of hyphens in place of the mark’s spacing, as well as the addition of the generic top-level domain (“gTLD”) “.com.” The removal of spacing and addition of gTLDs are irrelevant to the confusing similarity analysis as spaces are impermissible in domain names and some TLD is required of all domain names. See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”). The addition of hyphens to an otherwise incorporated mark serves little, if any, distinguishing value. See Columbia Sportswear Co. v. Keeler, D2000-0206 (WIPO May 16, 2000) (finding “[t]he use of hyphens ‘columbia-sports-wear-company’ in one of the Respondent's domain names in issue is insufficient to render it different to the trade mark COLUMBIA SPORTSWEAR COMPANY”). Accordingly, the Panel finds the <navy-federal-credit-union.com> domain name identical to the NAVY FEDERAL CREDIT UNION mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant asserts that Respondent lacks rights and legitimate interests in the disputed domain name. Complainant argues that Respondent is not commonly known by the subject name, as demonstrated by the WHOIS record. The WHOIS information identifies “ANDY MCVEY / SLAPBACKSEO” as registrant. Further, Complainant urges it has not authorized Respondent’s use of the mark. In light of the available evidence, which lacks any input from Respondent, the Panel agrees that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant next argues that Respondent has failed to use the domain name in connection with a bona fide offering or legitimate noncommercial or fair use as Respondent is using the disputed domain name to divert customers from Complainant’s website to Respondent’s own website for pecuniary gain. Complainant explains that the disputed domain name redirects users to Respondent’s own website occupied by a video that claims to be a “Free Online Training Course.” Because the <navy-federal-credit-union.com> domain name is used to promote video advertisements unrelated to Complainant, the Panel finds Respondent has failed to make a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business 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).”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant has shown that the disputed domain name redirects users to Respondent’s own website, which hosts a video that claims to be a “Free Online Training Course.” Complainant argues that the traffic redirected to Respondent’s own website under the pretext of Complainant’s association likely results in commercial gain and therefore amounts to Policy ¶ 4(b)(iv) bad faith. The Panel agrees that Respondent likely profits from the Internet traffic through the likelihood of user confusion, and therefore concludes that Respondent has engaged in Policy ¶ 4(b)(iv) bad faith registration and use. See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
Respondent has incorporated Complainant’s mark into its domain name almost identically. It is apparent that Respondent had actual knowledge of the mark and Complainant's rights when it registered the domain name. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
The Panel finds Complainant has satisfied 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 <navy-federal-credit-union.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: December 19, 2014
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