Arrowhead Central Credit Union d/b/a Arrowhead Credit Union v. Ryan G Foo / PPA Media Services
Claim Number: FA1411001591655
Complainant is Arrowhead Central Credit Union d/b/a Arrowhead Credit Union (“Complainant”), represented by Bruce A. Pearson of STYSKAL, WIESE & MELCHIONE, LLP, California, USA. Respondent is Ryan G Foo / PPA Media Services (“Respondent”), Chile.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <arrowheadcreditunion.org>, registered with Internet.bs Corp.
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 Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 21, 2014; the National Arbitration Forum received payment on November 24, 2014.
On December 5, 2014, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <arrowheadcreditunion.org> domain name is registered with Internet.bs Corp. and that Respondent is the current registrant of the name. Internet.bs Corp. has verified that Respondent is bound by the Internet.bs Corp. 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 December 9, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 29, 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@arrowheadcreditunion.org. Also on December 9, 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 31, 2015 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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 made the following contentions.
1. Complainant submits that ARROWHEAD is used in connection with the provision of credit services. The ARROWHEAD mark is registered with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 2,120,456, registered Dec. 9, 1997). The <arrowheadcreditunion.org> domain name is confusingly similar to the mark in that it adds “credit union,” a phrase descriptive of the type of services provided under ARROWHEAD, with the additional “.org” gTLD presenting no relevant difference.
2. Respondent has no rights or legitimate interests in the <arrowheadcreditunion.org> domain name. Respondent is not commonly known by this domain name. Respondent is using the domain name to direct web traffic to advertise-laden webpages.
3. Respondent registered and is using the <arrowheadcreditunion.org> domain name in bad faith. Respondent has a long history of cybersquatting. Respondent seeks to profit off of the domain name for commercial gain through the domain name’s website. Respondent had actual knowledge of Complainant’s rights prior to registration.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in the business of the provision of credit services.
2. Complainant has registered the ARROWHEAD mark with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 2,120,456, registered Dec. 9, 1997).
3. Respondent registered the <arrowheadcreditunion.org> domain name on July 16, 2002 and is using it to direct web traffic to advertisement-laden web pages.
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 first issue that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant submits that ARROWHEAD is used in connection with the provision of credit services. The ARROWHEAD mark is registered with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 2,120,456, registered Dec. 9, 1997). The Panel finds this USPTO registration to stand as satisfactory evidence of Complainant’s Policy ¶ 4(a)(i) rights in the ARROWHEAD 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)).
The second issue that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s ARROWHEAD mark. Complainant submits that the <arrowheadcreditunion.org> domain name is confusingly similar to the mark in that it adds “credit union,” a phrase descriptive of the type of services provided under ARROWHEAD, with the additional “.org” gTLD presenting no relevant difference. The Panel agrees that “credit union” accurately describes the credit services associated with the ARROWHEAD mark, and thus amplified the Policy ¶ 4(a)(i) confusing similarity of the domain name. See Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark). The Panel agrees that as gTLDs are not considered as meaningful additions in the UDRP decision making process, the domain name stands confusingly similar to the ARROWHEAD mark under Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. 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 UDRP ¶ 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 AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s ARROWHEAD mark and to use it in its domain name and has simply added the generic word “ credit union ” which does not detract from the confusing similarity that is clearly present but suggests that the domain name is referring to the credit provision activities of Complainant;
(b) Respondent registered the disputed domain name on July 16, 2002 and is using it to direct web traffic to advertisement-laden web pages;
(c) Respondent registered and used the disputed domain name without the permission or authority of Complainant;
(d) Complainant submits that Respondent is not commonly known by this domain name. The Panel agrees that the individual listed in the WHOIS information is “Ryan G Foo.” This Panel agrees that Ryan G Foo is clearly not similar to the <arrowheadcreditunion.org> domain name, and no other evidence herein supports the allegation that Respondent is “commonly known as” this domain name under Policy ¶ 4(c)(ii). See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response);
(e) Complainant submits that Respondent is using the domain name to direct web traffic to advertisement-laden webpages. The Panel agrees that Exhibit C to the Complaint illustrates a website dedicated to promoting hyperlink advertisement content. This Panel agrees that absent some other rationale, Respondent’s use of the domain name towards such ends indicates that there has been no bona fide offering of goods under Policy ¶ 4(c)(i), or legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Am. Int’l Group, Inc. v. Benjamin, FA 944242 (Nat. Arb. Forum May 11, 2007) (Panelist Tyrus R. Atkinson, Jr., dissenting) (finding that the respondent’s use of a confusingly similar domain name to advertise real estate services which competed with the complainant’s business did 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)); Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant claims that Respondent has a long history of cybersquatting. The Panel draws the inference from the evidence that Respondent may reasonably be determined to be a repeat-bad faith registrant and as such Policy ¶ 4(b)(ii) bad faith can be implied. See Bullock v. Network Operations Ctr., FA 1269834 (Nat. Arb. Forum Aug. 10, 2009) (“Complainant contends that Respondent has a longstanding history of cybersquatting . . . . The Panel finds that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(ii).”).
Secondly, Complainant argues that Respondent seeks to profit from the domain name in the form of commercial gain through the likelihood of confusion associated with the domain name’s website. The Panel agrees that Exhibit C to the Complaint illustrates that the domain name is being used to host a commercial-links page. Thus, the Panel determines that Respondent has registered and is using the domain name to profit from a likelihood of Internet user confusion under Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
Thirdly, Complainant argues that Respondent had actual knowledge of Complainant’s rights prior to registration of the domain name. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. 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).
Finally, having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration and use of the disputed domain name using the ARROWHEAD mark, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <arrowheadcreditunion.org> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: January 2, 2015
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