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Ent Federal Credit Union v. Registrant 22181 [2005] GENDND 2104 (16 December 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Ent Federal Credit Union v. Registrant 22181

Case No. D2005-1070

1. The Parties

The Complainant is Ent Federal Credit Union, United States of America, represented by Sherman & Howard, LLC, United States of America.

The Respondent is Registrant 22181, United States of America.

2. The Domain Name and Registrar

The disputed domain name <entfederalcreditunion.com> is registered with Moniker Online Service, LLC.

3. Procedural History

This action (the “Complaint”) was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 10, 2005. On October 12, 2005, the Center transmitted by e-mail to Moniker Online Services, LLC the first request for registrar verification in connection with the domain name at issue. On October 27, 2005, after four requests from the Center, Moniker Online Services, LLC finally transmitted by e-mail to the Center its verification response confirming that the Respondent is listed as the current registrant and providing the contact details for the administrative, billing, and technical contact.

In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on October 28, 2005. 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, dated October 24, 1999, (the “Policy”); the Rules for Uniform Domain Name Dispute Policy, dated October 24, 1999, (the “Rules”); and WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “WIPO 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 October 31, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was November 20, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent of its default on November 21, 2005. The Respondent was advised of the consequences of such a default.

The Center appointed John E. Kidd as the sole panelist (the “Panel”) in this matter on December 2, 2005. 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.

Having reviewed the communication records, the Panel finds that the Center has discharged its responsibilities under paragraph 2(a) of the Rules “to employ reasonably available means calculated to achieve actual notice to Respondent.” In the view of the Panel, the proper procedures have been followed and it may issue its decision based upon the documents submitted in accordance with the Policy, the Rules and the Supplemental Rules without the benefit of a response from the Respondent.

4. Factual Background

The Complainant, Ent Federal Credit Union, is a federally chartered credit union that has operated continuously since January 1957. It is one of the largest financial institutions in Southern Colorado, providing a full range of banking and financial services to businesses and families. The name “ENT FEDERAL CREDIT UNION” is a federally registered trademark protected under Certificate No. 2816310 which was issued on February 24, 2004.

The disputed domain name was created on or about April 2004, and, according to the records of a Network Solutions “Who Is Search” in August 2005, the Registrant is known only as “Registrant 119451.” Further information was concealed by Moniker Privacy Services, a service offered by Registrar Moniker Online Services, Inc. (“Moniker”). Subsequently, Moniker identified the owner of the disputed domain name as an offshore entity, Payphone Search LLC, having a West Indies post office address in Saint Kitts and Nevis. After several efforts to contact the owner by Complainant, ownership changed to Registrant 22181 with an address in Westboro, Massachusetts. A Network Solutions “Who Is Search” in October 2005 confirms this change of identity from Registrant 119451 with a West Indies address to Registrant 22181 with a Massachusetts address.

5. Parties’ Contentions

A. Complainant

The Complainant initially attempted to contact Moniker in an effort to halt the infringing activity in the July to September 2005 period. An individual identifying himself as “Jack Martin” responded purporting to be the principal in charge of owner of the domain name. Mr. Martin stated, however, that he was not using the domain name, but rather that it was being used by his “customer” whom he refused to identify. The domain name site, however, was temporarily deactivated. Then in May 2005 the domain name site was reactivated displaying the identical redirect page and the registrant was S.A., Inc. with the same Jupiter, Florida address. When Complainant again contacted Mr. Martin, he alleged that his “customer” had reached an agreement with the Complainant. No such agreement has ever been reached, or was the Complainant ever contacted by Mr. Martin’s customer. When Mr. Martin was again contacted on August 11, 2005, he agreed to deactivate the site, but he threatened to sell the domain name to another third party unless Complainant paid $787 which Mr. Martin alleges his “customer” had paid for the domain name at an auction. Complainant refused and two days later the domain name site was reactivated again, displaying the identical redirect page.

The Complainant also asserts that when visitors visit the disputed domain name site, they are presented with a single page, consisting of a rollover or “redirect” template displaying links to hundreds of other web-sites offering financial services of every imaginable kind.

The Complainant asserts that each of the elements specified in paragraph 4(a) of the Policy have been satisfied. More specifically, the Complainant submits that: (i) the domain name in dispute, <entfederalcreditunion.com>, is identical or confusingly similar to Complainant’s trademark ENT FEDERAL CREDIT UNION; (ii) the Respondent has no rights or legitimate interest with respect to the domain name; and (iii) the domain name was registered, and it is being used by the Respondent in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

In light of the Respondent’s failure to submit a response, the Panel, pursuant to the Rules, may draw such inferences, including adverse inferences, as it considers appropriate. See William H. Cosby, Jr. v. Sterling Davenport, WIPO Case No. D2005-0756 and Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403.

Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain an order that a domain name should be transferred:

(i) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interest with respect to the domain name; and

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

6.A Identical or Confusingly Similar Domain Name

Complainant’s business has been in existence for over fifty years, and its trademark, ENT FEDERAL CREDIT UNION, was federally registered prior to the date when the disputed domain name, <entfederalcreditunion.com>, first became active. Even though more relevant under the third element of the Policy, the Panel notes that Respondent most likely knew of the existence of Complainant’s mark at the time that Respondent’s domain name site commenced operation. It is the Panel’s view that Respondent could not have arrived at this domain name inadvertently or by mere coincidence. See Young Genius Software AB v. MWD, James Vargas, WIPO Case No. 2000-0591.

Except for the absence of spaces between the words, the domain name in dispute is identical to Complainant’s name and to Complainant’s federally registered trademark. The Panel finds that for all intents and purposes, Respondent’s domain name is identical to Complainant’s mark.

6.B Respondent’s Rights or Legitimate Interests in the Domain Name in Dispute.

The Panel finds that the Respondent has neither rights nor legitimate interest in respect to the disputed domain. The original registrant name for Respondent was 119451 (also possibly known as Payphone Search LLC) which was subsequently identified as registrant name: 22181. The Complainant asserts that the individual hiding behind Respondent’s name is not a bank, nor a credit union, nor an ongoing bona fide business or commercial entity of any type. It does not offer or sell any goods or services. It has no office, no phone number and no known individual as a contact person. It has only a post office box address in the West Indies, and subsequently in Massachusetts. Respondent has not refuted these allegations.

The Panel finds that no elements appear to exist that can link Payphone Search LLC or either registrant name 119451 or 22181 with the disputed domain. Further, the Respondent is not connected or affiliated in anyway with the Complainant, and Complainant asserts that it has never consented to or licensed the use of its trademark to Respondent for any purpose whatsoever. The facts are also unrefuted that none of the web-sites linked to the disputed domain have any connection or affiliation whatsoever with Complainant, but rather they are connected with web-sites that offer services that are directly competitive with Complainant’s business. Such use of a web-site is not a legitimate use or interest. See Libro AG v. NA Global Link Limited, WIPO Case No. D2000-0186 and Adobe Systems Incorporated v. Domain Oz, WIPO Case No. D2000-0057.

Since Respondent’s disputed domain name is identical or confusingly similar to Complainant’s trademark and since it was created after Complainant’s use and registration of its trademark, there is no legitimate basis for Respondent to claim rights in the domain name in dispute. Moreover, it appears that since Respondent’s initial creation of the disputed domain web-site in April 2004, visitors are presented with a single page consisting of a rollover or “redirect” template displaying links to hundreds of other web-sites offering a wide range of competitive financial services. Except for this single template the disputed domain has no other content or function. The Panel finds that such activity is not engaging in legitimate or good faith business.

Two other factors suggest that Respondent is not using the disputed domain site for the conduct of a legitimate business. The unrefuted evidence in this case establishes that on two different occasions, the disputed domain site has gone inactive for a period of time after Complainant notified the Registrar of this objection to the domain name site. Then, after a brief period, the domain name site would reappear with the same web-site template after the Complainant would not agree to pay money for the site. In the Panel’s view such conduct does not reflect a web-site engaged in a legitimate or bona fide offering of services.

The Panel also finds that ownership of a disputed domain name site by an entity engaged in nothing more than linking to other sites is merely a passive holder of the disputed domain name site; and in the context of Respondent’s behavior as noted above, it does not constitute a legitimate business or otherwise confer rights to the domain name in dispute.

6.C Domain Name Registered and Used in Bad Faith

The Complainant has asserted that the Respondent has registered and is using the disputed domain name in bad faith. The Respondent has not denied that assertion.

Complainant has used its trademark, ENT FEDERAL CREDIT UNION, for over fifty years. The trademark was registered prior to the date that Respondent registered the disputed domain name, <entfederalcreditunion.com> and began active use of the domain. A trademark search would have revealed Complainant’s registration. The exercise of reasonable prudence before adopting the disputed domain name would have put the Respondent on notice of Complainant’s trademark rights. The Panel is persuaded that Respondent most likely knew of the existence of Complainant’s mark at the time that it registered the disputed name. The Panel concludes that Respondent registered the disputed domain name in bad faith.

A visitor seeking to locate Complainant, who inadvertently comes to Respondent’s domain name site could easily believe that the site is authorized by or affiliated with the Complainant. They could proceed to do business at one of the many web-sites not affiliate with Complainant to which Respondent’s domain name site redirects them, without ever realizing that they were not, in fact, conducting any business with the authentic ENT FEDERAL CREDIT UNION. In the Panel’s view, this is likely to cause, and it is now causing confusion.

The facts of this case are a virtual classroom model of the practice of acquiring and exploiting domain name sites in bad faith. Respondent has no known active interest under Complainant’s trademark, ENT FEDERAL CREDIT UNION, and it is diverting legitimate business from Complainant. It appears to generate click-through income for Respondent from web traffic at the expense of abusing Complainant’s trademark. The unrefuted evidence clearly suggests that this is the sole function of Respondent’s domain name site. Such activity alone supports a finding of bad faith in registering and using the disputed domain name. See Federal Cartridge Company v. Madmouse Communications, WIPO Case No. D2001-0756.

Further, the Panel finds that Respondent has violated the terms of the Policy web dispute provisions. Paragraph 2 of the Policy requires that the Registrant represent and warrant that it has no knowledge that the registration of the domain name will infringe upon or otherwise violate the rights of any third party. As noted above, the Respondent with reasonable effort should have or could have been aware of Complainant’s rights. Respondent, responding to Policy questions, furnished incomplete or inaccurate information when registering its domain name. This is further indication of bad faith. See McNeil Consumer Brands Inc v. Mirweb, WIPO Case No. D2000-0612.

The Panel finds that under all of the circumstances of this case, Respondent registered and used the disputed domain name in bad faith.

7. Decision

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

John E. Kidd
Sole Panelist

Dated: December 16, 2005