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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Patelco Credit Union v. Hong Kong Names LLC

Case No. D2006-0202

 

1. The Parties

The Complainant is Patelco Credit Union, San Francisco, California, United States of America, represented by Moore, Brewer, Jones & Tyler, United States of America.

The Respondent is Hong Kong Names LLC, Hong Kong, SAR of China.

 

2. The Domain Name and Registrar

The disputed domain name <patelcocreditunion.com> is registered with Moniker Online Services, LLC.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 14, 2006. On February 16, 2006, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On March 6, 2006, Moniker Online Services, LLC transmitted by email to the Center its verification response. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on March 13, 2006. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 21, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was April 10, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 11, 2006.

The Center appointed Ian Blackshaw as the sole panelist in this matter on April 20, 2006. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

 

4. Factual Background

The Complainant owns service mark registration number 3008411 for PATELCO CREDIT UNION (the “Mark”) and owns common law rights in and to the Mark, as evidenced by Complainant’s continuous, substantial and exclusive use of the Mark in the United States in interstate commerce since at least as early as 1979, and the Complainant’s first use of the Mark since at least as early as 1936. Information about the registered Mark and the Mark as shown on the Complainant’s web site to identify its services has been provided to the Panel.

The Complainant uses the Mark to identify its credit union services, namely, providing banking services, savings and checking accounts, certificates of deposit, home and business loans, and credit cards. The Complainant has invested a large amount of money in developing its presence over the Internet. Annually, the Complainant spends approximately $300,000 (20% of its annual $1.5 million marketing budget) on marketing its online banking services and advertising its other financial products and services over the Internet.

The Complainant currently has over 205,000 members and assets exceeding $3.5 billion; is the 3^rd largest credit union in California; the 11^th largest credit union in the United States in terms of asset size; and the 28^th largest credit union in the United States in terms of number of members according to Callahan and Associates 2006 Credit Union Directory; the Panel having been provided with a copy of the pertinent pages in Callahan’s. The Complainant’s members are located throughout the United States.

The Complainant also owns the domain name <patelco.org> which was created and registered on May 28, 1995, with the registrar Network Solutions, LLC. The Complainant operates an active web site using its domain name <patelco.org>. The Complainant also owns the domain name <patelcocreditunion.net>. “Patelco.org” is the email address for the Complainant’s staff, who regularly receive emails from customers concerning their accounts and who also regularly send emails to customers using the “patelco.org” email address. The Complainant’s web site provides online banking services and information about the Complainant; financial information; and information on how to become a member of the Complainant. The Complainant estimates that 50% of its members/customers use its online banking services. A copy of the Complainant’s 2004 Annual Report has been provided to the Panel.

The Complainant’s name and the Mark have become distinctive identifiers of the Complainant’s services. The Complainant has received substantial media recognition in California and throughout the United States for its services. Due to significant marketing and promotional efforts, the Complainant has developed considerable and valuable goodwill and reputation with respect to its name and the Mark and thus has attained the necessary secondary meaning in its name and the Mark to establish its common law rights (Imperial College v. Christophe Dessimoz, WIPO Case No. D2004-0322). The Panel has been provided with a copy of that decision.

The Complaint was originally filed against “Moniker Online Services, LLC.”, the Registrar, but, following confirmation from the Registrar that the registrant of the disputed domain name had used the Registrar’s identity protection service, the Complaint was amended to reflect that the domain name registrant and Respondent is “Hong Kong Names LLC”.

 

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions:

A1. The domain name is confusingly similar to a trademark or service mark in which the Complainant has rights

(Policy, paragraph 4(a)(i), Rules, paragraphs 3(b)(viii), (b)(ix)(1))

The disputed domain name <patelcocreditunion.com> is confusingly similar to the Mark because it is identical to the Mark. In addition, the Respondent is trading off of the Complainant’s name and the Mark by placing the Complainant’s name and the Mark on the ‘landing page’ for the disputed domain name and using them for commercial gain without the Complainant’s authorization.

According to the Registrar’s Whois data base, the Respondent registered the disputed domain name on April 18, 2004. The Respondent is using the disputed domain name in connection with a ‘landing page’ i.e., a non-active web site, that offers a search engine for Internet users to locate products and services that compete with the Complainant’s products and services and also to locate non-competing products and services that the Complainant neither endorses nor recommends to its members/customers. The initial search engine either links one to multiple search engines for the category listed or to web sites. Some of the links for competing products and services are found under the “Main Categories” and “More Categories” sections and include such categories as “Finances” with subcategories, “banking”, “bankloan”, “credit union”. For example, when one clicks the “credit union” link, one is taken to a web page showing “Sponsored Results for Credit Union” and includes search engines for “Find a Credit Union at LocalLender.info”, “Credit Union – Free Mortgage Quotes” and “Compare Credit Union and Bank Mortgages”. The first search engine re-directs one to “LocalLender.info” which contains further links and search engines to assist in finding credit unions or other financial services and companies. Copies of the Respondent’s ‘landing page’ using the domain name <patelcocreditunion.com> and pages resulting from use of the search engines and links on the ‘landing page’, as they appeared on January 22 and February 14, 2006, have also been provided to the Panel.

During or about December 2005, the Complainant first learned of the disputed domain name registered in favor of the Respondent and the web site relating to the disputed domain name. The Complainant has not authorized the registration of the disputed domain name or the use of the disputed domain name on any web site. On December 20, 2005, the Complainant, through its attorneys, sent an email, a copy of which has been provided to the Panel, to the Respondent, with a copy to Moniker Online Services, LLC, as Registrar also, demanding that the Respondent immediately cease and desist from any use of the disputed domain name. The Complainant has received no response to this email from the Respondent and the web site for <patelcocreditunion.com> is still active on the Internet.

A2. The Respondent has no rights or legitimate interests in respect of the domain name

(Policy, paragraph 4(a)(ii), Rules, paragraph 3(b)(ix)(2))

According to the originally-named Respondent’s web site “www.moniker.com”, it is a domain name registrar and offers services for buying and selling domain names. Copies of web pages from that web site have been provided to the Panel. When one types in “patelcocreditunion.com” at the search link, one is taken to a page that shows 23 versions of the domain name “patelcocreditunion” for sale. The disputed domain name <patelcocreditunion.com> as well as <patelcocreditunion.net> and <patelcocreditunion.org> are marked as unavailable but you can click “make offer” and you are taken to a bid form, a copy of which has also been provided to the Panel, which asks for an unsolicited offer. The Complainant is the owner of <patelcocreditunion.net> as evidenced by Whois Domain Name Search for <patelcocreditunion.net>. The Complainant has never requested or authorized the Registrar or the Respondent to solicit offers for its domain name. Accordingly, there is no evidence that at any time prior to the December 20, 2005, notice from the Complainant that the Respondent used the disputed domain name in connection with a bona fide offering of goods or services. Rather, the Respondent uses the disputed domain name (1) for purposes of providing a ‘landing page’ with search engines to re-direct consumers looking for the Complainant’s web site to other web sites, and (2) to solicit offers to purchase the disputed domain name.

The Respondent is not commonly known by the disputed domain name. The originally-named Respondent’s corporate name registered with the Florida Secretary of State is “Moniker Online Services, LLC”. Its web site shows only the corporate name “moniker.com” and does not show that it also does business as “patelcocreditunion” or “patelco” or any other name similar to Complainant’s name and Mark. In fact, the Respondent could not do business under the name “patelcocreditunion” because the Respondent is not a credit union. For example, under California Financial Code, Section 14050, a copy of which has been provided to the Panel, it is a misdemeanor for any person other than those authorized by law to use a name or title that contains the phrase “credit union”.

The Respondent is not making a legitimate non-commercial or fair use of the disputed domain name. According to the Complainant’s information and belief, the Respondent uses the disputed domain name to re-direct Internet users interested in the Complainant’s products and services to a commercial web site that offers a search engine for users to locate competitive products and services, as well as non-competitive products and services that are not endorsed by Complainant. Such activity is not a legitimate or non-commercial fair use of the disputed domain name (Citigroup, Inc. v. Horoshiy, Inc., NAF Case No. 0406000290633, decision dated August 11, 2004, a copy has also been provided to the Panel).

According to the Complainant’s information and belief, the Respondent chose the Complainant’s entire name “patelcocreditunion” for purposes of (1) confusing and diverting Internet traffic, rightfully bound for the patelco.org web site, to the <patelcocreditunion.com> web site, and (2) to sell a domain name bearing the Complainant’s entire name and thereby profiting from the Complainant’s mark and reputation.

A3. The domain name was registered and is being used in bad faith

(Policy, paragraphs 4(a)(iii), 4(b); Rules, paragraph 3(b)(ix)(3))

According to the Complainant’s information and belief, the Respondent’s use of the disputed domain name is done to create a likelihood of confusion with the Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location or of a product or service on the Respondent’s web site or location as a result of the following conduct by Respondent: (a) the Respondent’s use of a domain name that is confusingly similar to the Mark; (b) the Respondent’s unauthorized placement of the Complainant’s name and the Mark on the Respondent’s web site; (c) the originally-named Respondent’s primary business activities, being that of a domain name registrar and buying and selling domain names and creating and providing custom ‘landing pages’ so that, when someone goes to the Internet and types in “www.patelcocreditunion.com”, s/he will be directed to a ‘landing page’ on which the Respondent has placed content and links to search engines and web sites that is/are relevant to what they believe visitors to the <patelcreditunion.com> domain are searching for. It is only because these visitors are familiar with the Complainant and the Mark that they may end up at the <patelcocreditunion.com> ‘landing page’. The links to search engines and web sites are for financial service providers that compete with the Complainant and for non-competing products and services which are not endorsed by the Complainant.

According to the Complainant’s information and belief, use of the disputed domain name <patelcocreditunion.com> is done with the intent to attract, for commercial gain, Internet users to the Respondent’s web site as a result of the following conduct by the Respondent: (a) the Respondent’s conduct described in (a) through (c) of the previous paragraph; (b) the Respondents stated business activities as described in paragraph (c) of the same paragraph.

According to the Complainant’s information and belief, the Respondent is aware that members of the Complainant and persons familiar with the Complainant but who do not know the Complainant’s domain name are likely to type in “patelcocreditunion.com” when trying to locate the Complainant’s web site because that is the Complainant’s full name and the suffix .com is a common domain name suffix used by financial institutions.

According to the Complainant’s information and belief, the Respondent acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the domain name through the following conduct by the Respondent: the Respondent is in the business of buying and selling domain names and provides a bid form on its web site for persons to bid on “www.patelcocreditunion.com”.

B. Respondent

The Respondent, having been duly notified of the Complaint and these proceedings, did not reply to the Complainant’s contentions or take any part in them.

 

6. Discussion and Findings

To qualify for transfer of the disputed domain name, the Complainant must prove each of the following elements of paragraph 4(a) of the Policy, namely:

(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) The disputed domain name has been registered and is being used in bad faith.

In accordance with paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.

In accordance with paragraph 14(a) of the Rules, in the event that a party, in the absence of exceptional circumstances, does not comply with any of the time periods established by the Rules or the Panel, the Panel shall proceed to a decision on the complaint; and (b) if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences as it considers appropriate.

In accordance with paragraph 10(d) of the Rules, the Panel shall determine the admissibility, relevance, materiality and weight of the evidence.

In previous UDRP cases in which the respondent failed to file a response, the Panel’s decisions were based upon the complainant’s assertions and evidence, as well as inferences drawn from the respondent’s failure to reply. See The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064; and also Kцstritzer Schwarzbierbrauerei v. Macros-Telekom Corp, WIPO Case No. D2001-0936.

Nevertheless, the Panel must not decide in the complainant’s favor solely based on the respondent’s default (Cortefiel S.A. v. Miguel Garcнa Quintas, WIPO Case No. D2000-0140). The Panel must decide whether the complainant has introduced elements of proof, which allow the Panel to conclude that its allegations are true.

A. Identical or Confusingly Similar

In accordance with prior UDRP decisions, where a domain name incorporates a complainant’s registered mark, this is sufficient to establish that the domain name is identical or confusingly similar for the purposes of the Policy. See, for example, Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525.

The disputed domain name incorporates the trademark PATELCO CREDIT UNION, which is also the corporate name of the Complainant, and both the trademark and the name are owned and have been commercially used and promoted by the Complainant exclusively in and for the purposes of its business and the sale of its services for many years – the first use of the mark dating back to 1936; and its first use in commerce dating back to 1979. The Panel, therefore, accepts and recognizes that the Complainant’s trademark PATELCO CREDIT UNION is well-established and well-known to and has a good reputation amongst consumers of credit union services (as defined above by the Complainant) throughout the United States. The Panel further accepts that the Complainant has invested considerable sums in the promotion and marketing of its name and mark in relation to its business as a credit union and the provision of the corresponding services, and has also received substantial unsolicited media attention in California, where it is based, and throughout the rest of the United States.

The addition of the suffix .com, which is required solely for registration purposes, is irrelevant for trademark purposes, and does not, therefore, serve to distinguish the disputed domain name from the trademark of the Complainant. See Pomellato S.p.A v. Tonetti, WIPO Case No. D2000-0493, in which the Panel found that the domain name <pomellato.com> is identical to the complainant’s mark because the generic top-level domain (gTLD) .com after the name POMELLATO, is not relevant. See also Blue Sky Software Corp. v. Digital Sierra Inc., WIPO Case No. D2000-0165, in which the Panel held that the domain name <robohelp.com> is identical to the complainant’s registered ROBOHELP trademark, and that the “addition of the suffix .com is not a distinguishing difference”.

In view of all this, the Panel finds that the disputed domain name registered by the Respondent is identical to the trademark PATELCO CREDIT UNION, in which the Complainant has demonstrated rights.

B. Rights or Legitimate Interests

In order to determine whether the Respondent has any rights or legitimate interests in respect of the disputed domain name (paragraphs 3(b)(ix)(2) of the Rules and 4(c) of the Policy), attention must be paid to any of the following circumstances in particular but without limitation:

- whether before any notice to the Respondent of the dispute, there is any evidence of the Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;

- whether the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights;

- whether the Respondent is making a legitimate non commercial or fair use of the domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue.

There is no evidence to show that the Respondent was acting in pursuance of any rights or legitimate interests when registering the disputed domain name. In fact, the Respondent’s failure to answer the Complainant’s attorneys’ ‘cease and desist’ letter of December 20, 2005 (referred to above) and also the Complaint tends to show that the Respondent does not have any such rights or interests, otherwise the Respondent would have asserted them. In other words, the Respondent’s silence may be tantamount to admitting the Complainant’s case (see Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624). Indeed, in view of the notoriety of the Complainant’s trade name and trademark PATELCO CREDIT UNION and the services which they identify, the Respondent must have known that, when registering the disputed domain name, the Respondent could not have, or indeed, have claimed any such rights or interests. Conversely, in the view of the Panel, the registering of the disputed domain name, against such a background, can hardly be described as an innocent mistake on the part of the Respondent, but, in the absence of any evidence to the contrary, must have been deliberate.

In particular, the Panel finds no evidence that the Respondent has used, or undertaken any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. On the contrary, the Respondent has used the disputed domain name for a website that directs Internet users not to the Complainant and its products and services but those of its competitors.

Likewise, no evidence has been adduced that the Respondent has commonly been known by the disputed domain name; nor is the Respondent making a legitimate non-commercial or fair use of the domain name; nor has the Respondent been authorized or licensed by the Complainant to use the Complainant’s well-known trademark PATELCO CREDIT UNION in the disputed domain name.

Respondent’s use of the domain name is not a bona fide use. As was pointed out in Red Bull GmbH v. Bayer Shipping & Trading Ltd., WIPO Case No. D2003-0271, the linking to competitive third-party websites “shows that Respondent is well aware of Complainant as well as of its products and activities, and, instead of making a bona fide use of the domain name, rather intends to have a free ride on the fame and goodwill of Complainant and its trademarks”. Also, as was stated in Hoffman-La Roche Inc. v. WhoisGuard, WIPO Case No. D2005-1288: “Whether or not Respondent profits directly from the redirection of the disputed domain name to a commercial website is not determinative. The fact is that someone other than Complainant is profiting from the use of the disputed domain name – a name that is confusingly similar to Complainant’s mark. Consequently, the for-profit nature of the use of the disputed domain name may be imputed to Respondent. Also, it is simply not reasonable to assume that Respondent is merely providing a public service when redirecting Internet users to a particular commercial website”.

Therefore, for all the above reasons, the Panel concludes that the Respondent has neither rights to nor legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Regarding the bad faith requirement, paragraph 4(b) of the Policy lists four examples of acts, which prima facie constitute evidence of bad faith. However, this list is not exhaustive, but merely illustrative. See Nova Banka v. Iris, WIPO Case No. D2003-0366.

Paragraphs 4(b)(i) and (iv) of the Policy are particularly relevant to the present case and provide that there is evidence of bad faith in the following circumstances:

(i) indicating that the respondent has registered or has acquired the domain name primarily for the renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the documented costs of the respondent directly related to the domain name; and

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.

Based on the evidence provided in the Case File, the Panel accepts the Complainant’s contention that the Respondent is in the business of buying and selling domain names and providing so-called ‘custom landing pages’ (as described above by the Complainant) and that one of the motives of the Respondent in registering the disputed domain name was for the purpose of selling that name to the Complainant, or to a third party, for a price in excess of the costs incurred by the Respondent in registering the domain name in the first place. All of this, in the view of the Panel, constitutes bad faith on the part of the Respondent.

Again, based on the evidence provided in the Case File, the Panel agrees with the Complainant’s contention that the Respondent, by registering the disputed domain name, is trading on the Complainant’s valuable goodwill established in its well-known trademark PATELCO CREDIT UNION over many years. In the absence of any evidence to the contrary, of which none is forthcoming on the part of the Respondent, the Respondent’s registration of the disputed domain name would not appear to be accidental, but deliberate and calculated to exploit the Complainant’s goodwill in the provision of financial services. This conclusion is reinforced by the links on the website of the Respondent (referred to above), which refer Internet users to a wide range of similar services offered by competitors of the Complainant. This conduct also constitutes bad faith.

Again, by registering and using the disputed domain name incorporating the Complainant’s trademark, PATELCO CREDIT UNION, the Respondent is misleading Internet users and consumers into thinking that it is, in some way or another, connected to, sponsored by or affiliated with the Complainant and its business; or that the Respondent’s activities are approved or endorsed by the Complainant, none of which, according to the evidence presented to the Panel is, in fact, the case. Such misleading conduct, in the view of the Panel, is another sign of bad faith on the part of the Respondent.

Furthermore, the Panel also considers that the Respondent, in not being registered by law as a Credit Union and, therefore, not able lawfully to engage in the business or offer the services of a Credit Union, but nevertheless holding itself out as being a Credit Union also constitutes bad faith on the part of the Respondent.

Finally, the failure of the Respondent to answer the Complainant’s attorneys’ ‘cease and desist letter’ (referred to above) or to comply with it, and also to file any answer to the present Complaint or otherwise participate in the present proceedings, in the view of the Panel, also indicate bad faith on the part of the Respondent.

Therefore, for all the above reasons, the Panel concludes that the Respondent has registered and is using the disputed domain name in bad faith.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <patelcocreditunion.com> be transferred to the Complainant.

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Ian Blackshaw
Sole Panelist

Dated: April 27, 2006