San Diego County Credit Union v. Asia
Ventures, Inc.
Claim
Number: FA0503000444402
Complainant is San Diego County Credit Union (“Complainant”),
represented by Kevin A. Cahill of Luce, Forward, Hamilton & Scripps, 11988 El Camino Real, Suite 200, San Diego, CA 92130. Respondent is Asia Ventures, Inc. (“Respondent”), GPO 11136, Central, Hong Kong,
People’s Republic of China.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <sandiegocountycreditunion.com>,
registered with The Registry At Info Avenue d/b/a IA Registry.
The
undersigned certifies that r she has acted independently and impartially and to
the best of her knowledge has no known conflict in serving as Panelist in this
proceeding.
Sandra
Franklin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on March
18, 2005; the National Arbitration Forum received a hard copy of the Complaint
on March 21, 2005.
On
March 21, 2005, The Registry At Info Avenue d/b/a IA Registry confirmed by
e-mail to the National Arbitration Forum that the domain name <sandiegocountycreditunion.com>
is registered with The Registry At Info Avenue d/b/a IA Registry and that
Respondent is the current registrant of the name. The Registry At Info Avenue d/b/a IA Registry has verified that
Respondent is bound by The Registry At Info Avenue d/b/a IA Registry registration
agreement and has thereby agreed to resolve domain name disputes brought by
third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution
Policy (the "Policy").
On
March 22, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
April 11, 2005 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent's registration as technical, administrative and billing
contacts, and to postmaster@sandiegocountycreditunion.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
April 26, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed Sandra
Franklin 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." 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 makes the following assertions:
1. Respondent’s <sandiegocountycreditunion.com>
domain name is identical to Complainant’s SAN DIEGO COUNTY CREDIT UNION mark.
2. Respondent does not have any rights or
legitimate interests in the <sandiegocountycreditunion.com> domain
name.
3. Respondent registered and used the <sandiegocountycreditunion.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, San
Diego Credit Union, offers the full panoply of financial institution services,
such as checking accounts, deposit accounts, IRA accounts, business accounts,
ATM services, safety deposit boxes, home loans, vehicle loans and leases,
vehicle buying services, credit cards, business loans, personal loans,
insurance and protection, investment services, bill pay services, Internet
branch services, and other financial-related services.
Complainant
holds a trademark registration for the SAN DIEGO COUNTY CREDIT UNION mark with
the United States Patent and Trademark Office (Reg. No. 2,539,940 issued February
19, 2002, filed December 29, 2000).
Complainant has been using its SAN DIEGO COUNTY CREDIT UNION mark in
commerce since October 1977.
Complainant
operates its main website at <sdccu.com>, and has been doing so since
April 2000.
Respondent
registered the <sandiegocountycreditunion.com> domain name on
March 26, 2002. Respondent is using the
disputed domain name to redirect Internet users to a website that contains a
search engine, pop-up advertisements, and a number of advertising links to
various goods and services including banking, loans, credit card and other
financial-related services. Respondent
presumably profits from this website through click-through revenues.
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."
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.
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.
Complainant has
established that it has rights in the SAN DIEGO COUNTY CREDIT UNION mark
through registration with the United States Patent and Trademark Office and
through use of its mark in commerce for the last twenty-eight years. See Men’s Wearhouse, Inc. v. Wick,
FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law,
registered marks hold a presumption that they are inherently distinctive and
have acquired secondary meaning.”); see
also Janus Int’l Holding Co. v.
Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that panel decisions
have held that registration of a mark is prima
facie evidence of validity, which creates a rebuttable presumption that the
mark is inherently distinctive and that a respondent has the burden of refuting
this assumption); see also Tuxedos By Rose v. Nunez, FA
95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark
where its use was continuous and ongoing, and secondary meaning was
established); see also FDNY Fire Safety Educ. Fund, Inc. v. Miller,
FA 145235 (Nat. Arb. Forum Mar. 26, 2003) (finding that Complainant’s rights in
the FDNY mark relate back to the date that its successful trademark
registration was filed with the U.S. Patent and Trademark Office).
Respondent’s <sandiegocountycreditunion.com>
domain name is identical to Complainant’s SAN DIEGO COUNTY CREDIT UNION mark
because the domain name wholly incorporates Complainant’s mark and simply adds
the generic top-level domain (“gTLD”) “.com.”
The mere addition of a gTLD to Complainant’s mark fails to sufficiently
differentiate Respondent’s domain name from Complainant’s mark. See Pomellato
S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding
<pomellato.com> identical to Complainant’s mark because the generic
top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Sporty’s Farm L.L.C. v. Sportsman’s Mkt., Inc., 202 F.3d
489 (2d Cir. 2000) cert. denied, 530 U.S. 1262 (2000), (“For
consumers to buy things or gather information on the Internet, they need an
easy way to find particular companies or brand names. The most common method of
locating an unknown domain name is simply to type in the company name or logo
with the suffix .com.”); see also Blue Sky Software Corp. v. Digital
Sierra, Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the domain name
<robohelp.com> is identical to Complainant’s registered ROBOHELP
trademark, and that the “addition of .com is not a distinguishing difference”).
The Panel finds
that Complainant satisfied Policy ¶ 4(a)(i).
Respondent has
not submitted a Response in this proceeding.
Thus, the Panel chooses to view the Complaint in the light most
favorable to Complainant and accepts as true all assertions made by
Complainant. In addition, Complainant
asserts that Respondent has no rights or legitimate interests in the disputed
domain name. Accordingly, the Panel
presumes that Respondent lacks rights and legitimate interests in the <sandiegocountycreditunion.com>
domain name. See G.D. Searle v. Martin
Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where
a complainant has asserted that the respondent has no rights or legitimate
interests with respect to the domain name it is incumbent on the respondent to
come forward with concrete evidence rebutting this assertion because this
information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com,
D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the
mere assertion by a complainant that the respondent has no rights or legitimate
interests is sufficient to shift the burden of proof to the respondent to
demonstrate that such rights or legitimate interests do exist).
Respondent is
not authorized or licensed by Complainant to use the SAN DIEGO COUNTY CREDIT
UNION mark in the disputed domain name.
Moreover, no evidence before the Panel suggests that Respondent is
commonly known by the domain name pursuant to Policy ¶ 4(c)(ii). Therefore, Respondent has no rights or
legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949
(Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require
a showing that one has been commonly known by the domain name prior to
registration of the domain name to prevail"); see also Compagnie de
Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding
no rights or legitimate interests where a respondent was not commonly known by
the mark and never applied for a license or permission from the complainant to
use the trademarked name); see also Charles
Jourdan Holding AG v. AAIM, D2000-0403 (WIPO
June 27, 2000) (finding no rights or legitimate interests where (1) a
respondent is not a licensee of the complainant; (2) the complainant’s rights
in the mark precede the respondent’s registration; and (3) the respondent is
not commonly known by the domain name in question).
Furthermore, the
<sandiegocountycreditunion.com> domain name is identical to
Complainant’s SAN DIEGO COUNTY CREDIT UNION mark and is used to redirect
Internet users to a website offering links to a wide variety of financial
services, including those similarly offered by Complainant. The Panel finds that Respondent’s use of the
domain name that is identical to Complainant’s mark is not a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See TM Acquisition Corp. v. Sign Guards,
FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that a respondent’s
diversionary use of the complainant’s marks to send Internet users to a website
that displayed a series of links, some of which linked to competitors of the
complainant, was not a bona fide offering of goods or services); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb.
Forum June 23, 2003) (holding that a respondent’s appropriation of the
complainant’s mark to market products that compete with the complainant’s goods
does not constitute a bona fide offering of goods and services); see also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb.
Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain
name to redirect Internet users to a financial services website, which competed
with the complainant, was not a bona fide offering of goods or services).
The Panel finds
that Complainant satisfied Policy ¶ 4(a)(ii).
Respondent’s
registration of the disputed domain name, a domain name that incorporates
Complainant’s mark and simply adds a gTLD, suggests that Respondent knew of
Complainant’s rights in the SAN DIEGO COUNTY CREDIT UNION mark. Furthermore, Complainant’s registration of
its mark with the United States Patent and Trademark Office confers constructive
knowledge on anyone attempting to use the mark. In addition, Respondent must have known about Complainant’s mark
because the link between the financial services content on the website and
Complainant’s business is apparent.
Thus, the Panel finds that Respondent chose the <sandiegocountycreditunion.com>
domain name based on the distinctive qualities of Complainant’s mark, which
evidences bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Samsonite
Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding
that evidence of bad faith includes actual or constructive knowledge of a
commonly known mark at the time of registration); see also Orange Glo Int’l v.
Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s
OXICLEAN mark is listed on the Principal Register of the USPTO, a status that
confers constructive notice on those seeking to register or use the mark or any
confusingly similar variation thereof”); see
also Entrepreneur Media, Inc. v. Smith,
279
F.3d 1135, 1148 (9th Cir. 2002) ("Where an alleged infringer chooses a
mark he knows to be similar to another, one can infer an intent to
confuse."); see also Digi Int’l v. DDI Sys., FA
124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad
faith, when Respondent reasonably should have been aware of Complainant’s
trademarks, actually or constructively.”); see also Pfizer, Inc. v. Suger,
D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between a
complainant’s mark and the content advertised on the respondent’s website was
obvious, respondent “must have known about the Complainant’s mark when it
registered the subject domain name”).
Respondent’s <sandiegocountycreditunion.com>
domain name diverts Internet users wishing to search under Complainant’s SAN
DIEGO COUNTY CREDIT UNION mark to Respondent’s commercial website through the
use of a domain name confusingly similar to Complainant’s mark. Specifically, uncontested evidence indicates
that the subject domain name earns referral fee revenue for Respondent through
click-through advertising. Thus, the
Panel finds that Respondent’s practice of diversion, motivated by commercial
gain, through use of a confusingly similar domain name evidences bad faith
registration and use pursuant to Policy ¶ 4(b)(iv). See H-D Michigan, Inc. v. Petersons Auto.,
FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed domain name
was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through the
respondent’s registration and use of the infringing domain name to
intentionally attempt to attract Internet users to its fraudulent website by
using the complainant’s famous marks and likeness); see also G.D. Searle & Co.
v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002)
(finding that a respondent registered and used the domain name in bad faith
pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly
similar domain name to attract Internet users to its commercial website); see also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002)
(finding that if a respondent profits from its diversionary use of a
complainant's mark when the domain name resolves to commercial websites and the
respondent fails to contest the complaint, it may be concluded that the
respondent is using the domain name in bad faith pursuant to Policy ¶
4(b)(iv)).
The Panel finds
that Complainant satisfied Policy ¶ 4(a)(iii).
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <sandiegocountycreditunion.com> domain name be
TRANSFERRED from Respondent to Complainant.
Sandra Franklin, Panelist
Dated:
April 26, 2005
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