Navy Federal Credit Union v. Pham Dinh Nhut
Claim Number: FA1412001593447
Complainant is Navy Federal Credit Union (“Complainant”), represented by John Gary Maynard, Virginia, USA. Respondent is Pham Dinh Nhut (“Respondent”), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <navyferderal.org>, registered with April Sea Information Technology Company Limited.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 4, 2014; the National Arbitration Forum received payment on December 4, 2014. The Complaint was submitted in both English and Vietnamese.
On December 8, 2014, April Sea Information Technology Company Limited confirmed by e-mail to the National Arbitration Forum that the <navyferderal.org> domain name is registered with April Sea Information Technology Company Limited and that Respondent is the current registrant of the name. April Sea Information Technology Company Limited has verified that Respondent is bound by the April Sea Information Technology Company Limited 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 10, 2014, the Forum served the Vietnamese language Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 30, 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@navyferderal.org. Also on December 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 January 2, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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's Contentions
1. Complainant owns registrations for the NAVY FEDERAL trademark recognized by the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 2,994,078, registered Sept. 13, 2005). Complainant provides credit union services under the NAVY FEDERAL mark. The <navyferderal.org> domain name is confusingly similar to the NAVY FEDERAL mark as it is comprised of a misspelling of the mark.
2. Respondent has no rights or legitimate interests in the disputed domain name. Complainant has never authorized Respondent to use its NAVY FEDERAL mark, and there is no indication that Respondent is commonly known by the disputed domain name. Respondent’s lack of legitimate interests in the disputed domain name is further demonstrated by Respondent’s failure to use the disputed domain name in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Instead, the disputed domain name redirects users to Respondent’s own website, which includes a directory and commercial search engine that displays links to third-parties including direct competitors of Complainant. Respondent generates advertising and/or click-through revenue through the promoted links and search function.
3. Respondent registered and is using the disputed domain name in bad faith. Respondent has engaged in bad faith under Policy ¶ 4(b)(iii). Respondent uses the disputed name to provide links to other financial institutes such as USAA and Platinum Federal Credit Union. Such use results in a disruption of Complainant’s business. Respondent’s conduct also implicates Policy ¶ 4(b)(iv). Respondent has attempted to profit from a likelihood of user confusion as Respondent generates revenue from the promoted links and related advertisements at the resolving pages.
B. Respondent's Contentions
1. Respondent did not submit a response for the Panel’s consideration.
Language of the Proceedings
The Registration Agreement is written in Vietnamese, thereby making Vietnamese the language of the proceedings.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Vietnamese language Complaint and Commencement Notification, and, absent a Response, concludes that the remainder of the proceedings may be conducted in English.
1. Respondent’s <navyfederal.org> domain name is confusingly similar to Complainant’s NAVY FEDERAL mark.
2. Respondent does not have any rights or legitimate interests in the < navyfederal.org > domain name.
3. Respondent registered or used the <navyfederal.org > 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 provides credit union services under the NAVY FEDERAL mark. Complainant claims to own the NAVY FEDERAL trademark as the mark is recognized by the USPTO (e.g., Reg. No. 2,994,078, registered Sept. 13, 2005). Despite Respondent’s purported residence in Vietnam, the Panel determines that Complainant’s valid registrations with the USPTO serve to demonstrate Complainant’s rights in the NAVY FEDERAL mark for purposes of Policy ¶ 4(a)(i). See Homer TLC, Inc. v. Song Bin, FA 1505218 (Nat. Arb. Forum July 30, 2013) (“Complainant’s USPTO registration sufficiently establishes its rights in the HOME DEPOT mark under Policy ¶4(a)(i), despite the fact Respondent resides outside of the United States.”).
Complainant argues that the <navyferderal.org> domain name is confusingly similar to the NAVY FEDERAL mark as the domain name is comprised by a misspelling of the mark. The Panel notes that the disputed domain name adds the letter “r” into the FEDERAL portion of the mark. Complainant argues that this alteration in spelling is insufficient to distinguish the name from the mark. Prior panels have agreed that the interjection of a single letter into an otherwise incorporated mark does little to negate confusing similarity. For example, in Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004), the panel wrote, “the mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).” Complainant further argues that the addition of the generic top-level domain (“gTLD”) “.org” carries no distinguishing value. Past panels have concluded that the affixation of a gTLD is irrelevant to the confusing similarity, as is the omission of spacing. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). The Panel finds the <navyferderal.org> domain name is confusingly similar to the NAVY FEDERAL mark pursuant to Policy ¶ 4(a)(i) as the domain name merely omits the spacing in the mark, adds a gTLD, and interjects a single additional letter into the otherwise incorporated mark.
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.”).
Complainant begins by arguing that it has never authorized Respondent to use its NAVY FEDERAL mark, and adds there is no indication that Respondent is commonly known by the disputed domain name. The Panel notes that the WHOIS information associated with the subject domain name lists “Pham Dinh Nhut” as the registrant of record. Given the evidence before the Panel, which has not been supplemented by a reply from Respondent, the Panel concludes there is insufficient basis to find Respondent commonly known by the disputed domain name for purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant next argues that Respondent’s lack of legitimate interests in the disputed domain name is further demonstrated by Respondent’s failure to use the disputed domain name in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Instead, Complainant asserts that the disputed domain name redirects users to Respondent’s own website <joinarmy.biz>, which includes a directory and commercial search engine that displays links to third-parties including direct competitors of Complainant. See Compl., at Attached Exs. C–D. Complainant presumes that Respondent generates advertising and/or click-through revenue through the promoted links and search function. Prior panels have found no bona fide offering or legitimate noncommercial or fair use where the disputed domain name was used to promote pay-per-click links and search functions directing users to competitors of the complainant. See Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding that the respondent was not using a disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by redirecting Internet users to a commercial search engine website with links to multiple websites that may be of interest to the complainant’s customers and presumably earning “click-through fees” in the process). Given the competitive and commercial nature of Respondent’s website resolving from the <navyferderal.org> domain name, the Panel finds Respondent has made no bona fide offering of goods or services, nor a legitiamte noncommercial or fair use to warrant the protections of Policy ¶ 4(c)(i) or (iii).
First, Complainant argues that Respondent has engaged in bad faith under Policy ¶ 4(b)(iii). Complainant explains that Respondent uses the disputed name to provide links to other financial institutes such as USAA and Platinum Federal Credit Union. See Compl., at Attached Exs. C-D. Complainant asserts that such use results in a disruption of Complainant’s business. Prior panels have found evidence of bad faith where the disputed domain name resolved to promote links to competitors of the complainant as such conduct is disruptive of the complainant’s efforts to market its own products. See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names). Consistent with prior decisions, the Panel determines that Respondent’s use of the disputed domain name to operate a commercial search engine with capacity to redirect users to competitors of Complainant evinces bad faith use and registration pursuant to Policy ¶ 4(b)(iii).
Complainant further argues that Respondent’s conduct also implicates Policy ¶ 4(b)(iv). Complainant alleges that Respondent has attempted to profit from a likelihood of user confusion, and presumes that Respondent generates revenue from the promoted links and related advertisements at the resolving pages. The Panel recalls that the disputed domain name resolves to promote links to third-parties, some of which compete with Complainant’s credit union services. See Compl., at Attached Exs. C-D. As Respondent is likely benefiting from the links promoted through the confusingly similar <navyferderal.org> domain name, the Panel finds Respondent has engaged in bad faith pursuant to Policy ¶ 4(b)(iv). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); 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.’”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <navyferderal.org> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch
Dated: January 15, 2015
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