Westconsin Credit Union v. TaeYoung.Jung
Claim Number: FA0805001183167
Complainant is Westconsin Credit Union (“Complainant”), represented by Anthony
J. Bourget, of Bourget Law,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <westconsincreditunion.com>, registered with Korea Information Certificate Authority, Inc. d/b/a Domainca.com.
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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On May 20, 2008, a Korean language Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 9, 2008 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@westconsincreditunion.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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.
Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the Korean language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <westconsincreditunion.com> domain name is identical to Complainant’s WESTCONSIN CREDIT UNION mark and confusingly similar to Complainant’s WESTCONSIN mark.
2. Respondent does not have any rights or legitimate interests in the <westconsincreditunion.com> domain name.
3. Respondent registered and used the <westconsincreditunion.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Westconsin
Credit Union, is in the business of providing financial and real estate
services. Complainant has used its
WESTCONSIN mark continuously since at least
Respondent, TaeYoung.Jung, registered the <westconsincreditunion.com> domain name on March 30, 2007, which resolves to a website displaying third-party hyperlinks, 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.
The Panel finds that Complainant has established sufficient
rights in its WESTCONSIN CREDIT UNION mark through its trademark registration
with the state of
Complainant’s registration date of its WESTCONSIN mark with
the USPTO does not predate Respondent’s registration date of the <westconsincreditunion.com> domain
name. However, in Thompson v. Zimmer,
FA 190625 (Nat. Arb. Forum Oct. 27, 2003), the panel found “[a]s Complainant’s
trademark application was subsequently approved by the U.S. Patent and
Trademark Office, the relevant date for showing ‘rights’ in the mark for the
purposes of Policy ¶ 4(a)(i) dates back to Complainant’s filing date.” Therefore, because Complainant’s filing date
predates Respondent’s registration date, the Panel finds Complainant has
established sufficient rights in its WESTCONSIN mark through its registration
with the USPTO under Policy ¶ 4(a)(i). See
also Planetary Soc’y v. Rosillo,
D2001-1228 (WIPO
Respondent’s <westconsincreditunion.com>
domain name incorporates Complainant’s entire WESTCONSIN CREDIT UNION mark,
omitting the spaces between the terms and adding the generic top-level domain
“.com,” both of which are not relevant when determining if the disputed domain
name is identical to Complainant’s mark.
In
Additionally, Respondent’s <westconsincreditunion.com> domain name incorporates Complainant’s entire WESTCONSIN mark with the addition of the generic phrase “credit union,” which has an obvious relationship to the name of Complainant’s business and Complainant’s business of offering financial services. Again, the addition of a generic top-level domain is irrelevant for the purposes of evaluating if the disputed domain name is confusingly similar to Complainant’s mark. Pursuant to Policy ¶ 4(a)(i), the Panel finds that Respondent’s <westconsincreditunion.com> domain name is confusingly similar to Complainant’s WESTCONSIN mark. See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business); see also 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 Johnson & Johnson v. Rx USA, FA 157288 (Nat. Arb. Forum June 23, 2003) (“Given the fanciful nature of Complainant's mark and the fact that it is the dominant feature of the domain name, the disputed domain name is confusingly similar to Complainant's mark.”); 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.
Initially, Complainant must establish a prima facie case that Respondent has no rights or legitimate
interests in the disputed domain name, effectively shifting the burden of proof
to Respondent. The panel in G.D.
Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum
Respondent’s disputed domain name resolves to a website
displaying third-party links for services in direct competition with
Complainant. The Panel infers that
Respondent is receiving click-through fees for the displayed hyperlinks, and
finds that such commercial benefit does 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). Therefore, the Panel finds that Respondent
lacks rights and legitimate interests in the disputed domain name under Policy
¶ 4(a)(ii). 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 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).
Additionally, based on the WHOIS registration information
for Respondent of “Tae Young.Jae” and the uncontested evidence in the record,
the Panel finds that Complainant is not commonly known by the <westconsincreditunion.com> domain
name. In G.D. Searle & Co. v.
Sean, FA 129128 (Nat. Arb. Forum
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds that Respondent’s <westconsincreditunion.com> domain name is likely to
disrupt Complainant’s business by diverting Internet users to Complainant’s
competitors. Internet users searching
for Complainant will likely be diverted due to Respondent displaying competing
third-party hyperlinks on the <westconsincreditunion.com>
domain name. In Puckett, Individually v. Miller,
D2000-0297 (WIPO
Additionally, the Panel finds that Respondent is commercially benefiting from the competing third-party hyperlinks displayed on the resolving website of the <westconsincreditunion.com> domain name. The Panel finds that Respondent is attracting Internet users searching for Complainant by incorporating Complainant’s WESTCONSIN CREDIT UNION mark in the disputed domain name, thus creating a likelihood of confusion as to Complainant’s affiliation and sponsorship of the resolving website. In Amazon.com, Inc. v. Shafir, FA 196119 (Nat. Arb. Forum Nov. 10, 2003), the panel found that “[a]s Respondent is using the domain name at issue in direct competition with Complainant, and giving the impression of being affiliated with or sponsored by Complainant, this circumstance qualifies as bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iv).” Furthermore, in Computerized Security System, Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003), the panel found that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrated the respondent’s bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iv). Likewise, the Panel finds that Respondent’s commercial benefit from displaying the competing hyperlinks constitutes evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See also 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 CMG Worldwide, Inc. v. Lombardi, FA 95966 (Nat. Arb. Forum Jan. 12, 2001) (finding that the respondent’s use of the complainant’s VINCE LOMBARDI mark to divert Internet users to its commercial website located at the <vincelombardi.com> domain name constituted bad faith use and registration of the disputed domain name).
The Panel finds that Policy ¶ 4(a)(iii) has been met.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <westconsincreditunion.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: June 26, 2008
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