CUNA Mutual Insurance Society v. LaPorte
Holdings, Inc. c/o Admin
Claim
Number: FA0507000520648
Complainant, CUNA Mutual Insurance Society (“Complainant”),
is represented by Ariana G. Voigt of Michael Best & Friedrich LLP, 100 East Wisconsin Avenue, Milwaukee, WI 53202. Respondent is LaPorte Holdings, Inc. c/o Admin (“Respondent”), 5482 Wilshire
Blvd #1928, Los Angeles, CA 90036.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <pensionscunamutual.com> and <cunamutal.com>,
registered with Nameking.com, Inc.
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.
Houston
Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on July
20, 2005; the National Arbitration Forum received a hard copy of the Complaint on
July 22, 2005.
On
July 22, 2005, Nameking.com, Inc. confirmed by e-mail to the National
Arbitration Forum that the <pensionscunamutual.com> and <cunamutal.com>
domain names are registered with Nameking.com, Inc. and that Respondent is the
current registrant of the names. 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
July 27, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
August 16, 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@pensionscunamutual.com and postmaster@cunamutal.com
by e-mail.
Having
received no response from Respondent, the National Arbitration Forum
transmitted to the parties a Notification of Respondent Default.
On
August 28, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed Houston
Putnam Lowry, Chartered Arbitrator, 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.
Complainant
requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <pensionscunamutual.com>
and <cunamutal.com> domain names are confusingly similar to
Complainant’s CUNA MUTUAL mark.
2. Respondent does not have any rights or
legitimate interests in the <pensionscunamutual.com> and <cunamutal.com>domain
names.
3. Respondent registered and used the <pensionscunamutual.com>
and <cunamutal.com> domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
CUNA Mutual Insurance Society, is a leading provider of financial services to
credit unions and their members worldwide.
Complainant offers lending, protection, financial, employee, and member
solutions. Complainant is a
well-recognized provider of insurance, mortgage, and financial services in the
credit union marketplace. Complainant
has assets amounting to at least $14 billion and employs over 6,000 workers
worldwide.
Complainant has
used the CUNA MUTUAL mark in connection with credit union services since
1935. As a result of Complainant’s
widespread, continuous, and prominent use, Complainant’s marks have acquired
significant goodwill, wide public recognition, and fame. Complainant maintains websites at the
<cunamutual.com>, <cunamutual.info>, <cunamutual.org>,
<cunamutual.biz>, and <cunamutual.us> domain names. These websites provide substantial amounts
of information about Complainant’s services and offer interactive interfaces to
allow users to utilize Complainant’s services.
Respondent
registered the <cunamutal.com> domain name on September 10,
2002. Respondent registered the <pensionscunamutual.com>
domain name on November 18, 2003.
Respondent is using both domain names to feature links to other
businesses purporting to offer financial and insurance services in competition
with Complainant. Respondent receives
fees and other income when Internet users click on those links.
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. 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.”).
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.
Complainant has
acquired common law rights in its CUNA MUTUAL mark through widespread,
continuous, and prominent use of the mark in association with offering
insurance, mortgage, and financial services since 1935. The Panel holds that registration with the
United States Patent and Trademark Office is unnecessary to establish rights in
the mark. See McCarthy on Trademarks
and Unfair Competition, § 25:74.2 (4th ed. 2002) (The ICANN dispute
resolution policy is “broad in scope” in that “the reference to a trademark or
service mark ‘in which the complainant has rights’ means that ownership of a
registered mark is not required–unregistered or common law trademark or service
mark rights will suffice” to support a domain name complaint under the
Policy). Thus, the Panel concludes that
Complainant has established common law rights in the mark by showing that its
mark has acquired secondary meaning as a source identifier. See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000)
(finding common law rights in a mark where its use was continuous and ongoing,
and secondary meaning was established); see also Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001)
(“[O]n account of long and substantial use of [KEPPEL BANK] in connection with
its banking business, it has acquired rights under the common law.”).
Absent
any evidence to the contrary, this Panel finds Respondent’s <pensionscunamutual.com>
and <cunamutal.com> domain names are confusingly similar to
Complainant’s CUNA MUTUAL mark. The
<pensionscunamutual.com> mark wholly incorporates Complainant’s
mark and adds the generic term “pensions.”
The <cunamutal.com> domain name uses Complainant’s mark,
but misspells it by removing the letter “u.”
The Panel holds that neither the addition of a generic term nor the
deletion of a letter is sufficient to distinguish Respondent’s domain names
from Complainant’s mark. See Arthur
Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar.
23, 2001) (finding confusing similarity where the domain name in dispute
contains the identical mark of the complainant combined with a generic word or
term); see also State Farm Mut. Auto. Ins. Co. v. Try Harder & Co.,
FA 94730 (Nat. Arb. Forum June 15, 2000) (finding that the domain name
<statfarm.com> is confusingly similar to the complainant’s STATE FARM
mark).
The
Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Absent any
evidence to the contrary, this Panel finds Respondent does not have rights or
legitimate interests in the <pensionscunamutual.com> and <cunamutal.com>
domain names. Complainant’s assertion
establishes a prima facie case and shifts the burden to Respondent. To meet its burden, Respondent must provide
the Panel with evidence that it does have rights or legitimate interests in the
disputed domain name. 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. For the purposes of
this sub paragraph, however, it is sufficient for the Complainant to show a
prima facie case and the burden of proof is then shifted on to the shoulders of
Respondent. In those circumstances, the
common approach is for respondents to seek to bring themselves within one of
the examples of paragraph 4(c) or put forward some other reason why they can
fairly be said to have a relevant right or legitimate interests in respect of
the domain name in question.
Id.; see also G.D. Searle v. Martin Mktg.,
FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission
constitutes a prima facie case under the Policy, the burden effectively
shifts to Respondent. Respondent’s failure to respond means that Respondent has
not presented any circumstances that would promote its rights or legitimate
interests in the subject domain name under Policy ¶ 4(a)(ii).”). The Panel will analyze whether Respondent
could meet its burden of establishing rights or legitimate interests for
purposes of Policy ¶ 4(a)(ii).
Respondent is
not commonly known by the disputed domain names. Without a response from Respondent, the Panel accepts as true
Complainant’s allegation. See Desotec N.V. v. Jacobi Carbons AB,
D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a
presumption that the complainant’s allegations are true unless clearly contradicted
by the evidence). Moreover,
Respondent’s WHOIS information suggests that Respondent is known as “LaPorte
Holdings.” Therefore, the Panel
concludes that Respondent is not commonly known by the disputed domain name and
does not have rights or legitimate interests under Policy ¶ 4(c)(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 Gallup, Inc. v. Amish Country
Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the
respondent does not have rights in a domain name when the respondent is not
known by the mark).
Complainant
provides evidence that Respondent benefits from the confusing similarity of the
<pensionscunamutual.com> and <cunamutal.com> domain
names by displaying links to Complainant’s competitors and receiving
pay-per-click fees from confused Internet users who click on these links. Respondent’s links directly compete with
Complainant. Because Respondent did not
respond, the Panel treats Complainant’s arguments as true. See Vanguard Group, Inc. v. Collazo,
FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because Respondent
failed to submit a Response, “Complainant’s submission has gone unopposed and
its arguments undisputed. In the
absence of a Response, the Panel accepts as true all reasonable allegations . .
. unless clearly contradicted by the evidence.”). Thus, the Panel concludes that
Respondent is not using the disputed domain name in connection with 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 DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA
104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed
domain name in connection with a bona fide offering of goods and services
because Respondent is using the domain name to divert Internet users to
<visual.com>, where services that compete with Complainant are
advertised.”); see also Ultimate Elecs., Inc. v. Nichols, FA 195683
(Nat. Arb. Forum Oct. 27, 2003) (finding that the respondent's “use of the domain
name (and Complainant’s mark) to sell products in competition with Complainant
demonstrates neither a bona fide offering of goods or services nor a legitimate
noncommercial or fair use of the name”).
Consequently,
the Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant
argues that Respondent is using the <pensionscunamutual.com> and
<cunamutal.com> domain names to divert Internet users to websites
that feature links to goods and services that compete with Complainant’s and to
profit from diverting such Internet users to various websites. The Panel holds Respondent is creating a
likelihood of confusion for its own commercial gain. The Panel concludes that such use is evidence of bad faith use
and registration under Policy ¶ 4(b)(iv).
See Identigene, Inc. v.
Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where
the respondent's use of the domain name at issue to resolve to a website where
similar services are offered to Internet users is likely to confuse the user
into believing that the complainant is the source of or is sponsoring the
services offered at the site); see also MathForum.com, LLC v. Weiguang Huang,
D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv)
where the respondent registered a domain name confusingly similar to the
complainant’s mark and the domain name was used to host a commercial website
that offered similar services offered by the complainant under its mark).
The Panel finds
that Complainant has satisfied 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 <pensionscunamutual.com> and <cunamutal.com>
domain names be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered
Arbitrator, Panelist
Dated: Wednesday, September 7, 2005
Click Here to return
to the main Domain Decisions Page.
Click Here to return to our Home
Page
National Arbitration Forum