Kinecta Federal Credit Union v. Surio Mario Martinez Juarez Ferdinando
Claim Number: FA0609000795388
Complainant is Kinecta Federal Credit Union (“Complainant”), represented by Marie L. Pascua, of Styskal, Wiese & Melchione, LLP, 550 North Brand Boulevard, Suite 550, Glendale, CA 91203. Respondent is Surio Mario Martinez Juarez Ferdinando (“Respondent”), Fudan University, 220 Handan Rd., Shanghai 200433, CN.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <kinectafederalcreditunion.com>, registered with Moniker Online Services, 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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 12, 2006; the National Arbitration Forum received a hard copy of the Complaint on September 13, 2006.
On September 19, 2006, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <kinectafederalcreditunion.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, 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 September 20, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 10, 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@kinectafederalcreditunion.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 17, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 <kinectafederalcreditunion.com> domain name is confusingly similar to Complainant’s KINECTA mark.
2. Respondent does not have any rights or legitimate interests in the <kinectafederalcreditunion.com> domain name.
3. Respondent registered and used the <kinectafederalcreditunion.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Kinecta Federal Credit Union, established in
1940, has grown to become one of the largest credit unions in the United
States. Complainant serves
approximately 200,000 member-owners around the country and holds over $3
billion in assets. In connection with
its federal credit union services, Complainant holds a service mark
registration for the KINECTA mark with the United States Patent and Trademark
Office (“USPTO”) (Reg. No. 2,592,584 issued July 9, 2002). Complainant holds numerous domain name
registrations in connection with the provision of its online services,
including the <kinecta.org> and <kinectacreditunion.org> domain
names.
Respondent registered the <kinectafederalcreditunion.com> domain name on November 26, 2005. The disputed domain name resolves to a website that features advertisments to third-party websites that relate to financial services that directly compete with Complainant’s 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 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 has established that it has rights in the KINECTA mark through registration of the mark with the USPTO. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also 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 [or] have acquired secondary meaning.”).
Complainant asserts that the <kinectafederalcreditunion.com> domain name is confusingly similar to its KINECTA mark. The disputed domain name contains Complainant’s mark in its entirety and adds the terms “federal credit union,” terms that describes Complainant’s business, and “.com,” a generic top-level domain (“gTLD”). The Panel finds that neither the addition of terms that merely describe the business of Complainant nor the addition of a gTLD sufficiently differentiate the disputed domain name from Complainant’s mark. Accordingly, the Panel finds the <kinectafederalcreditunion.com> domain name to be confusingly similar to Complainant’s KINECTA mark pursuant to Policy ¶ 4(a)(i). See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business); see also Wescom Credit Union v. Shing, FA 417528 (Nat. Arb. Forum Mar. 24, 2005) (finding the <wescomcreditunion.com> domain name to be confusingly similar to the complainant’s WESCOM mark because the complainant offered services as a credit union); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Pursuant to Policy ¶ 4(a)(ii), Complainant holds the initial burden of proof to establish a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name. If Complainant successfully establishes a prima facie case, the burden shifts to Respondent to show that it does have rights or legitimate interests in the disputed domain name. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the 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 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).”). The Panel finds Complainant to have successfully established a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names through its uncontested assertions and evidentiary submissions. The Panel will analyze the evidence on the record to determine if Respondent has met its burden of showing that it does in fact have rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c).
Respondent’s failure to submit a Response in this proceeding suggests that Respondent lacks rights and legitimate interests in the disputed domain name. See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that the respondent has no rights or legitimate interests in the domain name because the respondent never submitted a response or provided the panel with evidence to suggest otherwise). However, the Panel chooses to analyze the evidentiary record to determine if Respondent nevertheless has rights or legitimate interests in the disputed domain name.
According to the WHOIS database, the registrant of the disputed domain name is “Surio Mario Martinez Juarez Ferdinando.” Without additional evidence in the record to suggest otherwise, the Panel finds that Respondent is not commonly known by the disputed domain name or any variation thereof. 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); 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").
Furthermore, the disputed domain name resolves to a website that merely features advertisments to third-party websites that relate to financial services that directly compete with Complainant’s business. It has been commonly held that the use of a confusingly similar domain name to resolve to a website that merely features advertisements to third-party websites does not amount to 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). This finding is compounded by the fact that the resulting website features advertisements to third-party websites that directly compete with Complainant’s business. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (holding that the respondent’s use of the disputed domain name to host a series of hyperlinks and a banner advertisement was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent has registered and used
the disputed domain name in bad faith.
Due to the advertising-centric nature of the resulting website, it is
reasonable for the Panel to presume that Respondent is receiving commercial
gain from its operation. Additionally,
due to the fact that the confusingly similar domain name resolves to a website
that offers links to websites dealing with financial services, it is likely
that consumers will become confused as to Complainant’s sponsorship of or
affiliation with the resulting website.
Accordingly, the Panel finds that Respondent’s use of the confusingly
similar domain name to resolve to a website that merely offers advertisements
to third-party financial group websites evidences bad faith registration and
use pursuant to Policy ¶ 4(b)(iv). See
Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that
the respondent’s registration of an infringing domain name to redirect Internet
users to banner advertisements constituted bad faith use of the domain name); see also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's
prior use of the <mailonsunday.com> domain name is evidence of bad faith
pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's
competitors and Respondent presumably commercially benefited from the
misleading domain name by receiving ‘click-through-fees.’”).
Moreover, the Panel finds that Respondent’s diversionary use of the disputed domain name to deflect Internet users seeking Complainant’s website to competing websites constitutes disruption and evidences bad faith registration and use pursuant to 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)).
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 <kinectafederalcreditunion.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: October 31, 2006
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