Navy Federal Credit Union v. DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM Domain Admin / Domain Registries Foundation
Claim Number: FA1708001743401
Complainant is Navy Federal Credit Union (“Complainant”), represented by John Gary Maynard, Virginia, USA. Respondent is DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM Domain Admin / Domain Registries Foundation (“Respondent”), represented by William A. Delgado of WILLENKEN WILSON LOH & DELGADO LLP, California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <navyfedearal.org>, <bnavyfederal.org>, <navyfederdal.org>, <navyfederalcfu.org>, <navyfederalcrun.org>, and <navyfederalcredituinion.org>, registered with GoDaddy.com, LLC.
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 Forum electronically on August 7, 2017; the Forum received payment on August 7, 2017.
On August 11, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <navyfedearal.org>, <bnavyfederal.org>, <navyfederdal.org>, <navyfederalcfu.org>, <navyfederalcrun.org>, and <navyfederalcredituinion.org> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 August 17, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 6, 2017 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@navyfedearal.org, postmaster@bnavyfederal.org, postmaster@navyfederdal.org, postmaster@navyfederalcfu.org, postmaster@navyfederalcrun.org, and postmaster@navyfederalcredituinion.org. Also on August 17, 2017, 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.
On
August 28, 2017, the FORUM received an email from Respondent stating, formal
part omitted, that it was in receipt of the Complaint and that “We are
agreeable to transfer of the domains.”
A timely Response was received and determined to be complete on September 5, 2017.
On September 11, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant provides financial products and services to current and former service members of the United States military. Complainant uses the NAVY FEDERAL and NAVY FEDERAL CREDIT UNION (“NAVY marks”) marks in conjunction with its business practices. Complainant registered the NAVY FEDERAL mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,994,078, registered Sept. 13, 2005). See Compl., at Attached Ex. A. Complainant also registered the NAVY FEDERAL CREDIT UNION mark with USPTO (e.g., Reg. No. 2,994,079, registered Sept.13, 2005). Id. Respondent’s <navyfedearal.org>, <bnavyfederal.org>, <navyfederdal.org>, <navyfederalcfu.org>, <navyfederalcrun.org>, and <navyfederalcredituinion.org> are confusingly similar to Complainant’s NAVY marks. All of the disputed domain names contain the “.org” generic top level domain (“gTLD”). The <navyfedearal.org>, <bnavyfederal.org>, and <navyfederdal.org> domains incorporate the NAVY FEDERAL mark in its entirety, integrating the letters “a,” “b,” or “d,” or misspelling the term “federal.” The <navyfederalcfu.org>, <navyfederalcrun.org>, and <navyfederalcredituinion.org> domains incorporate the NAVY FEDERAL CREDIT UNION mark in its entirety, appending variations of abbreviations for “credit union” (e.g., “cr un,” “cfu”) or misspelling the term “union.”
Respondent does not have rights or legitimate interests in <navyfedearal.org>, <bnavyfederal.org>, <navyfederdal.org>, <navyfederalcfu.org>, <navyfederalcrun.org>, and <navyfederalcredituinion.org>. Respondent is not commonly known by the disputed domain names. Complainant has not authorized or licensed Respondent to use the NAVY marks in any regard, nor is Respondent affiliated with Complainant. Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. Respondent’s <navyfedearal.org>, <bnavyfederal.org> and <navyfederdal.org> resolve to a parked webpage hosting click-through links to Complainant’s products and third-party products and services in direct competition with Complainant. See Compl., at Attached Ex. C. Respondent’s <navyfederalcfu.org>, <navyfederalcrun.org>, and <navyfederalcredituinion.org> redirect to Respondent’s business website, <yourcareeverwhere.com>, offering health information, and health-related products and services unrelated to Complainant. Id.
Respondent registered and is using <navyfedearal.org>, <bnavyfederal.org>, <navyfederdal.org>, <navyfederalcfu.org>, <navyfederalcrun.org>, and <navyfederalcredituinion.org> domain names in bad faith. The disputed domain names attract users to websites hosting content unrelated to and in competition with Complainant, along with links to Complainant’s products and services, for Respondent’s commercial gain. Respondent registered <navyfedearal.org>, <bnavyfederal.org>, <navyfederdal.org>, <navyfederalcfu.org>, <navyfederalcrun.org>, and <navyfederalcredituinion.org> with actual knowledge of Complainant and its rights to the NAVY marks.
B. Respondent
Respondent made the following contentions.
Respondent is a domain name reseller, owning a portfolio of generic and descriptive domain names. Respondent is the current registrant of <navyfedearal.org>, <bnavyfederal.org>, <navyfederdal.org>, <navyfederalcfu.org>, <navyfederalcrun.org>, and <navyfederalcredituinion.org>.
Without admitting fault or liability, Respondent consents to the voluntary transfer of the <navyfedearal.org>, <bnavyfederal.org>, <navyfederdal.org>, <navyfederalcfu.org>, <navyfederalcrun.org>, and <navyfederalcredituinion.org> domain names to Complainant.
Respondent maintains that it determined this position when it learnt of the dispute and that its consent to the transfer was consistent with its regular business practice when a claim is made that one of its domain names has violated a trademark.
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.
The Panel finds that in circumstances such as those in the present case, where Respondent has not contested the transfer of the disputed domain names but instead agrees to transfer the domain names to Complainant, the Panel may decide to forego the traditional UDRP analysis and order an immediate transfer of the <navyfedearal.org>, <bnavyfederal.org>, <navyfederdal.org>, <navyfederalcfu.org>, <navyfederalcrun.org>, and <navyfederalcredituinion.org> domain names to Complainant. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (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 (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 (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.”).
There also many other decisions to the same effect which have been cited by Respondent.
The present case is one that comes squarely within these principles in view of the contents of Respondent’s email and the Response itself.
For the reasons given above, the Panel will not discuss this element of the Policy.
For the reasons given above, the Panel will not discuss this element of the Policy.
For the reasons given above, the Panel will not discuss this element of the Policy.
Given the common request of the Parties, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <navyfedearal.org>, <bnavyfederal.org>, <navyfederdal.org>, <navyfederalcfu.org>, <navyfederalcrun.org>, and <navyfederalcredituinion.org> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: September 13, 2017
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