Arrowhead Central Credit Union d/b/a Arrowhead Credit Union v. Ryan G Foo / PPA Media Services
Claim Number: FA1411001591696
Complainant is Arrowhead Central Credit Union d/b/a Arrowhead Credit Union (“Complainant”), represented by Bruce A. Pearson of Styskal, Wiese & Melchione, LLP, California, USA. Respondent is Ryan G Foo / PPA Media Services (“Respondent”), Chile.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <arrowheadcu.com>, registered with Internet.bs Corp.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 21, 2014; the National Arbitration Forum received payment on November 21, 2014.
On December 5, 2014, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <arrowheadcu.com> domain name is registered with Internet.bs Corp. and that Respondent is the current registrant of the name. Internet.bs Corp. has verified that Respondent is bound by the Internet.bs Corp. 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 December 9, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 29, 2014 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@arrowheadcu.com. Also on December 9, 2014, 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 December 31, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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
Complainant made the following contentions.
1. Complainant claims that ARROWHEAD is used to provide financial and credit union services. The ARROWHEAD mark is registered with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 2,120,456, registered Dec. 9, 1997).
2.The <arrowheadcu.com> domain name is confusingly similar to the mark in that it adds “cu,” a phrase abbreviating “credit union,” which in turn is descriptive of the type of services provided under ARROWHEAD, with the additional “.com” gTLD presenting no relevant difference.
3. Respondent has no rights or legitimate interests in the <arrowheadcu.com> domain name. Respondent is not commonly known by this domain name.
4. Respondent is using the domain name to direct web traffic to advertise-laden web pages.
5. Respondent registered and is using the <arrowheadcu.com> domain name in bad faith. Respondent has a long history of cybersquatting. Respondent seeks to profit off of the domain name for commercial gain through the domain name’s website. Respondent had actual knowledge of Complainant’s rights prior to registration.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in the business of the provision of financial and credit services.
2. Complainant has registered the ARROWHEAD mark with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 2,120,456, registered Dec. 9, 1997).
3. Respondent registered the <arrowheadcu.com> domain name on August 30, 2000 and is using it to direct web traffic to advertisement-laden web pages.
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.”).
The first issue that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant claims that ARROWHEAD is used to provide financial and credit union services. The ARROWHEAD mark is registered with the USPTO (e.g., Reg. No. 2,120,456, registered Dec. 9, 1997). The Panel finds this USPTO registration to stand as satisfactory evidence of Complainant’s Policy ¶ 4(a)(i) rights in the ARROWHEAD mark. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
The second issue that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s ARROWHEAD mark .Complainant submits that the <arrowheadcu.com> domain name is confusingly similar to the mark in that it adds “cu,” a phrase descriptive of the credit union services provided under ARROWHEAD, with the additional “.com” gTLD presenting no relevant difference for the purpose of making the comparison. The Panel agrees that “cu” is short form for “credit union,” and accurately describes the credit union services associated with the ARROWHEAD mark— thus amplifying the Policy ¶ 4(a)(i) confusing similarity of the domain name. See Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark). The Panel finds that as gTLDs are not considered as meaningful additions in the UDRP decision making process, the domain name stands confusingly similar to the ARROWHEAD mark under Policy ¶ 4(a)(i). See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s ARROWHEAD mark and to use it in its domain name and has simply added the letters “cu ” which are generally accepted as standing for “ credit union ” and which do not detract from the confusing similarity that is clearly present but suggests that the domain name is referring to the credit union activities of Complainant;
(b) Respondent registered the disputed domain name on August 30, 2000 and is using it to direct web traffic to advertisement-laden web pages;
(c) Respondent registered and used the disputed domain name without the permission or authority of Complainant;
(d) Complainant submits that Respondent is not commonly known by the domain name. The Panel notes that the individual listed in the WHOIS information is “Ryan G Foo.” This Panel agrees that Ryan G Foo is clearly not similar to the <arrowheadcu.com> domain name, and no other evidence herein supports the allegation that Respondent is “commonly known as” this domain name under Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name);
(e) Complainant submits that Respondent is using the domain name to direct web traffic to advertise-laden web pages. The Panel agrees that Exhibit C to the Complaint illustrates a website dedicated to promoting hyperlink advertisement content, some of which competes with Complainant’s own offerings in the financial sector. This Panel agrees that absent some other rationale, Respondent’s use of the domain name towards such ends indicates that there has been no bona fide offering of goods under Policy ¶ 4(c)(i), or legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant claims that Respondent has a long history of cybersquatting. The Panel agrees that the evidence enables the Panel to infer that “Ryan G Foo” can be determined to be an offender of Policy ¶ 4(b)(ii) bad faith. See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants).
Secondly, Complainant argues that Respondent seeks to profit from the domain name in the form of commercial gain through the likelihood of confusion associated with the domain name’s website. The Panel agrees that Exhibit C to the Complaint illustrates that the domain name is being used to host commercial hyperlink content. Thus, the Panel determines that Respondent has registered and is using the domain name to profit from a likelihood that Internet users will be confused within the meaning of Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
Thirdly, Complainant submits that Respondent had actual knowledge of Complainant’s rights prior to registration. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration").
Finally, having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration and retention of the disputed domain name using the ARROWHEAD mark, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <arrowheadcu.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC,
Panelist
Dated: January 2, 2015
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