Navy Federal Credit Union v. zakaria bani
Claim Number: FA1802001772965
Complainant is Navy Federal Credit Union (“Complainant”), represented by John Gary Maynard, Virginia, USA. Respondent is zakaria bani (“Respondent”), Germany.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <https-activate-federal-navy-sms.com>, registered with PSI-USA, Inc. dba Domain Robot.
The undersigned certifies that she 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 here as Panelist.
Complainant submitted a Complaint to the Forum electronically February 22, 2018; the Forum received payment February 22, 2018.
On February 23, 2018, PSI-USA, Inc. dba Domain Robot confirmed by e-mail to the Forum that the <https-activate-federal-navy-sms.com> domain name is registered with PSI-USA, Inc. dba Domain Robot and that Respondent is the current registrant of the name. PSI-USA, Inc. dba Domain Robot verified that Respondent is bound by the PSI-USA, Inc. dba Domain Robot registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 23, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 15, 2018, 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@https-activate-federal-navy-sms.com. Also on February 23, 2018, 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 Forum transmitted to the parties a Notification of Respondent Default.
On March 21, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson to sit here as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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" 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 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’s Allegations in this Proceeding:
Complainant, Navy Federal Credit Union, is a major financial institution that has been offering a broad spectrum of financial products and services to the military and their families under the NAVY FEDERAL mark since 1933. Complainant has rights in the NAVY FEDERAL mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,994,078, registered Sep. 13, 2005). See Compl. Ex. A. p. 3. Respondent’s <https-activate-federal-navy-sms.com> domain name is confusingly similar to Complainant’s NAVY FEDERAL mark because it contains a simple misspelling or typographical error that an Internet user might make when typing in Complainant’s mark, and adds hyphens, the generic terms “activate” and “sms,” and the “.com” generic top-level domain name (“gTLD”).
Respondent has no rights or legitimate interests in the <https-activate-federal-navy-sms.com> domain name. Respondent is not commonly known by the disputed domain name and Complainant has not authorized or licensed Respondent to use the NAVY FEDERAL mark in any manner. Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the resolving domain is inactive, containing no substantive content, only displaying the message: “This Site Can’t be Reached.” See Compl. Ex. C.
Respondent registered and is using the <https-activate-federal-navy-sms.com> domain name in bad faith. Respondent uses the domain name to resolve to a webpage that does not contain any content. See Compl. Ex. C.
B. Respondent’s Contentions in this Proceeding:
Respondent did not submit a Response in this proceeding. The Panel notes that Respondent registered the disputed domain name August 8, 2017, some twelve years after Complainant’s Registration of its Mark. See Compl. Ex. B.
Complainant established its rights and legitimate interests in the disputed domain name and the mark contained in its entirety within it.
Respondent has no such rights or legitimate interests in the mark or the disputed domain name.
Respondent registered a disputed domain name that is confusingly similar to Complainant’s protected mark, which is contained in its entirety within it.
Respondent registered and passively holds the disputed domain name containing Complainant’s protected mark in its entirety 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 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.
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(f), 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 (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.”).
Identical or Confusingly Similar:
Complainant has rights in the NAVY FEDERAL mark based upon registration of the mark with the USPTO (e.g. Reg. No. 2,994,078, registered Sep. 13, 2005). See. Compl. Ex. A. p. 3. Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum Jul. 28, 2017) (finding that registration with the USPTO was sufficient to establish the Complainant’s rights in the HOME DEPOT mark). Therefore, the Panel holds that Complainant’s registration of the NAVY FEDERAL mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Next, Respondent’s <https-activate-federal-navy-sms.com> domain name is confusingly similar to Complainant’s NAVY FEDERAL mark because it contains a simple misspelling or typographical error that an Internet user might make when typing in Complainant’s mark and adds hyphens, the generic terms “activate” and “sms,” and the “.com” gTLD. These changes all are insufficient to distinguish the disputed domain name from the mark. See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).); see also T. Rowe Price Group, Inc. v. Venkateshwara Distributor Private Limited. / HEMANG INFRASRUCTURE PRIVATE LIMITED, FA 1705342 (Forum Jan. 16, 2017) (“Respondent’s <tpricerowe.com> differs from the mark by inverting the words “Rowe” and “price” in the mark. Inverting the words in a mark is not sufficient to overcome a finding of confusing similarity.”). The Panel therefore determines that the <https-activate-federal-navy-sms.com> domain name is confusingly similar to the NAVY FEDERAL mark pursuant to a Policy ¶ 4(a)(i) analysis.
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that Respondent registered a disputed domain name containing in its entirety Complainant’s protected mark and that the disputed domain name is confusingly similar to Complainant’s protected mark. Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights or Legitimate Interests:
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), then the burden of proof shifts to Respondent to show it does have such rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent has no rights or legitimate interests in the <https-activate-federal-navy-sms.com> domain name, as Respondent is not commonly known by the disputed domain name. Where no response is filed, WHOIS information can be used to support a finding that the respondent is not commonly known by a disputed domain name under Policy ¶ 4(c)(ii). See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum Jul. 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the pertinent WHOIS information identifies the registrant domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”). The WHOIS information of record for the <https-activate-federal-navy-sms.com> domain name lists the registrant as “zakaria bani,” and no information in the record indicates that Respondent owns any trademark or service mark rights in the “NAVY FEDERAL” name. See Compl. Ex. B. The Panel may therefore find that Respondent is not commonly known by the <https-activate-federal-navy-sms.com> domain name under Policy ¶ 4(c)(ii).
Complainant further argues Respondent’s lack of rights or legitimate interests in the <https-activate-federal-navy-sms.com> domain name is demonstrated by its failure to use the name to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Complainant contends instead that the domain is inactive, containing no content other than a statement noting: “This Site Can’t be Reached.” See Compl. Ex. C. Respondent’s non-use of the disputed domain name demonstrates its lack of rights or legitimate interests in the domain name per Policy ¶¶ 4(c)(i) or (iii). See Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names (sic) for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). This Panel finds that Respondent fails to make a use of the domain name, and thus does not have rights or legitimate interests in the <https-activate-federal-navy-sms.com> domain name.
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name containing in its entirety Complainant’s protect mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
The examples of bad faith registration and use in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which bad faith may be found. See, e.g., Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000). The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. See, e.g., Match.com, LP v. BillZag and NWLAWS.ORG, D2004-0230 (WIPO June 2, 2004). While Complainant has not made any arguments that would fit within the bounds of Policy ¶ 4(b) elements, the Panel may still consider Respondent’s actions under a nonexclusive inquiry of Policy ¶ 4(a)(iii).
Complainant argues that Respondent’s bad faith is indicated by its failure to use the <https-activate-federal-navy-sms.com> domain name. Failing to make any use of a confusingly similar domain name can be evidence of bad faith under Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).” Complainant provides a screenshot of the resolving webpage, which displays an error message. See Compl. Ex. C. The Panel agrees and finds Respondent to be inactively holding <https-activate-federal-navy-sms.com>, the disputed domain name in bad faith under a Policy ¶ 4(a)(iii) evaluation.
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and passively held a disputed domain name containing in its entirety Complainant’s protected mark and did so in bad faith; Complainant satisfied the elements of 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 <https-activate-federal-navy-sms.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: April 2, 2018.
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