The United Nations Federal Credit Union v. Tanko Credit
Claim Number: FA1812001823100
Complainant is The United Nations Federal Credit Union (“Complainant”), represented by Matt Rott, New York, USA. Respondent is Tanko Credit (“Respondent”), New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <uncrun.com>, registered with Namecheap, Inc., Namecheap 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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 28, 2018; the Forum received payment on December 28, 2018.
On December 29, 2018, Namecheap, Inc., Namecheap Inc confirmed by e-mail to the Forum that the <uncrun.com> domain name is registered with Namecheap, Inc., Namecheap Inc and that Respondent is the current registrant of the name. Namecheap, Inc., Namecheap Inc has verified that Respondent is bound by the Namecheap, Inc., Namecheap Inc registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 2, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 22, 2019 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@uncrun.com. Also on January 2, 2019, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On January 25, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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 cancelled.
A. Complainant
Complainant is a federal credit union, headquartered in Long Island City, New York, U.S. Complainant has rights in the UNFCU trademark based upon the registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,666,294, registered Dec. 24, 2002).
Respondent’s domain name <uncrun.com> is confusingly similar to Complainant’s trademark as it incorporates the entire UNFCU mark, merely removing the letter “f” and adding the letters “r” and “n” and the “.com” generic top-level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <uncrun.com> domain name. Respondent is not licensed or authorized to use Complainant’s UNFCU trademark and is not commonly known by the disputed domain name. Additionally, Respondent is not using the <uncrun.com> domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent attempts to pass off as Complainant.
Respondent has registered and used the <uncrun.com> domain name in bad faith. Respondent intentionally confuses customers and disrupts Complainant’s business by passing off as Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is the owner of the U.S. trademark registration:
No. 2,666,294 UNFCU (word), registered December 24, 2002 for services in class 36.
Respondent registered the disputed domain name <uncrun.com> on February 22, 2018.
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."
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.
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(f), 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 (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.”).
Complainant claims rights in the UNFCU trademark based upon registration of the trademark with the USPTO. Registration of a trademark with the USPTO is sufficient to establish rights in that mark. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). Complainant provides the USPTO registration for the UNFCU mark (e.g., Reg. No. 2,666,294, registered Dec. 24, 2002).
The Panel therefore holds that Complainant’s registration of the UNFCU trademark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complainant next argues Respondent’s <uncrun.com> domain name is confusingly similar to the UNFCU trademark, as it incorporates the entire UNFCU mark, merely removing the letter “f” and adding the letters “r” and “n” and the “.com” gTLD. Such changes are not sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. See Wells Fargo & Company v. VALERIE CARRINGTON, FA 1621718 (Forum July 2, 2015) (finding that the <wllsfago.com> domain name is confusingly similar to the WELLS FARGO mark as the domain name merely omits the “e” and “r” from the mark while adding the “.com” gTLD suffix.); see also Bank of America Corporation v. Above.com Domain Privacy, FA 1629452 (Forum Aug. 18, 2015) (finding that the <blankofamerica.com> domain name contains the entire BANK OF AMERICA mark and merely adds the gTLD ‘.com’ and the letter ‘l’ to create a common misspelling of the word ‘bank.’).
The Panel notes that Complainants registered trademark is an acronym of Complainant’s full name: The United Nations Federal Credit Union, whereas the disputed domain name seems to be more of an apronym of the same name: The United Nations Federal Credit Union. For the normal reader of online information, the visual effects are closely related.
The Panel therefore determines that the <uncrun.com> domain name is confusingly similar to the UNFCU trademark per Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent has no rights or legitimate interests in the <uncrun.com> domain name, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the UNFCU trademark in any way. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). The WHOIS information of record identifies Respondent as “Tanko Credit”, and no information on the record indicates Respondent was authorized to register a domain name incorporating Complainant’s trade mark.
The Panel therefore find under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the <uncrun.com> domain name.
Complainant also asserts that Respondent uses the <uncrun.com> domain name to pass off as Complainant. Use of a disputed domain name to pass off as a complainant does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use of the name under Policy ¶¶ 4(c)(i) or (iii). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant’s mark and various photographs related to the complainant’s business).
The Panel finds that Respondent’s use of the <uncrun.com> domain name to pass off as Complainant is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Complainant argues that Respondent registered and uses the <uncrun.com> domain name in bad faith. Specifically, Complainant contends Respondent is disrupting Complainant’s business by passing off as Complainant. Using a disputed domain name to pass off as a complainant and to disrupt a complainant’s business may indicate bad faith per Policy ¶¶ 4(b)(iii) and/or (iv). See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007) (finding that the respondent’s registration and use of the disputed domain name, which displayed a website virtually identical to the complainant’s website, constituted bad faith pursuant to Policy ¶ 4(b)(iii)); see also Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”).
The Panel note that Complainant provides a screenshot of the disputed domain name’s resolving webpage which contains Complainant’s trademark and impersonates a financial services business. Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith pursuant Policy ¶¶ 4(b)(iii) and (iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <uncrun.com> domain name to be CANCELLED.
Petter Rindforth, Panelist
Dated: January 28, 2019
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