national arbitration forum

DECISION

Wescom Credit Union v. Ling Shun Shing

Claim Number: FA0502000417528

PARTIES

Complainant is Wescom Credit Union (“Complainant”), represented by Bruce A. Pearson, of Styskal, Wiese and Melchione, LLP, 550 North Brand Boulevard, Ste. 550, Glendale, CA 91203. Respondent is Ling Shun Shing (“Respondent”), 138 Yi Xue Yuan Road, Shanghai, 200032, P.R. China.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <wescomcreditunion.com>, registered with Nameking.com, Inc.

PANEL

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.

Louis E. Condon as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on February 8, 2005; the National Arbitration Forum received a hard copy of the Complaint on February 11, 2005.

On February 9, 2005, Nameking.com, Inc. confirmed by e-mail to the National Arbitration Forum that the domain name <wescomcreditunion.com> 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-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

On February 14, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 7, 2005 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@wescomcreditunion.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

On March 10, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon 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." 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.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A. Complainant makes the following assertions:

1. Respondent’s <wescomcreditunion.com> domain name is confusingly similar to Complainant’s WESCOM mark.

2. Respondent does not have any rights or legitimate interests in the <wescomcreditunion.com> domain name.

3. Respondent registered and used the <wescomcreditunion.com> domain name in bad faith.

B. Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant is among the largest credit unions in the United States, with more than 230,000 members, $2.8 billion in assets, and 28 branches throughout five counties in Southern California. Complainant has developed a strong reputation as a provider of financial and credit union services. Complainant holds U.S. trademark Reg. No. 2,008,513 for WESCOM (issued October 15, 1996), which is on the Principal Register of the United States Patent and Trademark Office. Complainant also operates a website at the <wescom.org> domain name, among others.

Respondent registered the <wescomcreditunion.com> domain name on September 9, 2002. The domain name resolves to a website that contains links to various third-party websites that directly compete with Complainant’s business. Respondent is not licensed or authorized to use Complainant’s mark.

DISCUSSION

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."

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.

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.

Identical and/or Confusingly Similar

Complainant has established that it has rights in the WESCOM mark through registration with the United States Patent and Trademark Office and through continuous use of the mark in commerce. See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive and stating that a respondent has the burden of refuting this assumption).

Respondent’s <wescomcreditunion.com> domain name is confusingly similar to Complainant’s WESCOM mark because the domain name fully incorporates the mark while merely adding the generic words “credit union,” which are also descriptive of Complainant’s business, and the “.com” generic top-level domain. The addition of generic and descriptive words and a generic top-level domain do not distinguish the disputed domain name from Complainant’s WESCOM mark. Thus, the Panel finds that the domain name is confusingly similar to the mark under Policy ¶ 4(a)(i). See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (“Neither the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY.”); see also Am. Online Inc. v. Neticq.com Ltd., D2000-1606 (WIPO Feb. 12, 2001) (finding that the addition of the generic word “net” to the complainant’s ICQ mark made the <neticq.com> domain name confusingly similar to the complainant’s mark); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Complainant is able to establish a prima facie case by showing that Respondent does not qualify for the three “safe harbors” provided under Policy ¶¶ 4(c)(i)-(iii). Such a showing shifts Complainant’s burden to Respondent, who must come forward with evidence rebutting Complainant’s allegations in order to prevail on this element. In this case, Complainant has made a prima facie showing that Respondent does not have any rights or legitimate interests in the disputed domain name. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative . . . . [I]t is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted [to the] Respondent.”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where a complainant has asserted that a respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”).

Because Respondent has failed to submit a response in this proceeding, the Panel may accept as true all reasonable allegations submitted by Complainant in the Complaint. Furthermore, since Complainant has made a prima facie showing that Respondent does not have any rights or legitimate interests in the disputed domain name, the burden is shifted to Respondent to demonstrate that it has rights or legitimate interests in the domain name. In this proceeding, Respondent has not submitted a response. Thus, Respondent has failed to present any circumstances under which it could substantiate rights or legitimate interests in the disputed domain name. See Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that the respondent had no rights or legitimate interests in the domain name because it never submitted a response or provided the panel with evidence to suggest otherwise); see also Bayerische Motoren Werke AG v. Bavarian AG, FA 110830 (Nat. Arb. Forum June 17, 2002) (finding that in the absence of a response the panel is free to make inferences from the very failure to respond and assign greater weight to certain circumstances than it might otherwise do).

Respondent is using the <wescomcreditunion.com> domain name to direct Internet users to a website that provides links to Complainant’s competitors. The Panel infers that Respondent commercially benefits from its diversion by receiving pay-per-click fees when Internet users follow the links on the website. Respondent’s use of a domain name that is confusingly similar to Complainant’s WESCOM mark dilutes Complainant’s mark by diverting Internet users to competing websites and is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See Ticketmaster Corp. v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9, 2001) (finding no rights or legitimate interests where the respondent generated commercial gain by intentionally and misleadingly diverting users away from the complainant’s site to a competing website); see also Winmark Corp. v. In The Zone, FA 128652 (Nat. Arb. Forum Dec. 6, 2002) (finding that the respondent had no rights or legitimate interests in a domain name that used the complainant’s mark to redirect Internet users to a competitor’s website).

No evidence before the Panel suggests Respondent is commonly known by the <wescomcreditunion.com> domain name under Policy ¶ 4(c)(ii). Respondent’s WHOIS information indicates that the registrant of the disputed domain name is known as “Ling Shun Shing” and is not known by the confusingly similar second-level domain that infringes on Complainant’s WESCOM mark. Moreover, Respondent is not authorized or licensed to use Complainant’s mark for any purpose. Thus, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). 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); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) “to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail”).

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent makes use of a confusingly similar variation of Complainant’s WESCOM mark to ensnare unsuspecting Internet users. Respondent then redirects the users to a website that provides links to various commercial websites. The Panel infers that Respondent receives pay-per-click fees when Internet users follow the links on its website. Respondent is profiting from the unauthorized use of Complainant’s registered mark in its domain name. Such infringement is what the Policy was intended to remedy and is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if a respondent profits from its diversionary use of a complainant’s mark when the domain name resolves to commercial websites and the respondent fails to contest the complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).

Respondent registered and used a domain name that is confusingly similar to Complainant’s mark for the purpose of directing Internet users to businesses that offer services that compete with Complainant. Respondent’s use of the <wescomcreditunion.com> domain name establishes that Respondent registered and used the domain name for the purpose of disrupting the business of a competitor pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business); see also EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the minor degree of variation from the complainant’s marks suggested that the respondent registered the names primarily for the purpose of disrupting the complainant’s business); see also Puckett v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).

Furthermore, while each of the four circumstances listed under Policy ¶ 4(b), if proven, evidences bad faith use and registration of the domain name, additional factors can also be used to support findings of bad faith. See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the “totality of circumstances”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”).

Respondent’s registration of the disputed domain name, a domain name that incorporates Complainant’s mark in its entirety and simply adds generic and descriptive words, suggests that Respondent knew of Complainant’s rights in the WESCOM mark. Additionally, Complainant’s trademark registration on the Principal Register of the United States Patent and Trademark Office gave Respondent constructive notice of Complainant’s mark. Thus, the Panel finds that Respondent chose the <wescomcreditunion.com> domain name based on the distinctive and well-known qualities of Complainant’s mark, which evidences bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the “domain names are so obviously connected with the Complainants that the use or registration by anyone other than Complainants suggests ‘opportunistic bad faith’”); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO, a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof.”).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.

Accordingly, it is Ordered that the <wescomcreditunion.com> domain name be TRANSFERRED from Respondent to Complainant.

Louis E. Condon, Panelist

Dated: March 24, 2005