Redstone Federal Credit Union v. Isaac Goldstein
Claim Number: FA1208001456282
Complainant is Redstone Federal Credit Union (“Complainant”), represented by Frank M. Caprio of BRADLEY ARANT BOULT CUMMINGS LLP, Alabama, USA. Respondent is Isaac Goldstein (“Respondent”), Hong Kong.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <redfcu.com>, registered with Network Solutions, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 1, 2012; the National Arbitration Forum received payment on August 1, 2012.
On August 1, 2012, Network Solutions, LLC confirmed by e-mail to the National Arbitration Forum that the <redfcu.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, LLC 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 August 1, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 21, 2012 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@redfcu.com. Also on August 1, 2012, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 24, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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" 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 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 <redfcu.com> domain name is confusingly similar to Complainant’s RFCU mark.
2. Respondent does not have any rights or legitimate interests in the <redfcu.com> domain name.
3. Respondent registered or used the <redfcu.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
1. Complainant provides diversified financial services under the RFCU mark.
2. Complainant owns trademark registrations with the United States Patent and Trademark and Office (“USPTO”) for the RFCU & Design mark (e.g., Reg. No. 3,297,997 registered September 25, 2007).
3. The disputed domain name is confusingly similar to Complainant’s RFCU mark.
4. Respondent is not commonly known by the <redfcu.com> domain name.
5. Complainant registered the <redfcu.com> domain name on June 10, 1996.
6. Complainant intended to hold the <redfcu.com> domain name indefinitely, but inadvertently allowed its registration to expire.
7. Respondent acquired the <redfcu.com> domain name on or about July 18, 2012.
8. On July 18, 2012, a person named “Dan Baron” offered to sell the disputed domain name to Complainant for $6,500.
9. Respondent is either affiliated with “Dan Baron,” or purchased the <redfcu.com> domain name from “Dan Baron” or another source.
10. Respondent uses the disputed domain name to resolve to a website displaying a photograph of the United States Supreme Court building, and a commercial search engine and a list of third-party hyperlinks, some of which compete with Complainant by offering various banking and credit services.
11. Respondent commercially benefits from these links through the collection of click-through fees.
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(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.”).
Complainant presents its trademark registrations with the USPTO to support its claim of rights in the RFCU & Design mark (e.g., Reg. No. 3,297,997 registered September 25, 2007) under Policy ¶ 4(a)(i). The Panel notes that registration of a mark with the USPTO has previously been held to confer such rights in the mark. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO). The Panel finds that Complainant’s trademark registration with the USPTO is sufficient to establish rights in the RFCU mark under Policy ¶ 4(a)(i), despite the fact that Complainant has not presented evidence of registration in the country in which Respondent operates. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Complainant contends that the <redfcu.com> domain name is confusingly similar to its RFCU mark. Complainant asserts that the disputed domain name is a combination of the distinctive elements of the names and mark under which Complainant operates. Complainant claims that the disputed domain name substitutes the term “red” for the letter “r” in Complainant’s RFCU mark. The Panel notes that the term “red” relates to Complainant’s mark, as the letter “r” in Complainant’s mark is short for “Redstone.” The Panel notes that the disputed domain name additionally affixes the generic top-level domain (“gTLD”) “.com.” The Panel finds that Respondent’s substitution of the abbreviated term “red” for the letter “r” is not distinctive for the purposes of Policy ¶ 4(a)(i). See Modern Props, Inc. v. Wallis, FA 152458 (Nat. Arb. Forum June 2, 2003) (“Notwithstanding the analysis by Respondent, ‘modprops’ is a contraction or shorthand for ‘Modern Props.’ ‘Mod’ cononotes [sic] ‘modern’ regardless of any other dictionary meanings, so the names are substantially similar in meaning.”). Moreover, the Panel finds that the affixation of the “.com” gTLD cannot distinguish a contested domain name under Policy ¶ 4(a)(i). See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Based on this analysis, the Panel concludes that Respondent’s <redfcu.com> domain name is confusingly similar to Complainant’s RCFU mark within the meaning of Policy ¶ 4(a)(i).
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 Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant alleges that Respondent is not commonly known by the <redfcu.com> domain name within the meaning of Policy ¶ 4(c)(ii). Complainant claims to have no pre-existing relationship with Respondent, and to have never authorized Respondent’s use of its marks or any marks confusingly similar thereto. The Panel notes that the WHOIS information on record identifies the domain name registrant as “Isaac Goldstein.” The Panel finds little or no similarity between “Isaac Goldstein” and <redfcu.com>, which the Panel construes evidence that Respondent lacks rights or legitimate interests in the disputed domain name. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply). Furthermore, the Panel notes that Respondent’s failure to produce a Response results in an absence of any evidence suggesting that Respondent is commonly known by the domain name at issue for the purposes of Policy ¶ 4(c)(ii). Upon taking these findings into account, the Panel concludes that Respondent is not commonly known by the <redfcu.com> domain name within the meaning of Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant alleges that Respondent uses the <redfcu.com> domain name to resolve to a website displaying a photograph of the United States Supreme Court building, and also containing a commercial search engine and a list of third-party hyperlinks, some of which compete with Complainant by offering various banking and credit services. The Panel notes that previous panels have held that a respondent’s resolution of a contested domain name to a website featuring competing third-party hyperlinks does not qualify as 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 Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not 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)). Accordingly, the Panel determines that Respondent’s use of the <redfcu.com> domain name does not comport with any bona fide offering of goods or services under Policy ¶ 4(c)(i) or any legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Complainant contends that it registered the <redfcu.com> domain name on June 10, 1996, intending to hold it indefinitely, but inadvertently allowed its registration to expire. Complainant asserts that Respondent acquired the <redfcu.com> domain name days later, on or about July 18, 2012. The Panel finds that Complainant’s prior registration of the same domain name provides evidence that Respondent is without rights or legitimate interests in the domain name pursuant to Policy ¶ 4(a)(ii). See Edmunds.com, Inc. v. Ult. Search Inc., D2001-1319 (WIPO Feb. 1, 2002) (finding that the respondent could not rely on equitable doctrines under the Policy to defend its registration of the disputed domain name after the registration was inadvertently permitted to lapse by the complainant, noting that “Respondent was aware of the Complainant’s well-known business and its mark and intended to exploit the mark”).
Complainant alleges that on July 18, 2012, a person named “Dan Baron” offered to sell the disputed domain name to Complainant for $6,500. Complainant further alleges that Respondent is either affiliated with “Dan Baron,” or purchased the <redfcu.com> domain name from “Dan Baron” or another source. The Panel finds sufficient evidence to impute Dan Baron’s offer to sell the disputed domain name to Complainant to Respondent. The Panel makes such a finding, and further finds that Respondent’s offer to sell the disputed domain name for (presumably) more than Respondent’s out-of-pocket costs in acquiring the domain name evidences a want of rights or legitimate interests under Policy ¶ 4(a)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name).
Complainant alleges that on July 18, 2012, a person named “Dan Baron” offered to sell the disputed domain name to Complainant for $6,500. Complainant further alleges that Respondent is either affiliated with “Dan Baron,” or purchased the <redfcu.com> domain name from “Dan Baron” or another source. The Panel finds that Dan Baron is affiliated with Respondent or that Respondent otherwise intends to offer to sell the domain name at issue, and the Panel finds this to evidence bad faith registration and use under Policy ¶ 4(b)(i). See Dynojet Research, Inc. v. Norman, AF-0316 (eResolution Sept. 26, 2000) (finding that the respondent demonstrated bad faith when he requested monetary compensation beyond out-of-pocket costs in exchange for the registered domain name).
Complainant argues that Respondent’s registration and use of the <redfcu.com> domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iii), as Internet users interested in financial services from Complainant will be exposed to simialr goods and services from Complainant’s competitors as a result of visiting the disputed domain name. The Panel notes that previous panels have found bad faith disruption of a complainant’s business pursuant to Policy ¶ 4(b)(iii) when a disputed domain name resolves to a website featuring links to products or services that compete with the complainant’s business. See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). The Panel concludes that Respondent’s registration and use of the <redfcu.com> domain name constitutes bad faith disruption of Complainant’s business pursuant to Policy ¶ 4(b)(iii).
Complainant contends that Respondent’s provision of links to competing services on its website housed at the disputed domain name exhibits attraction for commercial gain in bad faith under Policy ¶ 4(b)(iv). Complainant posits that Respondent profits from the operation of its website through the receipt of click-through fees. Complainant argues that Respondent’s operation at a confusingly similar domain name may create confustion as to Complainant’s endorsement of or affiliation with Respondent’s website, and that Respondent is attempting to profit from that confusion. The Panel agrees, holding that Respondent’s registration and use of the <redfcu.com> domain name indeed constitutes attraction for commercial gain in bad faith under Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
Complainant further contends that Respondent’s registration and use of the <redfcu.com> domain name after Complainant owned the domain for sixteen years and inadvertently allowed the registration to lapse represents bad faith under Policy ¶ 4(a)(iii). The Panel finds that Respondent’s registration of the identical domain name owend by Complainant after Complainant inadvertently allowed its registration to lapse constitutes registration and use in bad faith pursuant to Policy ¶ 4(a)(iii). See RH-Interactive Jobfinance v. Mooburi Servs., FA 137041 (Nat. Arb. Forum Jan. 16, 2003) (finding that the respondent’s registration of the <jobfinance.com> domain name “immediately after Complainant failed to timely renew the domain name registration” was evidence of bad faith).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <redfcu.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: September 6, 2012
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