Navy Federal Credit Union v. Ryan G Foo / PPA Media Services
Claim Number: FA1509001636869
Complainant is Navy Federal Credit Union (“Complainant”), represented by John Gary Maynard, Virginia, USA. Respondent is Ryan G Foo / PPA Media Services (“Respondent”), Chile.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nfcu.net>, 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 8, 2015; the Forum received payment on September 8, 2015.
On September 10, 2015, Internet.bs Corp. confirmed by e-mail to the Forum that the <nfcu.net> 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 September 10, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 30, 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@nfcu.net. Also on September 10, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On October 9, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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’s rights in the NAVY FEDERAL CREDIT UNION mark have been firmly established through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,883,913, registered March 14, 1995). In addition, Complainant has established common law rights in the NFCU mark through customers’ consistent use of the abbreviation and search engine results demonstrating that customers and the public associate the NFCU mark with Complainant. Complainant’s NAVY FEDERAL CREDIT UNION and NFCU marks are identical or confusingly similar to the disputed <nfcu.net> because merely abbreviating a mark or adding the generic top-level domain (“gTLD”) “.com” does not distinguish the domain from Complainant’s mark.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name based on WHOIS information and has not received Complainant’s authorization to use any of Complainant’s trademarks. Respondent’s use of the domain name cannot be considered either a bona fide offering of goods and services or a legitimate noncommercial or fair use because Respondent uses the disputed domain name to resolve to a directory website hosting links to Complainant’s website as well as the websites of Complainant’s competitors.
Respondent has registered and is using the disputed domain name in bad faith. Respondent has shown a pattern of bad faith registration that indicates that this registration is also likely to be in bad faith. Respondent attempts to compete and disrupt Complainant’s business through hosting links to Complainant’s competitors. Finally, Respondent’s use of a domain that is confusingly similar to Complainant’s marks to host commercial links shows that Respondent attracts and confuses internet users for profit.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the NAVY FEDERAL CREDIT UNION mark through its registration of such mark with the USPTO.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in its relevant trademarks.
Respondent uses the at-issue domain name to address a directory website hosting links to Complainant’s website as well as the websites 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 establishes its rights in the NAVY FEDERAL CREDIT UNION mark through its USPTO trademark registration of such mark. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO). Complainant’s rights exist notwithstanding that Respondent may operate outside the jurisdiction of the trademark’s registrar. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
As evidenced In Complainant’s papers, Respondent’s domain name’s second level, “nfcu,” (NFCU) is a common abbreviation for Complainant’s NAVY FEDERAL CREDIT UNION trademark. In forming <nfcu.net> the top-level domain name “.net” is appended to the NFCU abbreviation. The differences between the at-issue domain name and Complainant’s mark are thus insufficient to distinguish one from the other for the purposes of Policy ¶4(a)(i). Therefore the Panel finds that the <nfcu.net> domain name is confusingly similar to Complainant’s NAVY FEDERAL CREDIT UNION trademark. See Algemeen Nederlands Persbureau ANP B.V. v. European Travel Network, D2004-0520 (WIPO Sept. 8, 2004) (finding confusing similarity where “[d]istinctive elements of the Complainant’s marks, notably the acronym ANP, are reproduced entirely in the domain name.”); see also, Bank of America Corporation v. Reginald Benson II / Griar Group, FA1609261 (Nat. Arb. Forum April 29, 2015) (finding that “…the <bofacredit.com> domain name is confusingly similar to the BANK OF AMERICA mark as the domain name simply incorporates a common abbreviation of the BANK OF AMERICA MARK, the descriptive term ‘credit,’ and the ‘.com’ gTLD…such alterations do not overcome a finding of confusing similarity under a Policy ¶ 4(a)(i) analysis.”); see also, Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). Since Complainant’s NAVY FEDERAL CREDIT UNION trademark is itself confusingly similar to the at-issue domain name, the Panel need not consider the trademark status of NFCU.
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.
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.
WHOIS information for the at-issue domain name lists “Ryan G Foo / PPA Media Services” as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the <nfcu.net> 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 Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Respondent uses the at-issue domain name to address a link directory website containing a search function. Various links are hosted on the directory website with titles such as, “Navy Federal Credit Union,” “Military Banking,” and “Bad Credit Military Loans.” These links reference websites of Complainant as well as businesses in competition with Complainant. However, using the confusingly similar domain name in this manner is neither a bona fide offering of goods and services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that the respondent’s use of domain names confusingly similar to the complainant’s WAL-MART mark to divert Internet users seeking the complainant’s goods and services to websites competing with the complainant 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)).
Given the forgoing, Complainant satisfies its initial burden under Policy ¶4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name.
The domain name was registered and used in bad faith. As discussed below, Policy ¶4(b) specific bad faith circumstances are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
First, Respondent has been a respondent in numerous UDRP proceedings which resulted in the transfer of Respondent’s at-issue domain name. See e.g., ADP, LLC v. Ryan G Foo / PPA Media Services, FA 631726 (Nat. Arb. Forum Sept. 16, 2015); ModCloth, Inc. v. Ryan G Foo / PPA Media Services, FA 629107 (Nat. Arb. Forum Aug. 17, 2015). Respondent’s history of having suffered multiple adverse UDRP proceedings suggests a pattern of bad faith pursuant to Policy ¶ 4(b)(ii). See TRAVELOCITY.COM LP v. Aziz, FA 1260783 (Nat. Arb. Forum June 16, 2009) (“These previous [UDRP] decisions demonstrate a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii).”).
Second and as mentioned above, Respondent’s <nfcu.net> domain name is used in a manner that directs traffic to Complainant’s own websites and also competes with Complainant by also directing Internet traffic to certain third party competitors of Complainant. Such use of the confusingly similar domain name disrupts Complainant’s business and demonstrates bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iii). See Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where the respondent’s website featured hyperlinks to competing websites and included a link to the complainant’s website, the respondent’s use of the <redeemaamiles.com> domain name constituted disruption under Policy ¶ 4(b)(iii)).
Finally, the confusingly similar domain name is arguably used to commercially benefit Respondent via pay-per-click links or otherwise by capitalizing on the mistaken belief of Internet users that the website addressed by the <nfcu.net> domain name is sponsored by, or affiliated with, Complainant. Thereby, Respondent misappropriates the goodwill associated with Complainant’s trademark, uses such goodwill to its pecuniary advantage, and demonstrates bad faith under Policy ¶ 4(b)(iv). See Navy Federal Credit Union v. Pham Dinh Nhut, FA 1593447 (Nat. Arb. Forum January 15, 2015) (finding “bad faith pursuant to Policy ¶ 4(b)(iv)” because “Respondent is likely benefiting from the links promoted through the confusingly similar <navyferderal.org> domain name…” where the “disputed domain name resolves to promote links to third-parties, some of which compete with Complainant’s credit union services.”); see also, Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”)
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <nfcu.net> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: October 13, 2015
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