GECU v. Domain Admin / Whois Foundation
Claim Number: FA1502001607389
Complainant is GECU (“Complainant”), represented by Dwayne K. Goetzel, Texas, USA. Respondent is Domain Admin / Whois Foundation (“Respondent”), represented by William A. Delgado of WILLENKEN WILSON LOH & DELGADO LLP, California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gecu.com>, registered with NameKing.com, Inc.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 27, 2015; the Forum received payment on February 27, 2015.
On March 2, 2015, NameKing.com, Inc. confirmed by e-mail to the Forum that the <gecu.com> domain name is registered with NameKing.com, Inc. and that Respondent is the current registrant of the name. NameKing.com, Inc. has verified that Respondent is bound by the NameKing.com, Inc. 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 March 2, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 23, 2015 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@gecu.com. Also on March 2, 2015, 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.
A timely Response was received and determined to be complete on March 23, 2015.
A timely Additional Submission was received on March 26, 2015 from Complainant in accordance with the Forum's Supplemental Rule #7.
On April 3, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
In its initial and Additional Submission, Complainant asserts, inter alia, that:
Complainant has used the mark GECU since 1998 to market its credit union services, including deposit and investment accounts, loans, credit cards, debit cards, automated teller machines and online banking services.
From the time of its first use in commerce, Complainant has spent a great deal of effort and money promoting and advertising the GECU mark, by which it has acquired common law rights in the mark running from that date.
Complainant has also registered the GECU mark with the United States Patent and Trademark Office (“USPTO”) (Registry No. 4,387,399, first use in commerce January 1, 1998, filed December 18, 2012, registered August 20, 2013).
Respondent’s <gecu.com> domain name was registered on June 29, 2001.
The domain name is confusingly similar to Complainant’s GECU mark.
Respondent has not been commonly known by the domain name.
Respondent has no affiliation, sponsorship or other relationship with Complainant.
Respondent has not been authorized by Complainant to use its GECU mark.
The disputed domain name resolves to a webpage containing links to the websites of Complainant’s commercial competitors, from the operation of which Respondent derives pay-per-click revenues.
Respondent has no rights to or legitimate interests in the domain name.
The web page resolving from the domain name contains an offer to sell the domain name to the general public.
Respondent’s use of the domain name disrupts Complainant’s business.
The domain name and resolving web site are likely to confuse Internet users.
Respondent knew of Complainant and its rights in the GECU mark when it registered the domain name.
Respondent has registered and uses the disputed domain name in bad faith.
B. Respondent
Respondent does not contest the contention of Complainant that the <gecu.com> domain name is confusingly similar to Complainant’s GESU mark, in which Complainant has rights recognized by the Policy.
Respondent has rights to and legitimate interests in the disputed <gecu.com> domain name.
“Gecu” is a generic term to which Complainant does not own exclusive rights.
“Gecu” can stand for “geriatric extended care unit” or “gas engine control unit.”
Respondent is not a commercial competitor of Complainant.
Respondent did not know of Complainant or its GECU mark when the contested domain name was registered.
Respondent has not attempted to sell the domain name to Complainant or any of its business competitors, but Respondent has a legitimate interest in selling the domain name to the general public.
Respondent receives pay-per-click fees from its use of the domain name, but that does not mean that Respondent has no rights to or legitimate interests in it.
Respondent did not register the domain name with the intent of selling it to Complainant or to one of Complainant’s competitors.
The generic nature of the term GECU negates a finding of bad faith.
Respondent has not engaged in bad faith registration or use of the domain name.
Complainant has waited too long to object to Respondent’s registration and use of the domain name.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has rights in the GECU mark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003):
Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the … mark.
Complainant also has common law rights in the GECU mark, dating from January of 1998, by virtue of its long and continuous use of the mark in commerce and its extensive advertising and promotion of the mark, all of which have created secondary meaning in it sufficient to create such rights. See, for example, Gourmet Depot v. DI S.A., FA 1378760 (Nat. Arb. Forum June 21, 2011) (“Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”).
Respondent does not contest this.
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude that the <gecu.com> domain name is substantively identical, and therefore confusingly similar, to Complainant’s GECU mark. The domain name contains the entire mark, merely adding the generic Top Level Domain (“gTLD”) “.com.” This alteration of the mark, made in forming the domain name, does not save it from the realm of identity or confusing similarity under the standards of the Policy. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding the domain name <pomellato.com> identical to a UDRP complainant’s POMELLATO mark because, inasmuch as every domain name requires a gTLD, the addition of the generic top-level domain (gTLD) “.com” to the mark in creating a domain name is not relevant to a Policy ¶ 4(a)(i) analysis).
Again, Respondent does not contest this.
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (finding that a complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent 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 has made out a sufficient prima facie showing under this head of the Policy. We will therefore examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant asserts that Respondent has not been commonly known by the disputed <gecu.com> domain name, that Respondent has no affiliation, sponsorship or other relationship with Complainant, and that Respondent has not been authorized by Complainant to use its GECU mark.
Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Domain Admin,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it as provided in Policy ¶ 4(c)(ii). See, for example, M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding, based on the relevant WHOIS information and other evidence in the record, that a respondent was not commonly known by the domain name <cigaraficionada.com>, and so failed to demonstrate that it had rights to or legitimate interests in that domain name under Policy ¶ 4(c)(ii)).
We next observe that Complainant asserts that the <gecu.com> domain name resolves to a webpage displaying hyperlinks to the web sites of Complainant’s commercial competitors, and that Respondent profits in the form of pay-per-click fees from the operation of those links. Respondent concedes all of this. Under Policy ¶¶ 4(c)(i) and (iii), this employment of the domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use that would give rise to rights to or interests in the domain name favoring Respondent. See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007):
The disputed domain name, …, currently resolves to a website displaying Complainant’s marks and … links to Complainant’s competitors. The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
Respondent seeks to escape the natural consequence of these conclusions by arguing that the GECU mark is generic in character, and, therefore, open to adoption in its domain name. In support of this contention, Respondent asserts that “Gecu” can stand for “geriatric extended care unit” or “gas engine control unit.” Particularly in light of Respondent’s employment of the domain name exclusively to conduct commercial operations in competition with the credit union business of Complainant, we find this argument entirely unpersuasive. For reference, see: ER Marks, Inc. and QVC, Inc. v. Stefan Hansmann, FA1381755 (Nat. Arb. Forum May 6, 2011):
Respondent actually agrees on the fact that the <qvc.co> domain name is “similar” to the QVC mark, but considers that this abbreviation may stand for different meanings including the alleged name of his website “Quality Video Collection”. …. It is true that an abbreviation may stand for different meanings as it is also true that a person may distort an abbreviation to adapt it to a specific meaning. The Panelist believes that Respondent distorted the QVC abbreviation for the purposes of his Response in an attempt to make it stand for “Quality Video Collection”.
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s use of the <gecu.com> domain name, as alleged in the Complaint, disrupts Complainant’s business. Under Policy ¶ 4(b)(iii), this stands as proof of Respondent’s bad faith in the registration and use of the domain name. See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the website resolving from a contested domain name to divert Internet users to the websites of a UDRP complainant’s commercial competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)). See also H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008):
The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).
We are also convinced by the evidence that Respondent uses the <gecu.com> domain name, which is substantively identical to Complainant’s GECU mark, to profit financially from confusion caused among Internet users as to the possibility of Complainant’s association with the domain name and its resolving web site. Under Policy ¶ 4(b)(iv), this too is proof of Respondent’s bad faith in the registration and use of the domain name. 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 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).
For these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
In light of our conclusion with regard to Respondent’s bad faith registration and use of the contested <gecu.com> domain name, it is unnecessary for us to examine Respondent’s argument on the question of laches, which is grounded in considerations of equity.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <gecu.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: April 6, 2015
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