Franklin Mint Federal Credit Union v. Jill Smith
Claim Number: FA0612000860517
Complainant is Franklin Mint Federal Credit Union (“Complainant”), represented by Robert
B. Famiglio, of Famiglio & Associates,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <franklinmintcreditunion.com> and <franklinmintfederalcreditunion.com>, registered with Go Daddy Software, 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, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 4, 2006; the National Arbitration Forum received a hard copy of the Complaint on January 10, 2007.
On January 10, 2007, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <franklinmintcreditunion.com> and <franklinmintfederalcreditunion.com> domain names are registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the names. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, 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 January 16, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 5, 2007, 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@franklinmintcreditunion.com and postmaster@franklinmintfederalcreditunion.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 11, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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 <franklinmintcreditunion.com> domain name is confusingly similar and <franklinmintfederalcreditunion.com> domain name is identical to Complainant’s FRANKLIN MINT FEDERAL CREDIT UNION mark.
2. Respondent does not have any rights or legitimate interests in the <franklinmintcreditunion.com> and <franklinmintfederalcreditunion.com> domain names.
3. Respondent registered and used the <franklinmintcreditunion.com> and <franklinmintfederalcreditunion.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Franklin Mint Federal Credit Union, Complainant has used the FRANKLIN MINT FEDERAL CREDIT UNION mark in connection with banking services including loans, mortgages, and financial products for its members since March of 1970. Complainant formally changed its name to the FRANKLIN MINT FEDERAL CREDIT UNION under the procedures of the National Credit Union Administration on May 22, 1987. A common shorthand name for Complainant is the Franklin Mint Credit Union.
Respondent registered both the <franklinmintcreditunion.com> and <franklinmintfederalcreditunion.com> domain names on November 2, 2004. Respondent is using the disputed domain names to redirect Internet users to Respondent’s website advertising goods and services in competition with Complainant’s goods and services under the FRANKLIN MINT FEDERAL CREDIT UNION mark.
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.
It is not necessary for Complainant to hold a registered trademark to establish rights in the FRANKLIN MINT FEDERAL CREDIT UNION mark. Common law rights in a mark are sufficient to satisfy Policy ¶ 4(a)(i). See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”).
Complainant has established common law rights in its
FRANKLIN MINT FEDERAL CREDIT UNION mark through extensive and continuous use
since at least 1984. While the mark is
not a registered trademark, the Complainant is commonly known by the FRANKLIN
MINT FEDERAL CREDIT UNION mark and it is Complainant’s registered name with the
National Credit Union Administration.
The Panel finds that Complainant has created substantial consumer
recognition in the FRANKLIN MINT FEDERAL CREDIT UNION mark sufficient to
establish Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). See 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.”); see also 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 Fishtech, Inc. v. Rossiter, FA 92976
(Nat. Arb. Forum Mar. 10, 2000) (finding that the complainant has common law
rights in the mark FISHTECH that it has used since 1982).
Respondent’s <franklinmintcreditunion.com> domain name is confusingly similar to Complainant’s FRANKLIN MINT FEDERAL CREDIT UNION mark because Respondent’s domain name uses Complainant’s mark in its entirety and merely omits the word “federal.” The Panel finds that this minor addition does not alter Complainant’s mark sufficiently to negate the confusingly similar aspects of Respondent’s domain name under Policy ¶ 4(a)(i). See Asprey & Garrard Ltd v. Canlan Computing, D2000-1262 (WIPO Nov. 14, 2000) (finding that the domain name <asprey.com> is confusingly similar to the complainant’s ASPREY & GARRARD and MISS ASPREY marks); see also Wellness Int’l Network, LTD v. Apostolics.com, FA 96189 (Nat. Arb. Forum Jan. 16, 2001) (finding that the domain name <wellness-international.com> is confusingly similar to the complainant’s WELLNESS INTERNATIONAL NETWORK) .
Respondent’s <franklinmintfederalcreditunion.com>
domain name is identical to Complainant’s FRANKLIN MINT FEDERAL CREDIT UNION
mark. The disputed domain name uses the
Complainant’s mark in its entirety and merely adds the top-level domain
“.com.” The Panel finds that
Complainant’s mark and Respondent’s domain name are identical despite the
addition of a generic top level domain, pursuant to Policy ¶ 4(a)(i). See
Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding
<pomellato.com> identical to the complainant’s mark because the generic
top-level domain (gTLD) “.com” after the name POMELLATO is not relevant).; see also
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 <franklinmintcreditunion.com> and <franklinmintfederalcreditunion.com> domain names. Complainant must make a prima facie case and then the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel assumes that Respondent does not have rights or legitimate interests in the disputed domain name here because Respondent has failed to respond to the Complaint. See 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).”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”). The Panel will evaluate the available evidence to determine whether Respondent has rights or legitimate interests in the disputed domain name pursuant to policy ¶ 4(c).
Complainant alleges that Respondent is using the <franklinmintcreditunion.com> and <franklinmintfederalcreditunion.com>
domain names to redirect Internet users to Respondent’s website advertising
competing goods and services.
Respondent’s use of the domain name to advertise competing goods and
services 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 under Policy ¶ 4(c)(iii). See Computerized Sec. Sys., Inc. v. Hu,
FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of
[Complainant’s] SAFLOK mark to market products that compete with Complainant’s
goods does not constitute a bona fide offering of goods and services.”); see
also Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that
the respondent was not using the domain names for a bona fide offering
of goods or services nor a legitimate noncommercial or fair use because the
respondent used the names to divert Internet users to a website that offered
services that competed with those offered by the complainant under its marks).
Additionally, Respondent has offered no evidence and no
evidence is present in the record suggesting that Respondent is commonly known
by the <franklinmintcreditunion.com>
and <franklinmintfederalcreditunion.com> domain names. Respondent’s WHOIS information identifies
Respondent as “Jill Smith.” Therefore,
Respondent has failed to establish rights or legitimate interests in the <franklinmintcreditunion.com>
and <franklinmintfederalcreditunion.com> domain names 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 Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the
WHOIS contact information for the disputed domain [name], one can infer that
Respondent, Onlyne Corporate Services11, is not commonly known by the name
‘welsfargo’ in any derivation.”).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Respondent has registered and is using the <franklinmintcreditunion.com> domain name, which is confusingly simila to Complainant’s FRANKLIN MINT FEDERAL CREDIT UNION mark, and the <franklinmintfederalcreditunion.com> domain name, which is identical to Complainant’s FRANKLIN MINT FEDERAL CREDIT UNION mark, in order to redirect Internet users to Respondent’s website advertising similar goods and services. The Panel finds that such use constitutes disruption and is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Lambros v. Brown, FA 198963 (Nat. Arb. Forum Nov. 19, 2003) (finding that the respondent registered a domain name primarily to disrupt its competitor when it sold similar goods as those offered by the complainant and “even included Complainant's personal name on the website, leaving Internet users with the assumption that it was Complainant's business they were doing business with”); see also 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).
Respondent is using the <franklinmintcreditunion.com> and <franklinmintfederalcreditunion.com>
domain names to redirect Internet users to Respondent’s website that advertises
competing goods and services for the assumed profit of Respondent. The Panel finds that because Respondent’s
domain names are confusingly similar and identical to Complaint’s FRANKLIN MINT
FEDERAL CREDIT UNION mark, Internet users may become confused as to
Complainant’s affiliation with the website.
Presumably, Respondent is profiting from this confusion by earning
click-through fees. As a result, Respondent’s
use of the <franklinmintcreditunion.com> and <franklinmintfederalcreditunion.com>
domain names to advertise competing goods and services constitutes bad faith
registration and use pursuant to Policy ¶ 4(b)(iv). See Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad
faith registration and use pursuant to Policy ¶ 4(b)(iv) where the domain name
resolved to a website that offered similar products as those sold under the
complainant’s famous mark); see also H-D Michigan, Inc. v. Petersons
Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed
domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through the respondent’s registration and use of the
infringing domain name to intentionally attempt to attract Internet users to
its fraudulent website by using the complainant’s famous marks and likeness); see
also ESPN, Inc. v. Ballerini, FA
95410 (Nat. Arb. Forum Sept. 15, 2000) (finding bad faith where the respondent
linked the domain name to another domain name, <iwin.com>, presumably
receiving a portion of the advertising revenue from the site by directing
Internet traffic there, thus using a domain name to attract Internet users for
commercial gain).
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 <franklinmintcreditunion.com> <franklinmintfederalcreditunion.com> domain names be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: February 20, 2007
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