Sharonview Federal Credit Union v. JessAd Thompson
Claim Number: FA2106001949902
Complainant is Sharonview Federal Credit Union (“Complainant”), represented by Seth Hudson of Nexsen Pruet, PLLC, North Carolina, USA. Respondent is JessAd Thompson (“Respondent”), Nigeria.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sharonviewonline.com>, registered with NameCheap, Inc..
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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 7, 2021; the Forum received payment on June 7, 2021.
On June 7, 2021, NameCheap, Inc. confirmed by e-mail to the Forum that the <sharonviewonline.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 8, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 28, 2021 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@sharonviewonline.com. Also on June 8, 2021, 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 July 1, 2021 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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" 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant claims rights in the SHARONVIEW FEDERAL CREDIT UNION mark established by its ownership of the trademark/service mark registrations set out below and common-law rights in the SHARONVIEW and SHARONVIEW FEDERAL CREDIT UNION marks established through extensive and continuous use of the marks since it was organized and began offering credit union services in 1955. It currently has 19 branches, 97,214 members, and assets of over $1.7 billion U.S. Dollars. Complainant has provided evidence of its charter date on July 21, 1976.
Complainant submits that the disputed domain name <sharonviewonline.com> is identical and confusingly similar to its SHARONVIEW and SHARONVIEW FEDERAL CREDIT UNION marks arguing that the disputed domain name incorporates the word “sharonview,” which is the dominant portion of the marks.
Complainant adds that the disputed domain name is also similar to its domain names <sharonview.org>, <sharonview.com>, and <sharonviewonline.org>.
Complainant alleges that Respondent lacks rights or legitimate interests in the disputed domain name because Respondent is not commonly known as <sharonviewonline.com>. See Broadcom Corp. v. Intellifone Corp., FA 96356 (Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).
Complainant argues that Respondent registered the disputed domain name on May 1, 2021, long after Complainant began using the SHARONVIEW and SHARONVIEW FEDERAL CREDIT UNION marks in commerce and registering its marks with the United States Patent and Trademark Office. Complainant adds that it began using its domain name <sharonview.org> to offer credit union services almost 21 years prior to the registration of the disputed domain name.
Complainant asserts that it has not authorized Respondent to use any of its marks in any way nor is Respondent authorized by Complainant to register a domain name incorporating it service marks. See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).
Complainant submits that the disputed domain name currently resolves to a website that is a clone of the Complainant’s website as shown by screen captures of both Complainant’s own website and Respondent’s website to which the disputed domain name resolves which are exhibited in an annex to the Complaint.
Complainant adds that Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services and upon information and belief, Respondent itself offers neither goods nor services. There is no legitimate basis for Respondent's registration and/or use of the disputed domain name, which incorporates Complainant’s marks but instead is Respondent’s goal to create confusion in the Internet users’ minds.
Complainant alleges that the disputed domain name was registered in bad faith arguing that very nature of Respondent's registration and use of the disputed domain name evidences that Respondent knowingly registered the disputed domain name containing an exact reproduction of the well-known SHARONVIEW mark. Furthermore, the screen captures of Complainant’s and Respondent’s website show that the disputed domain name resolves to a website that is a clone of Complainant’s website. Complainant contends that Respondent’s intention is to capitalize on consumer recognition of Complainant’s marks and its association with the categories of services listed on Complainant’s own website at <www.sharonview.org>.
Complainant argues that the SHARONVIEW and SHARONVIEW FEDERAL CREDIT UNION service marks are unique and arbitrary, such that it is unlikely that the Respondent devised the term <sharonviewonline.com> on its own. This factor alone weighs in favor of finding bad faith against Respondent. See Neuberger Berman, Inc., v. Jacobsen, No. D2000-0323 (WIPO June 12, 2000) (weighing the uniqueness of the trademark, and the likelihood of Respondent coming up with the domain name independently, in finding bad faith).
Complainant adds that the screen capture of the website to which the disputed domain name resolves, shows that Respondent is using the disputed domain name in bad faith to misdirect internet users to a clone of Complainant’s website.
Complainant further alleges that one of its credit union members of unknowingly accessed Respondent’s website believing he was accessing Complainant’s website, to purchase a credit report. Complainant alleges that the member entered his username and login information, along with his debit card information, and was charged $69.99 by a merchant allegedly based in the state of Utah, which is not associated with Complainant.
Complainant contends that this evidence proves that Respondent registered and is using the disputed domain name primarily to profit from and that the registration and use of a domain name is in bad faith. Complainant argues that the screen captures which is been annexed to the Complaint show that Respondent has attempted to intentionally attract for commercial gain internet users to Respondent’s website by creating a likelihood of confusion with Complainant's marks as the source of the website or of a product or service on that website as contemplated by paragraphs 4(b)(iii) and (iv) of the Policy.
B. Respondent
Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant provides credit union services and is the owner of the following United States federal service mark registrations
· United States registered service mark SHARONVIEW FEDERAL CREDIT UNION and Device registration number 5,302,827, registered on the Principal Register on October 3, 2017 for services in international class 36;
· United States registered service mark SHARONVIEW FINANCIAL SERVICES INVESTING * RETIREMENT *INSURANCE and Device registration number 5,351,520 registered on the Principal Register on December 5 2017 for services in international class 36;
· United States registered service mark SHARONVIEW UNLIMITED REWARDS registration number 4,713,988 registered on the Principal Register on March 31, 2015 for services in international class 36.
Complainant also claims unregistered rights in SHARONVIEW and SHARONVIEW FEDERAL CREDIT UNION for credit union services.
Complainant has an established Internet presence and since at least May 31, 2000. It is the owner of number of Internet domain names specifically sharonview.org, sharonview.com, and sharonviewonline.org and has maintained a website to which its domain name <sharonview.org> registered on May 4, 1999 resolves.
The disputed domain name was registered on May 1, 2021 and resolves to a website that is an identical copy of Complainant’s website.
There is no information available about Respondent except for that provided in the Complaint, the Registrar’s WhoIs and information provided by the Registrar in response to the enquiry from the Forum seeking confirmation details of the registration of the disputed domain name for the purposes of this Complaint.
Respondent is the registrant of the disputed domain name. Respondent availed of a privacy service to conceal his name on the published WhoIs and the identity of the registrant was disclosed by the Registrar to the Forum in the course of this proceeding.
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 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.
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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has provided clear, convincing and uncontested evidence that it has rights in the SHARONVIEW FEDERAL CREDIT UNION mark established by its ownership of the trademark/service mark registrations described above. In addition, the evidence shows that Complainant has established common law rights and goodwill in the SHARONVIEW and SHARONVIEW FEDERAL CREDIT UNION mark through long and extensive use in credit union.
The disputed domain name <sharonviewonline.com> is composed of the words “sharonview” and ”online” in combination with the Top Level Domain (“gTLD“) extension <.com>.
The word “sharonview” is the dominant element in both Complainant’s SHARONVIEW and SHARONVIEW FEDERAL CREDIT UNION and the disputed domain name.
The other elements ”online” the gTLD extension <.com> add no distinguishing character to the disputed domain name because the element “online” is generic and descriptive signifying an association with the Internet and for the purposes of evaluating confusing similarity between the disputed domain name and Complainant’s mark, the gTLD <.com> extension may be ignored because in the circumstances of this Complaint, on the balance of probabilities it would be recognized as a technical necessity for a domain name and serves no other purpose or meaning in the context.
This Panel finds therefore that the disputed domain name is confusingly similar to the SHARONVIEW and SHARONVIEW FEDERAL CREDIT UNION marks in which Complainant has rights.
Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i)
Complainant has made out an uncontested prima facie case that Respondent has no rights or legitimate interests in the disputed domain name because
· Respondent is not commonly known as <sharonviewonline.com>;
· Respondent registered the disputed domain name on May 1, 2021, long after Complainant began using an acquired rights in the SHARONVIEW and SHARONVIEW FEDERAL CREDIT UNION service marks;
· the screen captures which had been induced in evidence in the annexes to the Complaint show that the disputed domain name currently resolves to a website that is a clone of the Complainant’s website as shown by screen captures of Respondent’s website exhibited in an annex to the Complaint;
· Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services; and
· there is no legitimate basis for Respondent's registration and/or use of the disputed domain name, which incorporates Complainant’s marks but instead is Respondent’s goal to create confusion in the Internet users’ minds.
It is well established that, as in this case, once a complainant makes out a prima facie case that the respondent has no rights or legitimate interests in the domain name at issue, the burden of production shifts the respondent to prove such rights or interests.
Respondent has failed to discharge the burden of production in this proceeding.
This Panel must therefore find that on the balance of probabilities, Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
Having considered the Complaint including the annexes, and in the absence of any Response, this Panel finds that the disputed domain name was registered in bad faith.
The SHARONVIEW and SHARONVIEW FEDERAL CREDIT UNION service marks are unique and distinctive and it is unlikely that the registrant chose and registered the confusingly similar disputed domain name, without knowledge of Complainant, it’s trademarks, goodwill, and reputation. In fact, on the balance of probabilities the disputed domain name was registered with Complainant’s mark in mind with the intention of targeting Complainant and taking predatory advantage of its reputation.
Complainant has made a bare unsubstantiated allegation that one of its members has in fact been misled and was almost a victim of phishing by Respondent. No evidence has been adduced to support this assertion.
Nonetheless, the screenshot of the website which the disputed domain name resolves that has been adduced in evidence, shows that Respondent has caused permitted or allowed the disputed domain name to resolve to a website that is a clone of Complainant’s own website without authorization.
The only plausible purpose of such activity is to confuse and mislead Internet users in order to gain financially.
Such impersonation of trademark owner, in particular one that is providing financial services is clear evidence of bad faith use of the disputed domain name.
This Panel finds therefore that on the balance of probabilities, Respondent is using the disputed domain name in bad faith by engaging in an intentional attempted to attract, for commercial gain, Internet users to his web site by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of his web site and is therefore using the disputed domain name in bad faith.
As this panel has found that the disputed domain name was registered and is being used in bad faith, Complainant has succeeded in the third element of the test in Policy ¶ 4(a)(iii) and is entitled to the remedy requested in the Complaint.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sharonviewonline.com> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: July 5, 2021
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