River Valley Credit Union, Inc. v. River Valley Credit Union Inc.
Claim Number: FA0608000771896
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. Respondent is River Valley Credit Union Inc. (“Respondent”), 505 Earl Blvd, Miamisburg, OH 45342.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <rivervalleyfcu.com>, registered with Nameview, Inc.
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 Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 8, 2006; the National Arbitration Forum received a hard copy of the Complaint on August 9, 2006.
On August 14, 2006, Nameview, Inc. confirmed by e-mail to the National Arbitration Forum that the <rivervalleyfcu.com> domain name is registered with Nameview, Inc. and that Respondent is the current registrant of the name. Nameview, Inc. has verified that Respondent is bound by the Nameview, Inc. 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 August 21, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 11, 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@rivervalleyfcu.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 18, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 <rivervalleyfcu.com> domain name is confusingly similar to Complainant’s RIVER VALLEY CREDIT UNION mark.
2. Respondent does not have any rights or legitimate interests in the <rivervalleyfcu.com> domain name.
3. Respondent registered and used the <rivervalleyfcu.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, River Valley Credit Union, Inc., is a credit
union that currently provides its services to over 14,000 customers. Complainant has been using its RIVER VALLEY
CREDIT UNION mark since at least June, 2001, and uses the mark in connection
with its marketing materials, member statements, website and other member
communications. Complainant also
operates a website at <rivervalleycu.org>. Over the last five years, Complainant has spent over $1,000,000
promoting and marketing its mark in connection with its credit union services.
Respondent registered the <rivervalleyfcu.com> domain name on July 26, 2005. Respondent is using the disputed domain name to operate a website that features links to third-party websites from which Respondent presumably receives commercial benefit.
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. 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 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 is not required to own a trademark registration to establish rights in the RIVER VALLEY CREDIT UNION mark under Policy ¶ 4(a)(i). See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does not require that a trademark be registered by a governmental authority for such rights to exist.”).
Complainant has established common law rights in the RIVER VALLEY CREDIT UNION mark through continuous and extensive use of the mark in connection with its business since at least June 2001. Complainant currently has over 14,000 customers, and has used its mark in connection with the services offered to these clients. Complainant uses the mark in connection with its marketing materials, member communications and its website, located at the <rivervalleycu.org> domain name. Complainant has also invested substantial money in marketing and advertising its credit union services. Accordingly, the Panel finds that Complainant’s RIVER VALLEY CREDIT UNION mark has acquired secondary meaning sufficient to establish common law rights in the mark. See S.A. Bendheim Co., Inc. v. Hollander Glass, FA 142318 (Nat. Arb. Forum Mar. 13, 2003) (holding that the complainant established rights in the descriptive RESTORATION GLASS mark through proof of secondary meaning associated with the mark); see also Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of [KEPPEL BANK] in connection with its banking business, it has acquired rights under the common law.”).
Respondent’s <rivervalleyfcu.com> domain name
is confusingly similar to Complainant’s RIVER VALLEY CREDIT UNION mark under
Policy ¶ 4(a)(i), as the disputed domain name simply abbreviates “credit union”
and adds the letter “f.” The
abbreviation “fcu” is a common abbreviation for “federal credit union.” Such small alterations to Complainant’s mark
are insufficient to negate the confusing similarity between Complainant’s mark
and Respondent’s disputed domain name. See
Minn. State Lottery v. Mendes, FA 96701 (Nat. Arb. Forum Apr. 2, 2001)
(finding that the <mnlottery.com> domain name is confusingly similar to
the complainant’s MINNESOTA STATE LOTTERY registered mark); see also Modern
Props, Inc. v. Wallis, FA 152458 (Nat. Arb. Forum June 2, 2003)
(“Notwithstanding the analysis by Respondent, ‘modprops’ is a contraction or
shorthand for ‘Modern Props.’ ‘Mod’ cononotes [sic] ‘modern’ regardless of any
other dictionary meanings, so the names are substantially similar in
meaning.”); see also Microsoft Corp. v. Montrose Corp., D2000-1568 (WIPO
Jan. 25, 2001) (finding the domain name <ms-office-2000.com> to be
confusingly similar even though the mark MICROSOFT is abbreviated).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have rights or legitimate interests in the <rivervalleyfcu.com> domain name. Once Complainant makes a prima facie case in support of its allegations, a rebuttable presumption exists that Respondent lacks rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). Furthermore, the burden shifts to Respondent to show otherwise. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that, where the complainant has asserted that respondent does not have rights or legitimate interests with respect to the domain name, it is incumbent on 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 the complainant that the respondent does not have rights or legitimate interests is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence). However, the Panel chooses to analyze whether the evidence supports rights or legitimate interests under Policy ¶ 4(c).
Complainant contends that Respondent is using the confusingly similar <rivervalleyfcu.com> domain name to operate a website that features commercial links to a third-party website from which Respondent presumably commercially benefits. The Panel finds that such use is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy); see also Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names).
Furthermore, Complainant contends that Respondent is neither commonly known by the disputed domain name nor licensed to register domain names featuring Complainant’s mark or any variation thereof, despite the fact that Respondent appears to be known as “River Valley Credit Union Inc.” Without evidence to suggest otherwise, the Panel finds that Respondent is not commonly known by the disputed domain name for purposes of Policy ¶ 4(c)(ii). See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”); see also City News & Video v. Citynewsandvideo, FA 244789 (Nat. Arb. Forum May 5, 2004) (“Although Respondent’s WHOIS information lists its name as ‘citynewsandvideo,’ there is no evidence before the Panel to indicate that Respondent is, in fact, commonly known by the disputed domain name <citynewsandvideo.com> pursuant to Policy ¶ 4(c)(ii).”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <rivervalleyfcu.com> domain name to operate a website that features links to a third-party website from which Respondent presumably receives referral fees. The Panel infers that Respondent receives click-through fees for misleading consumers to these websites. Therefore, Respondent is taking advantage of the likelihood of confusion between Respondent’s domain name and Complainant’s mark and capitalizing on the goodwill of the mark. The Panel finds that such use constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where the respondent registered and used a domain name confusingly similar to the complainant’s mark to attract users to a website sponsored by the respondent); see also Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <rivervalleyfcu.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: October 2, 2006
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum