Michigan First Credit Union v. DNS MANAGER / PROFILE GROUP
Claim Number: FA1505001618757
Complainant is Michigan First Credit Union (“Complainant”), represented by Ryan D. Ricks of SNELL & WILMER L.L.P, Arizona, USA. Respondent is DNS MANAGER / PROFILE GROUP (“Respondent”), Delaware, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <michiganfirstmortgage.com>, registered with eNom, Inc.
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.
R. Glen Ayers served as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 11, 2015; the Forum received payment on May 11, 2015.
On May 12, 2015, eNom, Inc. confirmed by e-mail to the Forum that the <michiganfirstmortgage.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 May 14, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 3, 2015 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@michiganfirstmortgage.com. Also on May 14, 2015, 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.
A timely Response was received and determined to be complete on June 1, 2015.
On June 8, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed R. Glen Ayers as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant uses the MICHIGAN FIRST mark in connection with its business, which provides financial products and services. Complainant has rights in the MICHIGAN FIRST mark because it has registered the mark with the United States Patent and Trademark Office (“PTO”) (Reg. No. 4,338,257, reflecting a first use in commerce April 14, 2001. The application was filed September 17, 2012; the mark was registered May 21, 2013).
Complainant alleges that it holds established common law rights in the mark which predate the registration of the disputed domain name. It registered and has used the Domain Name <michiganfirst.com> since 2001, and has used “Michigan First” as a trademark at least since April, 2001. Complainant asserts that the mark holds or held a secondary meaning and was always distinctive, identifying the Complainant and its services long prior to registration.
Respondent’s <michiganfirstmortgage.com> domain name is confusingly similar to the MICHIGAN FIRST mark as the name incorporates: “mortgage”, a term descriptive of Complainant’s business purposes; “.com”, a generic top-level domain (“gTLD”); and the fully incorporated MICHIGAN FIRST mark (while eliminating the spacing between words).
Visitors to Respondent’s web site, the name of which is either identical to or confusingly similar to that of Complainant, would, says Complainant, “reasonably believe that the website was associated with Michigan First.”
Complainant asserts that it has never authorized Respondent’s use of the MICHIGAN FIRST mark; that Respondent is not commonly known by that name; and, finally, the domain name resolves to a click-through site with hyperlinks which may resolve to competitors of Complainant. Therefore, the Complaint alleges, there is no bona fide offering of goods or services or any legitimate noncommercial or fair use.
Complaint concludes by stating that Respondent’s conduct is bad faith, for it “uses the subject domain name to direct consumers to other commercial sites, presumably in return for click-through fees. [This] is indisputable evidence of bad faith.”
B. Respondent
Respondent denies any ill-intent. It asserts that it “takes active measures to avoid” this sort of situation and “that it never received any communication from Complainant prior to filing the UDRP complaint.” Respondent asserts that it would have reviewed any demand. Now that it has received the Complaint, it has reviewed the allegations, and has “offered to promptly grant Complaint’s requested remedy.”
Respondent asserts “the utmost good faith in reaching out to Complainant and offering free and immediate transfer of the Domain . . . [and] Complainant has refused to cooperate.”
Respondent requests dismissal of the Complaint because Respondent acted in good faith. In the alternative, Respondent requests a transfer without making “any formal finding that Respondent acted in ‘bad faith.’”
Respondent consents to transfer the domain names to Complainant. As a result, the Panel certainly can find that in a circumstance such as this, where Respondent has not contested the transfer of the disputed domain names but instead agrees to transfer the domain name in question to Complainant, the Panel may decide to forego the traditional UDRP analysis and order an immediate transfer of the <michiganfirstmortgage.com> domain name. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant . . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”); see also Disney Enters., Inc. v. Morales, FA 475191 (Nat. Arb. Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).
Alternatively, the Panel may decide that Complainant has not implicitly consented in its Complaint to the transfer of the disputed domain name without a decision on the merits by the Panel. The Panel may find that the “consent-to-transfer” approach is but one way for cybersquatters to avoid adverse findings against them. In Graebel Van Lines, Inc. v. Tex. Int’l Prop. Assocs., FA 1195954 (Nat. Arb. Forum July 17, 2008), the panel stated that:
Respondent has admitted in his response to the complaint of Complainant that it is ready to offer the transfer without inviting the decision of the Panel in accordance with the Policy. However, in the facts of this case, the Panel is of the view that the transfer of the disputed domain name deserves to be along with the findings in accordance with the Policy.
Therefore, the Panel could decide that it would like to analyze the case under the elements of the UDRP and engage in a traditional analysis of the facts asserted and enter formal findings.
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.
Respondent does not contest that the domain name is identical or confusingly similar.
Respondent does not dispute that it has no rights or legitimate interests in the domain name.
Respondent denies that it acted in bad faith. Upon demand, it quickly agreed to surrender the domain name. It only asks, however, that no formal finding of “bad faith” be entered.
Comment and Analysis
In this case, three factors have induced the Panel to grant Respondent’s request that it make no finding of “bad faith,” but allow Respondent its wish to avoid a finding of “bad faith.”
First, it is undisputed that no informal or formal demand was made by Complainant upon Respondent to cease the use of the infringing domain name.
Next, upon review of the Complaint, Respondent immediately surrendered.
Finally, Complainant did not request that this Panel make formal findings on the issue of “bad faith.”
In such circumstances, and realizing that the “surrender” is itself somewhat suspect, the Panel will not further analyze this matter but will enter a formal order requiring the transfer.
Having considered the facts and Respondent’s Response consenting to the transfer of the domain name, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <michiganfirstmortgage.com> domain name be TRANSFERRED from Respondent to Complainant.
R. Glen Ayers, Panelist
Dated: June 20, 2015
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