River Valley Credit Union, Inc. v. Web Advertising, Corp.
Claim Number: FA0608000771891
Complainant is River Valley Credit Union, Inc. (“Complainant”), represented by Paul W. Kruse of Bone McAllester Norton PLLC, 511 Union Street Suite 1600, Nashville, TN, 37219, USA. Respondent is Web Advertising, Corp. (“Respondent”), Kings Court, Bay Street, P.O. Box N-3944, Nassau, II BS.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <rivervalleyfinancial.com>, registered with Domaindoorman, Llc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically August 8, 2006; the National Arbitration Forum received a hard copy of the Complaint August 9, 2006.
On August 8, 2006, Domaindoorman, Llc confirmed by e-mail to the National Arbitration Forum that the <rivervalleyfinancial.com> domain name is registered with Domaindoorman, Llc and that Respondent is the current registrant of the name. Domaindoorman, Llc verified that Respondent is bound by the Domaindoorman, Llc registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On August 15, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 5, 2006, 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@rivervalleyfinancial.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 13, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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. The disputed domain name that Respondent registered, <rivervalleyfinancial.com> domain name is confusingly similar to Complainant’s RIVER VALLEY CREDIT UNION mark.
2. Respondent has no rights to or legitimate interests in the <rivervalleyfinancial.com> domain name.
3. Respondent registered and used the <rivervalleyfinancial.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, River Valley Credit Union, Inc., has been offering credit union services under the RIVER VALLEY CREDIT UNION mark since at least as early as June 13, 2001. Currently, Complainant provides credit union services to at least 14,817 customers. Moreover, Complainant has spent more than $1,000,000 promoting and marketing its RIVER VALLEY CREDIT UNION mark in connection with its credit union services. Complainant has also made substantially exclusive and continuous use of the RIVER VALLEY CREDIT UNION mark in commerce for at least the last five years in connection with its offering of credit union services, as indicated by the records of the National Credit Union Administration submitted by Complainant.
Respondent registered the <rivervalleyfinancial.com> domain name on October 6, 2005. Respondent’s disputed domain name resolves to a website featuring links to third party websites that offer financial services unrelated to Complainant’s credit union services business.
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 will draw such inferences as the Panel 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.”).
Paragraph 4(a) of the Policy requires Complainant to 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 Complainant has established common law rights in the RIVER VALLEY CREDIT UNION mark pursuant to Policy ¶ 4(a)(i). Previous panels have held that a complainant does not need a registered trademark in order to demonstrate rights in a mark pursuant to Policy ¶ 4(a)(i). Rather, a complainant may establish common law trademark rights in a mark by demonstrating secondary meaning for the mark with actual evidence. See Winterson v. Hogarth, D2000-0235 (WIPO May 22, 2000) (finding that the Policy does not require that a complainant’s trademark be registered by a government authority or agency in order for the complainant to establish rights in the mark); see also Stellar Call Ctrs. Pty Ltd. v. Bahr, FA 595972 (Nat. Arb. Forum Dec. 19, 2005) (finding that the complainant established common law rights in the STELLAR CALL CENTRES mark because the complainant demonstrated that its mark had acquired secondary meaning). Complainant submitted evidence that it has been offering credit union services under the RIVER VALLEY CREDIT UNION mark since 2001, and that Complainant’s mark has been widely recognized as associated with Complainant’s credit union services by the National Credit Union Administration. Therefore, the Panel finds that Complainant has sufficiently demonstrated secondary meaning in its RIVER VALLEY CREDIT UNION mark, and thus has established common law rights in the mark.
Furthermore, the Panel finds that Respondent’s <rivervalleyfinancial.com> domain name is confusingly similar to Complainant’s RIVER VALLEY CREDIT UNION mark under Policy ¶ 4(a)(i). Respondent’s <rivervalleyfinancial.com> domain name consists of Complainant’s mark, with the omission of the terms “credit” and “union,” and the addition of the descriptive term “financial” with the generic top-level domain (“gTLD”) “.com.” Prior panels have held that similar alterations to a mark do not negate the confusing similarity created between the mark and the resulting domain name. In Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005), the panel found that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark. Moreover, in Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000), the panel determined that the top level of the domain name such as “.net” or “.com” did not affect the domain name for the purpose of determining whether it is identical or confusingly similar. Therefore, the Panel finds that the <rivervalleyfinancial.com> domain name, consisting of alterations to Complainant’s RIVER VALLEY CREDIT UNION mark, is confusingly similar to the mark in accord with Policy ¶ 4(a)(i).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Pursuant to Policy ¶ 4(a)(ii), Complainant must initially establish that Complainant has rights to or legitimate interests in the mark contained within the identical or confusingly similar domain name. Complainant has also alleged that Respondent lacks such rights to and legitimate interests in the disputed domain name. Once Complainant sufficiently demonstrates a prima facie case, the burden of proof shifts to Respondent to prove that it has rights or legitimate interests in the domain name pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); 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 the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist). The Panel finds that Complainant made its prima facie showing. Although Respondent did not appear in this matter, the Panel evaluates the evidence on record to determine whether Respondent has rights or legitimate interests with regard to the <rivervalleyfinancial.com> domain name pursuant to Policy ¶ 4(c).
The Panel finds that Respondent’s disputed domain name resolves
to a website featuring third-party links to websites that also offer financial
and credit union services. As a result,
the evidence on record indicates that Respondent registered the confusingly
similar <rivervalleyfinancial.com> domain name with the intention
of diverting Internet users seeking information regarding Complainant’s credit
union services to Respondent’s website.
The Panel finds that such use by Respondent is not bona fide
offering of goods or services under Policy ¶ 4(c)(i) and it is not a
noncommercial or fair use under Policy ¶ 4(c)(iii). See Charles Letts & Co. v. Citipublications, FA
692150 (Nat. Arb. Forum July 17, 2006) (finding that the respondent’s use of a
domain name that was confusingly similar to the complainant’s mark to display
links to the complainant’s competitors did not constitute 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 also Bank of Am. Fork v. Shen,
FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of
a domain name to redirect Internet users to websites unrelated to a
complainant’s mark is not a bona fide use under Policy ¶ 4(a)(i)).
Furthermore, the evidence on record suggests that Respondent is not commonly known by the <rivervalleyfinancial.com> domain name pursuant to Policy ¶ 4(c)(ii). The WHOIS information for the <rivervalleyfinancial.com> domain name shows that Respondent is known as “Web Advertising, Corp.” Complainant has asserted and the evidence on record suggests that Respondent is not affiliated with Complainant in any way and is not otherwise authorized by Complainant to use the RIVER VALLEY CREDIT UNION mark. Consequently, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns, Inc. v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent is not commonly known by the <cigaraficionada.com> domain name because the WHOIS information lists the registrant of the domain name as as “WORLDTRAVELERSONLINE.COM,” and no other evidence exists in the record indicating that the respondent is known by the domain name); see also 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”).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
According to the evidence on record, Respondent is using the
disputed domain name, which is confusingly similar to Complainant’s mark, to
operate a website containing several links to commercial websites offering financial
services other than Complainant’s credit union services business. The Panel finds that Respondent’s
registration and use of the <rivervalleyfinancial.com> domain name
constitutes registration and use in bad faith under Policy ¶ 4(b)(iv). In AOL LLC v. iTech Ent, LLC, FA
726227 (Nat. Arb. Forum July 21, 2006), the panel found that the respondent
took advantage of the confusing similarity between the <theotheraol.com>
and <theotheraol.net> domain names and the complainant’s AOL mark, which
indicated bad faith registration and use pursuant to Policy ¶ 4(b)(iv). Furthermore,
in State Fair of Tex. v.
Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000), the Panel found
that the respondent registered the <bigtex.net> domain name in order to
infringe on the complainant’s goodwill and attract Internet users to the
respondent’s website and that such use constituted bad faith under Policy ¶
4(b)(iv). Therefore, in the instant case, the Panel finds that Respondent
registered and used the disputed 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 <rivervalleyfinancial.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: September 26, 2006.
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