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Societe Nationale de Television France 2 contre Eric Gaucher [2005] GENDND 621 (22 August 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Members Equity PTY Limited v. Unasi Management Inc.

Case No. D2005-0383

1. The Parties

The Complainant is Members Equity PTY Limited, Melbourne, Victoria, Australia, represented by Freehills, Australia.

The Respondent is Unasi Management Inc., Panama.

2. The Domain Names and Registrar

The disputed domain names are <memberequitycards.com>, <memberequitycreditcard.com>, <memberequitycreditcards.com>, <membersequitycard.com>, <membersequitycreditcard.com>, <membersequitycreditcards.com>.

The disputed domain names are all registered with iHoldings.com Inc. d/b/a DotRegistrar.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 13, 2005. On April 13, 2005, the Center transmitted by email to the Registrar a request for registrar verification in connection with the domain names at issue. On April 13, 2005, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant. The Center verified that 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 April 22, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was May 12, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 17, 2005.

The Center appointed Francine Tan as the sole panelist in this matter on June 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.

The language of the proceedings is English.

4. Factual Background

The Complaint is based on the Complainant’s alleged ownership of rights in the mark MEMBERS EQUITY under common law and by virtue of its trademark registrations in Australia (Trade Mark No. 925715 for MEMBERS EQUITY (word) and Trademark No. 961934 for a logo mark comprising the words “Members Equity the Super Funds Bank”, both in Class 36).

The Complainant asserts the following. The Complainant is a well-known Australian company that provides financial and monetary services to the Australian public, including mortgage, personal loan, deposit and saving facilities with credit card facilities. The Complainant has a significant presence in the Australian market and provides its services, including its “Members Equity Mastercard” credit card, by reference to its MEMBERS EQUITY trade mark. The mark has continuously been used since February 2000, in publications, stationery, advertisements and promotional materials, and since 2002, on the “Members Equity Mastercard” credit card.

Evidence was submitted showing the Complainant’s Members Equity Mastercard to be one of Australia’s most popular low budget credit cards, with one of the lowest interest rates in Australia. The Complainant asserts that as a result of its extensive and longstanding promotion and use of its MEMBERS EQUITY trade mark, the Complainant’s name and marks have developed substantial goodwill and recognition.

The Complainant also submitted search results made from attempts to ascertain the nature of the Respondent’s company and business. The attempts to find a listing of the Respondent in the Panama Yellow Pages were unsuccessful. Other attempts were made to obtain information from the domain name <domaincar.com> which is owned by the Respondent, but to no avail. However, at the URL “www.domaincar.com”, a printout from a third party website related to the sale of domain names.

Searches for “Unasi Management” using the GOOGLE search engine only disclosed references to a wide variety of domain names that have been registered by the Respondent. One of the search results showed the Respondent listed in Dot.us’s website as the top most active “.us” “drop catchers” in April 2005.

Apart from the disputed domain names which were registered in the months of March and April 2005, the Respondent also registered the following domain names on March 30, 2005:

<memberzequity.com>
<www-membersequity.com>
<nmembersequity.com>
<memberwequity.com>
<membersequitycom.com>
<membersequity.us>
<memberdequity.com>
<membercequity.com>
<memberaequity.com>
<kmembersequity.com>
<jmembersequity.com>.

A further search on April 5, 2005, however, revealed that these other domain names had expired and were available for purchase. Certain of these expired domain names would, nevertheless, still direct Internet users to websites which exhibited the same characteristics of the disputed domain names. The common characteristics of the websites found at the disputed domain names were: (i) a webpage with a heading of the relevant disputed domain name, (ii) a sub-heading which reads “Here are some related websites for [relevant disputed domain name]”, (iii) a further sub-heading which reads “Sponsored Links”, and (iv) a list of hyperlinks to the websites of third parties including competitors of the Complainant which offer credit cards to the Australian public.

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

(1) Each of the domain names in issue is confusingly similar to the Complainant’s MEMBERS EQUITY trade mark. The omission of the letter “s” from the end of the word “Members” in three of the domain name registrations is an insubstantial difference. Further, given that the Complainant has a strong reputation with respect to its credit card facilities, the addition of the generic word suffixes, i.e. “Credit Card”, “Credit Cards”, “Card” or “Cards”, in fact reinforces the confusing similarity of the domain names with the Complainant’s trade mark.

(2) The Respondent has no rights or legitimate interests in respect of the domain names.

There is no available information about the Respondent, and there is nothing in the content of the websites located at each of the disputed domain names which indicates the existence of any relationship or connection between the Respondent or its business and any of the domain names.

Further, the Respondent should have been aware of the Complainant and its services such that the registration of the domain names was inferentially not prompted by any legitimate need by the Respondent.

(3) The domain names were registered and are being used in bad faith.

The Complainant contends that the third limb of paragraph 4(a) of the Policy is borne out by the Respondent’s conduct, namely, in registering the disputed domain names which contain hyperlinks to competitors’ websites, and also in registering the other expired domain names mentioned above.

The Complainant submits that the following facts provide sufficient basis for their claim that the domain names were registered and are being used in bad faith. Firstly, the Complainant’s name and trade marks are well known in connection with the provision of financial services, in particular credit card facilities. Secondly, there is no connection between the Respondent and the disputed domain names.

The Complainant makes specific reference to the example of bad faith contained in paragraph 4(b)(iv) of the Policy. In this connection, the Complainant submits that the content of the websites located at the disputed domain names is likely to create confusion with the Complainant’s mark, by reason of its reference to “sponsored links” and “related websites”. Further, although the precise nature of the Respondent’s business model is not known, it can be surmised that the Respondent’s conduct was motivated by commercial gain or the prospect thereof.

Another factor which is submitted by the Complainant as relevant in considering the issue of bad faith is the fact that the nature of the disputed domain names is such that the Respondent would not be capable of reasonably using the domain names in good faith.

The Complainant also raised concerns owing to the nature of its business, in particular the use of misleading domain names by third parties for the purposes of hosting websites deigned to encourage customers to disclose confidential banking details.

B. Respondent

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

6. Discussion and Findings

The burden for the Complainant, under paragraph 4(a) of the Policy, is to show all three elements before an order for the transfer of the disputed domain names can be made.

A. Identical or Confusingly Similar

The Complainant has established rights in the trade mark MEMBERS EQUITY, and it is the view of the Panel that the domain names are confusingly similar to the Complainant’s trade mark as they all incorporate MEMBERS EQUITY/MEMBER EQUITY as the first element. The Panel agrees with the Complainant that the omission of the letter “s” in “Members Equity” in some of the domain names is insignificant. The suffix “.com” is incidental to the domain names and cannot serve to distinguish. Further, it is the Panel’s view that the words “card”, “cards”, “creditcard” and “creditcards” will not avoid confusion, and agrees that as these words are directly relevant to the Complainant’s business, the public is likely to assume that the disputed domain names are those of the Complainant or that they are somehow connected to the Complainant’s business.

It is well established in many other panel decisions that descriptive or generic additions, in particular those which relate to the goods or services for which a trade mark is used, do not serve to avoid confusion. (See Time Warner Entertainment Company L.P. v. HarperStephens, WIPO Case No. D2000-1254; America Online, Inc. v. Curtis Woods, WIPO Case No. D2001-0555; Wal-Mart Stores, Inc. v. Walmarket Canada, WIPO Case No. D2000-0150; Dr. Ing. h.c. F. Porsche AG v. Vasiliy Terkin, WIPO Case No. D2003-0888.)

B. Rights or Legitimate Interests

It has been established in numerous panel decisions that generally, the Complainant should only be expected to make a prima facie case under paragraph 4(a)(ii) of the Policy, after which the burden would shift to the Respondent to dispute the Complainant’s allegation. The reason of course is that a respondent would be in the best position to establish, with evidence or other facts within his possession, his rights or interests in the domain names, whereas it would be difficult for a complainant to prove a negative. (See Croatia Airlines d.d. v. Modern Empire Internet Ltd, WIPO Case No. D2003-0455; Neusiedler Aktiengesellschaft v. Vinayak Kulkarni, WIPO Case No. D2000-1769; Dow Jones & Company, Inc., (First Complainant) and Dow Jones LP (Second Complainant) v. The Hephzibah Intro-Net Project, WIPO Case No. D2000-0704.)

The Panel finds that the Complainant has made out a prima facie case. With reference to paragraph 4(c) of the Policy, there is no evidence of any bona fide offering of goods or services corresponding to the domain names, nor any evidence that the Respondent has been commonly known by the domain names. There is no information that reasonably demonstrates any legitimate right on the part of the Respondent to use or incorporate “Members Equity” in its domain name registrations. The directing of Internet traffic to the Respondent’s website and the potential confusion of affiliation with other “sponsored links” and “related websites” is such that the Panel cannot consider the use of the domain names to be legitimate non-commercial or fair use.

In the circumstances, and in the absence of any Response or contrary evidence presented by the Respondent in these proceedings, the Panel concludes that the Complainant has established this element of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists certain factors which, if found by the Panel to be present, shall be evidence of bad faith registration and use. This is not an exhaustive list, and includes:

(i) registration for the primary purpose of selling, renting, or otherwise transferring the domain name to the complainant who is the owner of the trade mark or to a competitor of the complainant, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name; or

(ii) registration for the purpose of preventing the owner of the trade mark from reflecting the mark in a corresponding name, provided the respondent has engaged in a pattern of such conduct; or

(iii) registration primarily for the purpose of disrupting the business of a competitor; or

(iv) intentionally attempting, through the use of the domain name, to attract for commercial gain, Internet users to the website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.

The Complainant relies on the fourth example given above, as evidence of bad faith use and registration in this case. As noted above, a likelihood of confusion exists as the domain names incorporate not only the Complainant’s trade mark but also contains a generic description of the kind of business the Complainant is engaged in. The “sponsored links” provided on the sites to other third party websites including those of the Respondent’s competitors further compound the situation and Internet users would, understandably, be confused as to the source, sponsorship, affiliation, or endorsement of the respective websites.

The Panel is furthermore of the view that the evidence furnished, including that pertaining to the fact that the Respondent appears to be a prolific registrant of domain names, tends to support a finding that the registrations were “for the purpose of preventing the owner of the trade mark from reflecting the mark in a corresponding name” and that the Respondent has “engaged in a pattern of such conduct” (paragraph 4(b)(ii) of the Policy). The inclusion of the reference to “cards” and “credit cards” in the domain names is somewhat indicative that the Respondent has knowledge of the Complainant’s mark and business name. It has been established in other panel decisions that actual or constructive knowledge of a complainant’s rights in a trade mark is a factor supporting a finding of bad faith. (See Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137; Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270). In this case, it can be inferred that the Respondent knew that MEMBERS EQUITY is a trade mark or business name of the Complainant. In not filing any response, the Respondent has not invoked any circumstance which could demonstrate its use and registration of the disputed domain names to be in good faith. In the absence of any evidence suggesting that there are exceptional circumstances for the failure to participate in these proceedings, the Panel will draw the inference that the Respondent is unable to refute the allegations made by the Complainant.

The Panel finds that paragraph 4(a)(iii) of the Policy has been satisfied.

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 names <memberequitycards.com>, <memberequitycreditcard.com>, <memberequitycreditcards.com>, <membersequitycard.com>, <membersequitycreditcard.com>, and <membersequitycreditcards.com> be transferred to the Complainant.

Francine Tan
Sole Panelist

Dated: June 17, 2005