AllSouth Federal Credit Union v. Web Advertising Corp.
Claim Number: FA0806001212792
Complainant is AllSouth
Federal Credit Union (“Complainant”), represented by John C. McElwaine of Nelson Mullins Riley & Scarborough, LLP,
South Carolina, USA. Respondent is Web Advertising Corp. (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <allsouthcreditunion.org>, registered with BelgiumDomains.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically June 26, 2008; the National Arbitration Forum received a hard copy of the Complaint June 27, 2008.
On June 27, 2008, BelgiumDomains confirmed by e-mail to the National Arbitration Forum that the <allsouthcreditunion.org> domain name is registered with BelgiumDomains and that Respondent is the current registrant of the name. BelgiumDomains verified that Respondent is bound by the BelgiumDomains 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 June 30, 2008, a Notification of
Complaint and Commencement of Administrative Proceeding (the "Commencement
Notification"), setting a deadline of July 21, 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@allsouthcreditunion.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 25. 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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. The domain name that Respondent registered, <allsouthcreditunion.org>, is identical to or confusingly similar to Complainant’s ALLSOUTH FEDERAL CREDIT UNION mark.
2. Respondent has no rights to or legitimate interests in the <allsouthcreditunion.org> domain name.
3. Respondent registered and used the <allsouthcreditunion.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, AllSouth Federal Credit Union, is a federally chartered credit union that has operated under the “Fort Jackson Federal Credit Union” name since 1960. In March 2004, Complainant adopted its current name. Complainant has accumulated $400 million in assets, and serves 90,000 customers worldwide at 20 locations. Complainant has registered its ALLSOUTH FEDERAL CREDIT UNION mark with (Reg. No. 2,977,711 issued July 26, 2005, filed September 12, 2003). Finally, Complainant owns and operates the following domain names in conjunction with its operations, including the <allsouthbanking.com>, <allsouthfederalcreditunion.com>, <allsouthfederalcu.com> domain names.
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."
Given 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 will draw such inferences as the Panel 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 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 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 registered its ALLSOUTH FEDERAL CREDIT UNION mark with the USPTO. While Respondent’s disputed domain name was registered prior to Complainant’s mark, UDRP panels consistently hold that a trademark holder’s rights in a registered mark date back to the mark’s filing date, as opposed to the actual registration date. Complainant filed for trademark status in 2003, which predates the disputed domain name’s registration in 2004. As such, Complainant has rights in the mark sufficient to achieve UDRP standing under Policy ¶ 4(a)(i). See VICORP Rests., Inc. v. Triantafillos, FA 485933 (Nat. Arb. Forum July 14, 2005) (“Complainant has established rights in the BAKERS SQUARE mark by registering it with the United States Patent and Trademark Office (“USPTO”).”); see also Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (“Complainant asserts rights in the KISSES trademark through registration of the mark with the…USPTO…As such rights date back to the filing date of the trademark application and predate Respondent’s registration…Complainant has established rights in the KISSES mark for purposes of satisfying Policy ¶ 4(a)(i).”).
Respondent’s <allsouthcreditunion.org> domain
name merely drops “federal” from Complainant’s ALLSOUTH FEDERAL CREDIT UNION
mark and adds the generic top-level domain (“gTLD”) “.org.” The addition of a gTLD is irrelevant under
Policy ¶ 4(a)(i).
Likewise, the deletion of “federal” does not distinguish the disputed
domain name, because (i) Complainant’s distinctive “AllSouth” component remains
dominant, and (ii) the disputed domain name retains the phrase “credit
union.” Thus, the Panel finds that
Respondent’s <allsouthcreditunion.org> domain name is confusingly
similar to Complainant’s ALLSOUTH FEDERAL CREDIT UNION under Policy ¶ 4(a)(i). See Trip Network
Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the addition of a gTLD, whether it
be “.com,” “.net,” “.biz,” or “.org,” is irrelevant to a Policy ¶ 4(a)(i) analysis);
see also Down E. Enter. Inc. v. Countywide Commc’ns, FA 96613 (Nat. Arb. Forum Apr.
5, 2001) (finding the domain name <downeastmagazine.com> confusingly
similar to the complainant’s common law mark DOWN EAST, THE MAGAZINE OF MAINE).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
The Panel finds that Complainant met its burden of demonstrating a prima facie case supporting its allegation that Respondent lacks rights and legitimate interests in the disputed domain name. As such, the burden shifts to Respondent to prove such rights or legitimate interests. See Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (“Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.”); 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).”).
Respondent failed to respond to the Complaint. Thus, the only potential evidence by which the Panel can determine whether Respondent is or was commonly known by the disputed domain name remains the WHOIS registration information. The registrant of record is listed as “Web Advertising Corp.” No evidence suggests that Complainant ever licensed or gave permission to Respondent to use Complainant’s mark in any way. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there is no evidence in the record indicating that the respondent is commonly known by the disputed domain name); 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 names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
Moreover, the disputed domain name resolves to a website
that solely features third-party advertisements for Complainant’s direct
competitors. Respondent presumably
benefits through the receipt of referral fees.
The Panel finds that this use cannot 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
Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum
Sept. 14, 2006) (finding that the respondent’s use of the complainant’s
LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website
for commercial gain does not constitute either 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)); see also Disney
Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding
that the operation of a pay-per-click website at a confusingly similar domain
name was not 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)).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
The Panel finds that Respondent’s use of the disputed domain
name to host third-party advertisements that seek to compete with Complainant
was intended primarily to disrupt Complainant’s business. As such, the Panel finds that Respondent has
engaged in bad faith registration and use under Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain
Mgmt. Servs., FA 877982
(Nat. Arb. Forum Feb.
13, 2007) (concluding that the use of a confusingly similar domain name to
attract Internet users to a directory website containing commercial links to
the websites of a complainant’s competitors represents bad faith registration
and use under Policy ¶ 4(b)(iii)); see
also
Respondent presumably receives commercial benefit through
receipt of referral fees. Thus, the
Panel finds that Respondent’s use of the confusingly similar domain name has
created a likelihood of confusion for Respondent’s monetary benefit as to
Complainant’s source and endorsement of the disputed domain name and
corresponding website, which constitutes bad faith registration and use under
Policy ¶ 4(b)(iv).
See
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <allsouthcreditunion.org> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: August 8, 2008.
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