Franklin Mint Federal Credit Union v. GNO, Inc.
Claim Number: FA0612000860527
Complainant is Franklin Mint Federal Credit Union (“Complainant”), represented by Robert
B. Famiglio, of Famiglio & Associates,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fmcu.com>, registered with Moniker Online Services, Inc.
The undersigned certify that they have acted independently and impartially and that to the best of their knowledge they have no known conflict in serving as Panelist in this proceeding.
James A. Carmody, Hon. Carolyn Marks Johnson and Jonas Gulliksson sit as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically December 4, 2006. Complainant was notified by the National Arbitration Forum December 6, 2006, that the Complaint was deficient pursuant to UDRP Rule 4(b). Complainant then requested to withdraw its Complaint, pursuant to the Forum’s Supplemental Rule 12(a). The National Arbitration Forum granted Complainant’s request on December 11, 2006, and dismissed without prejudice.
Complainant reinstated its Complaint by sending a hard copy of the Complaint to the National Arbitration Forum January 10, 2007.
On December 5, 2006 and again on January 10, 2007, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <fmcu.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. verified that Respondent is bound by the Moniker Online Services, Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 10, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 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 email@example.com by e-mail.
A timely Response was received and determined to be complete on January 30, 2007.
On February 9, 2007, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed James A. Carmody, Hon. Carolyn Marks Johnson and Jonas Gulliksson (chair) as Panelists.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following allegations in this Complaint:
1. Respondent registered <fmcu.com>, a domain name that is identical to or confusingly similar to marks in which Complainant has protected rights. The marks are Franklin Mint Federal Credit Union, also commonly referred to as Franklin Mint Credit Union and their abbreviations, FMFCU and FMCU.
2. That Respondent has no rights to or legitimate interests in the marks contained
within the disputed domain name.
3. That Respondent registered and used the domain name in bad faith.
B. Respondent makes the following points in Response:
1. Complainant has failed to show that the disputed domain name is confusingly similar or identical to a mark in which Complainant has rights. The letters used in the disputed domain name are used by a number of financial institutions, including Respondent, but not by Complainant.
2. Respondent has made a bona fide use of the domain name and has rights in the disputed domain name.
3. Respondent did not act in bad faith in registering the disputed domain name.
FINDINGS AND DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 Complainant to 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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 provides banking services including general financial services for its members as well as loans, mortgages, and financial products. Respondent does the same, according to Complainant, at the domain name in dispute.
Complainant registered the FMFCU PREMIER CHECK CARD mark with the United States Patent and Trademark Office (U.S. P.T.O.) (Registration Number 2,204,341).
Complainant asserted that it has used the combination of the name Franklin Mint Federal Credit Union or formatives of that name as its actual and common law trademark for at least 36 years but offered no proof to show secondary meaning.
In March of 1970 Complainant urges that it adopted the name Franklin Mint Employee Federal Credit Union and then dropped the word “Employee” from the name in May of 1987.
Complainant asserts that through its efforts substantial goodwill and customer recognition are identified to its present name, Franklin Mint Federal Credit Union but offered insufficient proof to enable the panel to find secondary meaning associated with the letters in the disputed domain name.
Complainant alleged that Respondent has no rights to or legitimate interests in the disputed domain name, <fmcu.com>.
Complainant alleged that Respondent registered and used the disputed domain name in bad faith.
Complainant uses the URL <fmfcu.org> and there is no reason to doubt Complainant’s assertion that it has used the said URL for some years.
Respondent registered the disputed domain name in 2002 and asserts that it is among numerous other short, four-letter domain names that Respondent has legitimately registered. Respondent established that others are making non-exclusive use of the same letters as those in the disputed domain name, including a number of financial institutions but not Complainant.
Respondent asserts that Complainant is not known by an “FMCU” mark.
Complainant’s proof may include an attorney-generated forced search result rather than accurately showing Respondent’s home page at <fmcu.com>.
Identical to or Confusingly Similar:
Complainant must first show that the disputed domain name is identical to or confusingly similar to a mark in which Complainant has rights. Here, Complainant provided evidence to support its registration of the marks that it uses in commerce. However, Complainant provided no evidence showing use of the mark contained within the disputed domain name, <fmcu.com>, or that Complainant has rights in an FMCU mark.
Complainant urges that the disputed domain name uses a “shorthand” version of its “FMFCU PREMIER CHECK CARD” marks. The Complainant does not show use of this “shorthand” mark by Complainant or by Complainant’s customers. The acronym of the Complainant's trade name is not a “trade or service mark right” as required under the Policy, which was expressly limited to trade or service mark rights to the exclusion of trade names:
It is well settled that the Policy does not protect trade names or company names when this is the extent of their use. See for example Ahmanson Land Company v. Vince Curtis, D2000-0859 (WIPO Dec. 4, 2000), where the Panel stated: "It is true that trade names.. ..were not intended to be made subject to the proposed dispute resolution procedure.. ..It must be concluded, therefore, that ICANN did not intend the procedure to apply to trade names...” Sealite Pty Limited v. Carmanah Technologies, Inc., D2003-0277 (WIPO June 11, 2003).
Complainant carefully avoids claiming an exclusive right in "FMCU" for good reason, as it is a common acronym in the financial field. Respondent supported its contentions with evidence of other web pages showing use of FMCU in commerce by credit unions that actually used the FMCU mark as a designation of their business. All of these credit unions have the same thing in common, which Complainant does not have - i.e. they all use "FMCU" to designate a credit union. Complainant here actually claims that Respondent is using a "confusingly similar" domain name to Complainant’s FMFCU acronym, and in fact seeks transfer of a domain name, which is (a) not identical to the Complainant's acronym, yet (b) is identical to acronyms used non-exclusively by other credit unions. In other words, Complainant's goal in this proceeding is to obtain by indirect means, a domain name that is closer to acronyms used by Complainant’s competitors than to Complainant's own names. Nonetheless, Complainant has not established that it uses FMFCU, let alone FMCU, as a trade or service mark of any kind.
Complainant’s sole evidence under this criterion of the Policy is Complainant’s federal registration for the compound mark "FMFCU PREMIER CHECK CARD." This mark was applied for registration and registered in its entirety, and Complainant certainly could have sought registration for "FMFCU" alone. Complainant, for reasons obvious on a moment's reflection on Exhibit A to the Response, did not seek registration of "FMFCU" standing alone, but instead sought registration of the compound mark as a whole. As recently noted relative to such a registration, when such registration is the sole evidence of a trade or service mark right:
The Panel also notes that the mark "FMCU" is federally registered as US TM Reg. No. 3,076,560 to another party entirely. Hence, Complainant's federal registration does not demonstrate trade or service mark rights in "FMFCU," let alone FMCU, apart from the mark as a whole, which is the subject of that registration. The disclaimer of "PREMIER CHECK CARD" does not alter the mark-as-a-whole analysis any more than it altered the analysis relative to "HOMERIC TOURS" in the Homeric Tours decision.
The Panel has found that Complainant failed to show legal or common law rights in the FMCU mark used in the disputed domain name and that Complainant failed to show that the FMCU mark had acquired secondary meaning in connection with Complainant’s financial and banking services. See Cyberimprints.com, Inc. v. Alberga, FA 100608 (Nat. Arb. Forum Dec. 11, 2001) (finding that the complainant failed to prove trademark rights at common law because it did not prove the CYBERIMPRINTS.COM mark was used to identify the source or sponsorship of goods or services or that there was strong customer identification of the mark as indicating the source of such goods or services); see also Kip Cashmore v. URLPro, D2004-1023 (WIPO Mar. 14, 2005) (finding no common law rights where the complainant did not present any credible evidence establishing acquired distinctiveness). The Complaint must be supported by sufficient evidence to establish the secondary meaning or use in connection with the provision of goods or services that a Complainant claims. See Weatherford Int’l, Inc. v. Wells, FA 153626 (Nat. Arb. Forum May 19, 2003) (“Although Complainant asserts common law rights in the WELLSERV mark, it failed to submit any evidence indicating extensive use or that its claimed mark has achieved secondary source identity . . . [Complainant’s claim that it is well known] is a finding that must be supported by evidence and not self-serving assertions.”); see also Molecular Nutrition, Inc. v. Network News & Publ’ns, FA 156715 (Nat. Arb. Forum June 24, 2003) (finding that the complainant failed to establish common law rights in its mark because mere assertions of such rights are insufficient without accompanying evidence to demonstrate that the public identifies the complainant’s mark exclusively or primarily with the complainant’s products); see also Kip Cashmore v. URLPro, D2004-1023 (WIPO Mar. 14, 2005) (finding no common law rights where the complainant did not present any credible evidence establishing acquired distinctiveness).
The Panel finds that Complainant failed to satisfy the requirements of Policy ¶ 4(a)(i).
Rights to or Legitimate Interests
Complainant alleges as a basis for transfer of the disputed domain name that Respondent lacks rights to or legitimate interests in the mark contained within the disputed domain name. Complainant has the burden of making a prima facie case that Respondent has no rights or legitimate interests in the <fmcu.com> domain name under Policy ¶ 4(a)(ii). Only then does the burden shift to Respondent to show it does have rights or legitimate interests. 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 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 has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Complainant maintains that Respondent is not commonly known by the <fmcu.com> domain name, because the WHOIS information lists “GNO, Inc.” as the registrant of the domain name, and that no other evidence in the record suggests that Respondent is commonly known by the <fmcu.com> domain name.
Complainant failed to make a prima facie case in support of its allegations that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Lush LTD v. Lush Environs, FA 96217 (Nat. Arb. Forum Jan. 13, 2001) (finding that even when the respondent does file a response, the complainant must allege facts, which if true, would establish that the respondent does not have any rights or legitimate interests in the disputed domain name); see also Graman USA Inc. v. Shenzhen Graman Indus. Co. FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that absent a showing of any facts by the complainant that establish the respondent lacks rights or legitimate interests in the disputed domain name, the panel may decline to transfer the disputed domain name).
Respondent claims that it has rights or legitimate interests in the <fmcu.com> domain name because the disputed domain name is simply an abbreviation for many things, including several other credit unions, including: “Fort McPherson Credit Union,” “Fort Monroe Credit Union,” “Fort Mclellan Credit Union,” “Firstmark Credit Union,” and “Fred Meyer Credit Union.” Because the <fmcu.com> domain name is merely a four-letter abbreviation, the Panel concludea that Respondent has rights or legitimate interests in the <fmcu.com> domain name pursuant to Policy ¶ 4(a)(ii). See THQ Inc. v Hamid Ramezany, FA 96853 (Nat. Arb. Forum Apr. 30, 2001) (“Respondent appears to have legitimate rights in the domain name thq.net. Respondent successfully demonstrated that a version of his product exists under the name "The Highest Qualification Network". The domain name thq.net is an acronym of the business name "The Highest Qualification Network". Respondent is within his rights to secure a domain name, develop products and seek funding prior to a full commercial launch of the web site under the domain name.”); see also Louis Vuitton Malletier S.A. v. Manifest Information Servs., FA 796276 (Nat. Arb. Forum Nov. 7, 2006) (concluding that the <lv.com> domain name consisted of two letters that could stand for many things and that therefore the respondent could establish rights or legitimate interests in the disputed domain name despite the complainant having rights in the LV mark).
Respondent also alleges that it has registered numerous four-letter domain names for their inherent value. The fact that Respondent appears to be a generic domain name reseller supports findings that Respondent has rights or legitimate interests in the <fmcu.com> domain name pursuant to Policy ¶ 4(a)(ii). See Alphalogix Inc. v. MarketPoints.com, FA 491557 (Nat. Arb. Forum. Jul. 26, 2005) (“Respondent is in the business of creating and supplying domain names for new entities, including acquiring expired domain names. This is a legitimate activity in which there are numerous suppliers in the United States.”); see also Fifty Plus Media Corp. v. Digital Income, Inc., FA 94924 (Nat. Arb. Forum July 17, 2000) (finding that the complainant failed to prove that the respondent had no rights in the domain name and had registered and used the domain name in bad faith where the respondent is an Internet business which deals in selling or leasing descriptive/generic domain names). Respondent claims that it has rights or legitimate interests in the <fmcu.com> domain name because the disputed domain name is simply an abbreviation for many things, including several other credit unions, including: “Fort McPherson Credit Union,” “Fort Monroe Credit Union,” “Fort McLellan Credit Union,” “Firstmark Credit Union” and “Fred Meyer Credit Union.” Respondent also alleges that it has registered numerous four-letter domain names for their inherent value, including, inter alia, the domain name <fmcu.com>. As Respondent appears to be a generic domain name reseller, the Panel finds that Respondent has legitimate interests in the <fmcu.com> domain name pursuant to Policy ¶ 4(a)(ii). See Alphalogix Inc. v. MarketPoints.com, FA 491557 (Nat. Arb. Forum. Jul. 26, 2005) (“Respondent is in the business of creating and supplying domain names for new entities, including acquiring expired domain names. This is a legitimate activity in which there are numerous suppliers in the United States.”); see also Fifty Plus Media Corp. v. Digital Income, Inc., FA 94924 (Nat. Arb. Forum July 17, 2000) (finding that the complainant failed to prove that the respondent had no rights in the domain name and had registered and used the domain name in bad faith where the respondent is an Internet business which deals in selling or leasing descriptive/generic domain names).
The domain name was registered in 2002 - five years ago. Complainant filed a dispute proceeding under the policy in late 2006, in which Complainant did not make the surprising allegation that the Respondent "illegally make[s] reference to the Franklin Mint Credit Union on the web pages." This allegation is interesting for reasons aside from the fact that, for the purpose of this dispute, Complainant has shortened its own name. In fact, the Panel notes that included among Complainant’s exhibits are documents that appear to be generated. The search bar shown in the page, and in the header information printed on the page, shows that the page was generated by someone typing "franklin mint credit union" into the search box in the upper right hand portion of the page. In other words, those links that Complainant claims were placed there by Respondent were the result of a search run from the search box on the Respondent's page.
If that point is not clear, attached as Exhibit B was a copy of the Respondent's page as seen by a visitor to <fmcu.com>. There are displayed a variety of links generated by an automated system, and which generate links relating to FMC Corporation, and other links determined by an automated algorithm as being among the types of things which visitors to <fmcu.com> have historically attempted to find. Because FMCU is a non-exclusive acronym, Respondent's use of the domain name is to connect it with a paid referral search system to attempt to match user behavior to the most likely paid advertisements for which visitors may be searching.
Further, attached to the Response as Exhibit C was a copy of Respondent's web page, generated in response to the search term: "fictional evidence." That document shows that the term "fincu :: fictional evidence" is shown in the upper left, and that the links on the page relate to the words "fictional" and "evidence." Similarly, attached as Exhibit D to the Response was a copy of Respondent's web page, generated in response to the search term "creation of counsel." As can be seen therein, the term "fmcu :: creation of counsel" is shown in the upper left of the print, along with relevant links.
Looking again at Complainant's exhibit 3, it can be seen that "fmcu :: franklin mint credit union" appears in the upper left and, unsurprisingly, the links on the page are from advertisers that provide various information relating to the Complainant's products. It should be plainly apparent at this point why Complainant abandoned its first UDRP filing, when Complainant discovered that it could enter searches on Complainant's name, and then feign surprise that, yes, a search engine will generate links containing the Complainant's name in response to such a search.
One would think that if Respondent had registered the domain name in 2002, in order to exploit a string of characters - which do not even correspond to the Complainant's acronym - that the Complainant would be able to show some evidence of such use or such an intent pre-dating a search results page generated by the Complainant's counsel in January 2007.
The Panel finds that Complainant failed to meet its burden of demonstrating that Respondent has no rights or legitimate interests in the domain name pursuant to Policy ¶ 4(a)(ii).
Complainant also alleged that Respondent registered and used the disputed domain name in bad faith. Respondent claims that it has not offered to sell the domain name to Complainant, has not prevented Complainant from reflecting its mark in the domain name, has not disrupted Complainant’s business, and has not attempted to divert Internet users to the domain name for Respondent’s own commercial gain. Instead, Respondent claims to be a generic domain name registrant of numerous four-letter abbreviations as domain names for their inherent value. Respondent claims such use establishes its good faith registration because it demonstrates that it has not targeted Complainant by registering the <fmcu.com> domain name.
The Panel finds that Complainant failed to show that Respondent violated any of the factors listed in Policy ¶ 4(b). No evidence in the record suggests that Respondent registered and used the <fmcu.com> domain name in bad faith. See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001) (finding that where the respondent has not attempted to sell the domain name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of the complainant seeking to disrupt the complainant's business, and is not using the domain name to divert Internet users for commercial gain, lack of bona fide use on its own is insufficient to establish bad faith).
Furthermore, the Panel finds that the <fmcu.com> domain name is comprised of four letters that could be an abbreviation for any number of business entities or organizations, which provides additional evidence that Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Hydrologic Servs., Inc.. v. Name Delegation, FA 707617 (Nat. Arb. Forum July 12, 2006) (finding no bad faith registration and use of the <hysr.com> domain name because “Given the brevity of the disputed domain name, the obscurity of the mark, the geographic locations of the parties, and the nature of the parties' activities, it would not be reasonable to infer that Respondent had actual knowledge of Complainant or its mark when it registered the disputed domain name.”); see also U.S. Fire Arms Mfg. Co. v. Salvia Corp., FA 612350 (Nat Arb. Forum Feb. 1, 2006) (finding no bad faith registration and use by the respondent of the <usfa.com> domain name because at least seventeen entities other than the complainant used the mark and the respondent did not register the domain name with the complainant specifically in mind).
Bad faith registration and use is the final of the three criteria required of Complainant and the "bad faith" criterion is an element of specific intent directed toward the Complainant, and arising from rights known by Respondent to belong to the Complainant, as shown in the Policy examples all of which relate, at their basis, to a conscious and willful exploitation of the Complainant's rights.
As noted above, Complainant's "evidence" consists of Complainant's own manipulation of search results on the Respondent's web page, and the claim that Respondent intentionally placed those automatically generated links on the web pages shown in Complainant's exhibit 3. It is clear that Complainant's exhibit 3 carries notations indicating the manner in which Complainant's counsel generated this fictitious evidence; and further, Complainant does not mention that the initial UDRP filing against this domain name was withdrawn by Complainant so that it could add these recent allegations. Again, we observe that the domain name was registered in 2002, and the Complainant's search was conducted in January 2007 in order to generate the claimed evidence of bad faith. As noted in Troyal Garth Brooks & Blue Rose, Inc. v. Bob Crull, FA 799367 (Nat. Arb. Forum Dec. 1, 2006):
In particular, the only evidence of improper use of the disputed domain name is so brief and so distant in time from the date on which the domain name was registered that it is of little or no probative value in assessing Respondent's reasons for registering the domain name ten years earlier.
Here, the self-generated search results, shown by Complainant to have been generated in January 2007, cannot be considered probative of the Respondent's intent in registering the domain name in 2002. As noted in Mariah Media Inc. v. First Place® Internet Inc., D2006-1275 (WIPO Dec. 6, 2006):
There is no evidence in the record that casts doubt on the Respondent's claim that the advertising links are served automatically by a third-party advertising feed provider using keyword search techniques rather than human selection. The automated advertising feed arrangements are such that it cannot be assumed that the Respondent requested such links or was even aware of them before receiving notice of this dispute. In the face of the Respondent's denials and the automated nature of the advertising links, the Panel considers these particular links insufficient to prove the Respondent's intent to mislead Internet users by means of the Domain Name itself. In short, the Panel is unwilling to attribute bad faith to this search software.
Here, the situation is farther afield than in Mariah Media, as there are no links, nor have there been any links on the Respondent's home page that relate to the Complainant. It is only by entering selected search terms into the search bar that the Complainant was able to intentionally generate the search results shown in Complainant's Exhibit 3.
Respondent denies having been aware of the Complainant prior to the
first version of this Proceeding, as filed.
Attached as Exhibit F to the Response was a Declaration of Respondent's
president attesting to such denial, among other facts noted and relied upon
herein within Respondent's knowledge.
The Panel notes that Respondent's counsel and Complainant's counsel are
both located in
It is true that the Respondent has connected an arbitrary string of characters with a paid search system. However, absent intentional manipulation of the search results provided by the system, there are no links or references relating to the Complainant present at the Respondent's web site. Indeed, the Respondent has registered a number of four-letter domain names for this purpose, merely because they are short, and hence inherently valuable. Attached hereto as Exhibit E is a copy of an article from the Domain Name Journal, a number of 4-letter, dot-com domain sales, including <cmas.com> for $15,250, <eswc.com> for $11,111 and <krea.com> for $10,500. The Respondent has registered quite a few four-letter domain names, including:
among many more, and all of which may be independently confirmed to be owned by Respondent. Clearly, the Respondent is an optimistic domain registrant, and any one of these names may not be particularly valuable. The Respondent's interest in registering short domain names is not targeted toward trade or service mark owners. Specifically, what the Respondent's pattern of domain name registrations clearly shows is that its registration of this domain name was not motivated by any intent - which the Policy requires - directed toward the Complainant. Indeed, had the Respondent been motivated to register a domain name relating to the Complainant, the Respondent would be more likely to register then-available directly infringing domain names such as Complainant's federally registered mark itself as <fmfcupremiercheckcard.com> or closer variations thereof.
Accordingly, the Respondent denies that the domain name was registered in bad faith, and submits the Complainant has not shown evidence indicating any intentional action by the Respondent, which manifests the bad faith intent alleged by the Complainant.
The Panel finds that Complainant has not met its burden of demonstrating that Respondent registered and is using the domain name in bad faith pursuant to Policy ¶ 4(a)(iii).
Having failed to establish all three of the elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Jonas Gulliksson, Chair
James A. Carmody, Panelist
Hon. Carolyn Marks Johnson, Panelist
Dated: March 9, 2007
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