Tyndall Federal Credit Union v. I do control the domain, George :) c/o Chen Bao Shui
Claim Number: FA0705000977212
Complainant is Tyndall Federal Credit Union (“Complainant”), represented by George
E. Bullwinkel, of Bullwinkel Partners, Ltd.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <tyndallfederalcreditunion.com>, registered with eNom, 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.
Honorable Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 3, 2007; the National Arbitration Forum received a hard copy of the Complaint on May 4, 2007.
On May 4, 2007, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <tyndallfederalcreditunion.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, 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 May 10, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 30, 2007 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@tyndallfederalcreditunion.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 4, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (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 <tyndallfederalcreditunion.com> domain name is identical to Complainant’s TYNDALL FEDERAL CREDIT UNION mark.
2. Respondent does not have any rights or legitimate interests in the <tyndallfederalcreditunion.com> domain name.
3. Respondent registered and used the <tyndallfederalcreditunion.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Tyndall Federal
Credit Union, offers many different types of banking and credit union services,
including checking and savings accounts, individual retirement accounts,
Internet banking, safe deposit box services, Visa check cards with ATM access,
and much more. Complainant has used the
TYNDALL FEDERAL CREDIT UNION mark in commerce continuously since 1956 to
advertise and promotes its banking and credit union services. The TYNDALL FEDERAL CREDIT UNION mark was
approved by, and subsequently registered with, the National Credit Union Administration
of Washington, D.C. pursuant to the National Credit Union Act, 12 U.S.C. § 1751
et seq., as the official name of
Complainant’s business. Complainant has
registered numerous domain names that all resolve to Complainant’s website
located at the <tyndallfcu.org> domain name, which advertises
Complainant’s banking and credit union services online.
Respondent, I do control the domain, George :) c/o Chen Bao Shui, registered the <tyndallfederalcreditunion.com> domain name on April 11, 2007. Respondent is using the disputed domain name to advertise various banking and credit union services.
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.
It is not necessary for Complainant to hold a registered trademark in order to establish rights in the TYNDALL FEDERAL CREDIT UNION mark. Common law rights are sufficient to satisfy Policy ¶ 4(a)(i). See Hiatt v. Pers. Fan & Official Site Builders : we build great sites, FA 881460 (Nat. Arb. Forum Feb. 21, 2007) (“Registration with a trademark authority is unnecessary under Policy ¶ 4(a)(i) in instances where a mark has gained secondary meaning through extensive commercial use and common law rights have been established ….”); 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 sufficiently established common law rights in its TYNDALL FEDERAL CREDIT UNION mark through extensive and continuous use. Complainant has used the mark continuously in commerce for over fifty years to advertise its services, and has registered numerous domain names that resolve to Complainant’s website which advertises Complainant’s services online. Complainant has also registered the TYNDALL FEDERAL CREDIT UNION mark with the National Credit Union Administration of Washington, D.C. as the official name of its business. Therefore, the Panel finds that Complainant has established sufficient secondary meaning in the TYNDALL FEDERAL CREDIT UNION mark to establish common law rights in the mark pursuant to Policy ¶ 4(a)(i). See 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.”); see also Fishtech, Inc. v. Rossiter, FA 92976 (Nat. Arb. Forum Mar. 10, 2000) (finding that the complainant has common law rights in the mark FISHTECH that it has used since 1982).
Respondent’s <tyndallfederalcreditunion.com> domain name contains Complainant’s TYNDALL FEDERAL CREDIT UNION mark in its entirety without the spaces, and adds the generic top-level domain (“gTLD”) “.com.” These changes are insignificant because all domain names must include a gTLD and may not contain any spaces. Therefore, the Panel finds that Respondent’s <tyndallfederalcreditunion.com> domain name is identical to Complainant’s TYNDALL FEDERAL CREDIT UNION mark pursuant to Policy ¶ 4(a)(i). See Diesel v. LMN, FA 804924 (Nat. Arb. Forum Nov. 7, 2006) (finding <vindiesel.com> to be identical to complainant’s mark because “simply eliminat[ing] the space between terms and add[ing] the generic top-level domain (“gTLD”) ‘.com’ … [is] insufficient to differentiate the disputed domain name from Complainant’s VIN DIESEL mark under Policy ¶ 4(a)(i).”); see also Abt Elecs., Inc. v. Ricks, FA 904239 (Nat. Arb. Forum Mar. 27, 2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
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 <tyndallfederalcreditunion.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). 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). Since Respondent has not responded to the Complaint, the Panel will examine the record to determine if Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c).
Complainant has alleged that Respondent is not commonly
known by the <tyndallfederalcreditunion.com>
domain name. The WHOIS information
identifies Respondent as “I do control the
domain, George :) c/o Chen Bao Shui,” and the Panel can find no other
evidence in the record indicating that Respondent is commonly known by the
disputed domain name. Therefore, the
Panel concludes that Respondent is not commonly known by the <tyndallfederalcreditunion.com>
domain name pursuant to Policy ¶ 4(c)(ii). See
M. Shanken Commc’ns v.
WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding
that the respondent was not commonly known by the <cigaraficionada.com>
domain name under Policy ¶ 4(c)(ii) based on the WHOIS
information and other evidence in the record); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding
that the respondent was not commonly known by the <shoredurometer.com>
and <shoredurometers.com> domain names because the WHOIS information
listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip’t as the
registrant of the disputed domain name and there was no other evidence in the
record to suggest that the respondent was commonly known by the domain names in
dispute).
Respondent
is using the <tyndallfederalcreditunion.com> domain name to
advertise various banking and credit union services. The Panel finds that such use does not
constitute a bona fide offering of
goods and services under Policy ¶ 4(c)(i), or a
legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Am. Int’l Group, Inc. v.
Benjamin, FA 944242 (Nat. Arb. Forum May 11, 2007) (finding that the
respondent’s use of a confusingly similar domain name to advertise real estate
services which competed with the complainant’s business did not constitute a bona fide offering of goods or services
under Policy ¶ 4(c)(i), or a legitimate noncommercial
or fair use under Policy ¶ 4(c)(iii)); see also Gardens
Alive, Inc. v. D&S Linx, FA
203126 (Nat. Arb. Forum Nov. 20, 2003) (finding that the respondent used a
domain name for commercial benefit by diverting Internet users to a website
that sold goods and services similar to those offered by the complainant and
thus, was not using the name in connection with a bona fide offering of
goods or services nor a legitimate noncommercial or fair use).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <tyndallfederalcreditunion.com> domain name to advertise various banking and credit union services. In Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006), the panel held that the respondent’s registration of a domain name confusingly similar to the complainant’s mark in order to operate a competing online dating website supported a finding that the respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii). Similarly, in S. Exposure v. Southern Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000), the panel found that the respondent acted in bad faith under Policy ¶ 4(b)(iii) by attracting Internet users to a website that competed with the complainant’s business. In this case, Respondent’s <tyndallfederalcreditunion.com> domain name competes with Complainant’s banking and credit union services, and is likely to disrupt Complainant’s business by diverting customers to Respondent’s competing site. Therefore, the Panel finds that Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii).
Respondent’s <tyndallfederalcreditunion.com> domain name, which is identical to Complainant’s TYNDALL FEDERAL CREDIT UNION, is likely to cause confusion among customers searching for Complainant’s banking and credit union services. Specifically, customers may become confused as to the affiliation, endorsement, or sponsorship of the services advertised on Respondent’s website. Since Respondent is attempting to commercially benefit from the goodwill associated with Complainant’s TYNDALL FEDERAL CREDIT UNION mark, the Panel finds that Respondent’s registration and use of the <tyndallfederalcreditunion.com> domain name constitutes bad faith pursuant to Policy ¶ 4(b)(iv). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”); 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 <tyndallfederalcreditunion.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: June 11, 2007
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