Vancouver City Savings Credit Union v. LaPorte Holdings c/o Admin
Claim Number: FA0512000608227
Complainant is Vancouver City Savings Credit Union (“Complainant”), represented by Lisa Martz, of McCarthy Tetrault LLP, 1300 - 777 Dunsmuir Street, Vancouver, BC V7Y 1K2, Canada. Respondent is LaPorte Holdings c/o Admin (“Respondent”), 5482 Wilshire Blvd #1928, Los Angeles, CA 90036.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <vancitysavings.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.
Tyrus R. Atkinson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 9, 2005; the National Arbitration Forum received a hard copy of the Complaint on December 12, 2005.
On December 12, 2005, Nameking.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <vancitysavings.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-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On December 12, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 3, 2006 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@vancitysavings.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 10, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <vancitysavings.com> domain name is confusingly similar to Complainant’s VANCITY mark.
2. Respondent does not have any rights or legitimate interests in the <vancitysavings.com> domain name.
3. Respondent registered and used the <vancitysavings.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Vancouver City Savings Credit Union, is the third largest credit union in North America managing over $10.5 billion in assets for more than 300,000 members. In connection with these services, Complainant has registered the VANCITY mark (Reg. No. TMA178519 registered September 24, 1971) with the Canadian Intellectual Property Office (“CIPO”).
Respondent registered the <vancitysavings.com> domain name on September 12, 2004. Respondent’s domain name resolves to a website that features links to various competing and non-competing commercial 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 established rights in the VANCITY mark
through registration with the CIPO. See
Symbol Techs. Can., ULC v. Barcode Sys. Inc., FA 249359 (Nat. Arb. Forum
June 3, 2004) (finding established rights in the SYMBOL mark through
registration with the Canadian Intellectual Property Office (“CIPO”)); see
also Janus Int’l Holding Co. v.
Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("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.").
Complainant contends that Respondent’s <vancitysavings.com> domain name is confusingly similar to Complainant’s mark. Respondent’s disputed domain name features Complainant’s entire VANCITY mark and adds the term “savings,” a generic term directly relating to the business in which Complainant engages. See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to the complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which the complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity).
The Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
Complainant has alleged that Respondent does not have rights or legitimate interests in the <vancitysavings.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). Due to Respondent’s failure to respond to the Complaint, the Panel infers that Respondent does not have rights or legitimate interests in the disputed domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that, where the complainant has asserted that respondent does not have rights or legitimate interests with respect to the domain name, it is incumbent on respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent does not have rights or legitimate interests is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Complainant is using the confusingly similar <vancitysavings.com>
domain name to operate a website that features links to various competing and
non-competing commercial websites from which Respondent presumably receives
referral fees. The Panel finds that
such use is 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). See
WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12,
2003) (finding that the respondent’s use of the
disputed domain name to redirect Internet users to websites unrelated to the
complainant’s mark, websites where the respondent presumably receives a
referral fee for each misdirected Internet user, was not a bona fide
offering of goods or services as contemplated by the Policy); see also
Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct.
17, 2003) (“Respondent's use of a domain name confusingly similar to
Complainant’s mark to divert Internet users to websites unrelated to
Complainant's business does not represent 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).”).
Furthermore, no affirmative evidence has been set forth showing that Respondent is either licensed to register domain names featuring Complainant’s VANCITY mark or any derivation thereof or that Respondent is commonly known by the disputed domain name. As a result, the Panel finds that Respondent has not established rights or legitimate interests pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Finally, the Panel finds that Respondent’s use of the <vancitysavings.com>
domain name to operate a website featuring links to various commercial websites
for Respondent’s own commercial gain is evidence of bad faith registration and
use pursuant to Policy ¶ 4(b)(iv). See
Drs. Foster & Smith, Inc. v.
Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where
the respondent directed Internet users seeking the complainant’s site to its
own website for commercial gain); see also Associated
Newspapers Ltd. v. Domain Manager, FA
201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the
<mailonsunday.com> domain name is evidence of bad faith pursuant to
Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's
competitors and Respondent presumably commercially benefited from the
misleading domain name by receiving ‘click-through-fees.’”). Furthermore, there is likely to be confusion
among Internet users as to Complainant’s affiliation with or sponsorship of the
resulting websites. See Am. Univ. v.
Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a
domain name that incorporates another's mark with the intent to deceive
Internet users in regard to the source or affiliation of the domain name is
evidence of bad faith.”); see also TM Acquisition Corp. v. Warren, FA
204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although
Complainant’s principal website is <century21.com>, many Internet users
are likely to use search engines to find Complainant’s website, only to be
mislead to Respondent’s website at the <century21realty.biz> domain name,
which features links for competing real estate websites. Therefore, it is likely that Internet users
seeking Complainant’s website, but who end up at Respondent’s website, will be
confused as to the source, sponsorship, affiliation or endorsement of
Respondent’s website.”).
The Panel finds that Policy ¶
4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <vancitysavings.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Panelist
Dated: January 23, 2006
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