River Valley Credit Union, Inc. v. Manila Industries, Inc.
Claim Number: FA0608000772866
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 Manila Industries, Inc. (“Respondent”), 3843 S. Bristol Street #628, Santa Ana, CA 92704.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <myrivervalleycu.com>, registered with Compana, Llc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch 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 16, 2006, Compana, Llc confirmed by e-mail to the National Arbitration Forum that the <myrivervalleycu.com> domain name is registered with Compana, Llc and that Respondent is the current registrant of the name. Compana, Llc has verified that Respondent is bound by the Compana, Llc 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 18, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 7, 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@myrivervalleycu.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 John J. Upchurch 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 <myrivervalleycu.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 <myrivervalleycu.com> domain name.
3. Respondent registered and used the <myrivervalleycu.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>.
Respondent registered the <myrivervalleycu.com> domain name on February 15, 2005. Respondent’s disputed domain name resolves to a website that displays links to third-party websites, some of which are in direct competition with Complainant.
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. 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 <myrivervalleycu.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 the last two words of Complainant’s mark and adds the common Internet term “my.” Such small changes to Complainant’s mark are not enough 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 NIIT Ltd. v. Parthasarathy Venkatram, D2000-0497 (WIPO Aug. 4, 2000) (finding that the “domain name ‘myniit.com,’ which incorporates the word NIIT as a prominent part thereof, is confusingly similar to the Complainant’s trade name and trademark NIIT”).
The Panel finds that Policy ¶ 4(a)(i) has been
satisfied.
Complainant initially must establish that Respondent lacks any rights or legitimate interests in the <myrivervalleycu.com> domain name. However, once Complainant demonstrates a prima facie case, the burden of proof shifts, and Respondent must prove that it has rights or legitimate interests in the disputed domain name. See Woolworths plc. v. Anderson, D2000-1113 (WIPO Oct. 10, 2000) (finding that, absent evidence of preparation to use the domain name for a legitimate purpose, the burden of proof lies with the respondent to demonstrate that it has rights or legitimate interests); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”).
Complainant asserts that Respondent is not authorized to use
Complainant’s RIVER VALLEY CREDIT UNION mark, and that Respondent is not
associated with Complainant in any way.
Furthermore, Respondent’s WHOIS information does not suggest that Respondent
is commonly known by the <myrivervalleycu.com> domain name. In Compagnie
de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000), the
panel found no rights or legitimate interests where the respondent was not
commonly known by the mark and had never applied for a license or permission
from the complainant to use the trademarked name. See Ian Schrager Hotels, L.L.C. v.
Taylor, FA 173369 (Nat. Arb. Forum Sept.
25, 2003) (finding that without demonstrable evidence to support the assertion
that a respondent is commonly known by a domain name, the assertion must be
rejected).
The evidence on record indicates that Respondent is using the disputed domain name to display links to third-party websites, some of which are in direct competition with Complainant. Such use of the <myrivervalleycu.com> domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); 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).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <myrivervalleycu.com>
domain name to divert Internet users to a website that displays links to
third-party websites, some of which are in direct competition with
Complainant. The Panel finds that such
use constitutes disruption and is evidence of bad faith registration and use
under Policy ¶ 4(b)(iii). See EBAY, Inc. v. MEOdesigns, D2000-1368
(Dec. 15, 2000) (finding that the respondent registered and used the domain
name <eebay.com> in bad faith where the respondent has used the domain
name to promote competing auction sites); see
also Puckett, Individually v.
Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has
diverted business from the complainant to a competitor’s website in violation
of Policy ¶ 4(b)(iii)).
Respondent is using the disputed domain name to display links to third-party websites, a use that the Panel infers is for the commercial gain of Respondent through the earning of click-through fees. Additionally, the <myrivervalleycu.com> domain name, which is confusingly similar to Complainant’s mark, creates a likelihood of confusion as to the source and affiliation of Complainant with the disputed domain name and corresponding website. Such use of the disputed domain name constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from its diversionary use of the 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)); see also Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant).
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 <myrivervalleycu.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: September 25, 2006
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