WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Telhio Credit Union, Inc. v. Braden McParlin
Case No. D2007-1224
1. The Parties
The Complainant is Telhio Credit Union, Inc., of Columbus, Ohio, United States of America, represented by Vorys, Sater, Seymour and Pease, LLP, also of the United States of America.
The Respondent is Braden McParlin, of Columbus, Ohio, United States of America.
2. The Domain Names and Registrars
The disputed domain names are:
<telhio.biz>; <telhiocreditunion.org>; <telhio.info>; <telhioloan.com>; <telhioloanonline.com>; <telhioloanonline.org>; <telhioloan.org>; <telhiomortgage.biz>; <telhiomortgage.com>; <telhiomortgage.info>; <telhiomortgage.net>; <telhiomortgage.org>.
Each of the disputed domain names is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (“Center”) on August 18, 2007. On August 22, 2007, the Center transmitted by email to GoDaddy a request for registrar verification in connection with the domain names at issue. On August 22, 2007, GoDaddy transmitted by email to the Center its verification response, which confirmed that Respondent is listed as the registrant, provided contact information for the administrative and technical contacts, and confirmed several details of the registration agreement for each of the domain names. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (“Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“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 August 28, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was September 17, 2007. The Response was filed with the Center by September 17, 2007. In addition to the September 17, 2007 Response, Respondent formally adopted and included in his Response an August 20, 2007 communication that had been sent to the Center by email before the proceedings formally commenced.
The Center appointed Debra J. Stanek as the sole panelist in this matter on October 8, 2007. 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
Complainant uses the trademarks: TELHIO and TELHIO CREDIT UNION for a variety of banking and financial services, including checking and savings accounts, mortgage lending, loans, credit cards, savings vehicles, and other services. It has provided services under the name “Telhio Credit Union” for the last 30 years. Complainant owns two Ohio state trademark registrations, one for the mark TELHIO CREDIT UNION for credit union services, and another for the mark TELHIO RENT TO BUILD for financial services.
Complainant has also registered several “telhio” domain names, including <telhio.org>, <telhio.net>, and <telhio.com>, the latest of which was registered in 2001.
Respondent registered the twelve disputed domain names while he was employed by Complainant. The webpages at the domain names at issue presently resolve to parked pages. Prior to being parked, each redirected visitors to the same web page, which included the statement: “domain name clearance sale” and requested that purchase bids be sent to a specified email address.
5. Parties’ Contentions
Complainant makes the following contentions:
Each of the disputed domain names is either identical or confusingly similar to Complainant’s marks.
Complainant is a credit union located in Columbus, Ohio. Since 1935, Complainant has offered credit union services to telephone company employees in Ohio under the name Columbus Telephone Employees Credit Union. In 1977, Complainant changed its name to Telhio Credit Union and continued to offer those same services under the marks: TELHIO and TELIO CREDIT UNION. Currently, Complainant offers a variety of financial and banking services, including a number of online transactions.
Complainant owns two state trademark registrations for its “telhio” marks: TELHIO and TELHIO RENT TO BUILD.
As a result of its long-time use, Complainant has strong and well-established common law rights in its TELHIO mark, conceding that the term “credit union” is generic and lacks trademark significance apart from the mark as a whole.
The disputed domain names are either identical or confusingly similar to Complainant’s marks because all incorporate Complainant’s TELHIO mark. Three consist of TELHIO or TELHIO CREDIT UNION (along with a generic top-level domain) and the other nine consist of TELHIO followed by generic financial terms such as “loan,” “mortgage,” and “online loan,” which encompass services offered by Complainant.
Respondent has no rights or legitimate interests in the disputed domain names.
Respondent was Complainant’s employee at the time he registered the disputed domain names. All but one of the registrations show Respondent’s work email address and include Complainant’s telephone and fax numbers. While Respondent was employed by Complainant, Complainant offered Respondent funds for advertising and promotional use, subject to prior approval by Respondent’s superiors. Respondent registered the disputed domain names without Complainant’s knowledge or approval. Respondent’s registration violated various policies of Complainant, at least one of which Respondent acknowledged receiving in the course of his employment.
After learning of the registrations, Complainant advised Respondent of its policies, offered to reimburse Respondent for the cost of the registrations, and requested that they be transferred to Complainant; however, Respondent refused to do so and subsequently left Complainant’s employ.
Complainant did not authorize Respondent’s registration of the domain names.
In light of Complainant’s long-standing trademark rights, Respondent cannot claim to be known by the name “Telhio.”
Respondent has registered and is using the disputed domain names in bad faith because:
(1) Respondent registered the disputed domain names with actual knowledge of Complainant’s rights in its TELHIO and TELHIO CREDIT UNION marks.
(2) After leaving Complainant’s employ, Respondent has refused to transfer the domain names, asserting that because he registered them with his personal funds, he had a right to register them.
(3) Respondent has not directly responded to Complainant’s cease and desist letter. Instead, Respondent’s brother contacted Complainant, suggesting that any transfer be treated as arm’s length transaction and subsequently ascribing a value of $39,450 to the domain names.
(4) Respondent’s registration of 14 domain names1 that consist of variants of Complainant’s TELHIO mark demonstrates a pattern of conduct of registering domain names that prevent Complainant from reflecting its mark in a corresponding domain name.
Respondent makes the following contentions:
Complainant does not own any federal trademark registrations. Complainant provides services only to members of its credit union and its mark is not widely recognized.
Complainant’s mark consists of an acronym that includes a term that is supposedly similar to the “Ohio.”
Respondent registered the disputed domain names in good faith with the intention of increasing the number of mortgage leads to Complainant, as evidenced by his use of Complainant’s telephone and fax numbers in the registrations. Consistent with Complainant’s reimbursement policies, Respondent paid the registration fees and sought reimbursement from Complainant. Complainant repeatedly refused to reimburse Respondent for the cost of the registrations. This refusal was discriminatory and without explanation. For that reason, Respondent never transferred the domain names to Complainant as he had originally intended.
Respondent never received Complainant’s cease and desist letter. Moreover, the fact that Complainant did not take issue with the registrations during Respondent’s employment establishes that Respondent did not violate any of Complainant’s policies.
Respondent is not using the domain names; therefore, Complainant’s business cannot have been disrupted.
The “valuation analysis” of $39,450 sent to Complainant was not an offer to sell the domain names. It was sent in response to a request from Complainant’s counsel for the “price” of the domain names and was “an attempt to establish a fair range of value for the benefit of Complainant and Respondent based on … discussions of potential ways to resolve the dispute.” The disclosure of the confidential information contained in the valuation analysis shows Complainant’s bad faith.
6. Discussion and Findings
In order to prevail, Complainant must prove, as to each of the disputed domain names, that:
(i) The disputed domain name is identical or confusingly similar to Complainant’s mark.
(ii) Respondent has no rights or legitimate interests in respect to the disputed domain name.
(iii) The disputed domain name has been registered and is being used in bad faith.
Policy, paragraph 4(a). The Policy sets out examples of circumstances that may evidence a Respondent’s rights or legitimate interests in a domain name, see Policy, paragraph 4(c), as well as circumstances that may evidence a Respondent’s bad faith registration and use, see Policy, paragraph 4(b).
A. Identical or Confusingly Similar
As an initial matter, the Panel finds that the evidence of state trademark registrations provided by Complainant does not – standing alone – establish Complainant’s rights in its “Telhio” marks for purposes of these proceedings. Consistent with the consensus view, the Panel finds that U.S. state registrations, which are not subject to the same level of scrutiny as federal trademark registrations, and may in some states be granted automatically, are not entitled to the same deference afforded to a federal trademark registration. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Paragraph 1.1.
Notably, Complainant has not provided evidence regarding length of use and amount of sales, the nature and extent of its advertising, consumer surveys, or media recognition, that would establish trademark rights in a mark that is not registered. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Paragraph 1.7 (consensus view requires complainant to show that an unregistered mark has become a distinctive identifier associated with complainant or its goods and services, such as by providing evidence of length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition).
Apart from its state registrations, Complainant has provided little evidence establishing its rights. The evidence consists primarily of documentation relating to the change of its corporate name to “Telhio Credit Union” and printouts of pages from its “telhio” websites. On balance, however, the Panel finds that these do establish Complainant’s use of and rights in the marks TELHIO and TELHIO CREDIT UNION.
Complainant has also established that each of the disputed domain names is identical or confusingly similar to its marks.
The <telhio.biz> and <telhio.info> domain names are identical to Complainant’s TELHIO mark; in considering identity, the top-level domains are not relevant. For the same reason, the <telhiocreditunion.org> domain name is identical to Complainant’s TELHIO CREDIT UNION mark (the omission of spaces between words is also not relevant).
Each of the other disputed domain names includes Complainant’s TELHIO mark in its entirety followed by a generic term – “loan”, “loan online”, or “mortgage.” Those generic terms simply reinforce the trademark function of the TELHIO mark, as consumers are likely to understand that each of these disputed domain names offer a connection to Complainant and its services. Therefore, each of those is confusingly similar to the TELHIO mark.
The Panel concludes that each of the disputed domain names is identical or confusingly similar to Complainant’s marks.
B. Rights or Legitimate Interests
The Panel, consistent with the consensus view, finds that Complainant may establish that Respondent has no rights or legitimate interests in respect of the domain names by making a prima facie showing that respondent lacks rights or legitimate interests. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Question 2.1 (once complainant makes a prima facie case, respondent has burden of showing rights or legitimate interests in the domain name).
Paragraph 4(c) of the Policy sets out the following examples:
(i) before any notice to you of the dispute, your 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; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel finds that Complainant has made a prima facie showing as to the examples set out in Paragraph 4(c) of the Policy.
The Response does not argue that Respondent has rights or legitimate interests in any of the domain names by virtue of any of the circumstances set out in paragraph 4(c) of the Policy. Under the circumstances presented here, the Panel finds that Respondent’s registration of these domain names – even if done on his own initiative and at his own expense – does not give him, personally, any rights or legitimate interests in the disputed domain names.
C. Registered and Used in Bad Faith
Complainant must establish that the disputed domain name has been registered and is being used in bad faith. The Policy itself sets out four sets of circumstances, evidence of which can establish bad faith registration and use, see Policy, paragraph 4(b)(i)-(iv):
(1) Registering the domain name primarily to sell it for more than documented out-of-pocket costs, see Policy, paragraph 4(b)(i).
(2) Registering the domain name to prevent the owner of the trademark from reflecting the mark in a domain name, where there is a pattern of such conduct, see Policy, paragraph 4(b)(ii).
(3) Registering the domain name primarily to disrupt the business of a competitor, see Policy, paragraph 4(b)(iii).
(4) Using the domain name to intentionally attempt to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with complainant's mark as to the source, sponsorship, affiliation, or endorsement, see Policy, paragraph 4(b)(iv).
The examples set out in paragraph 4(b) are not exhaustive. There is no dispute that Respondent was Complainant’s employee at the time the disputed domain names were registered. The Panel finds that Respondent was not authorized to register or use any of the domain names under his own name. Respondent’s assertions that he intended to transfer the domain names to Complainant but did not do so only because Complainant unreasonably refused his request for reimbursement are not supported by any documentary evidence and, under these circumstances, are suspect. Moreover, Respondent provides no plausible explanation for having registered the disputed domain names in his own name in the first instance. It seems more likely that Respondent sought to exploit the fact that Complainant had not already registered these additional variants of the “telhio” domain names. The Panel finds that conclusion supported by the fact that all of the domain names directed visitors to a web page that offered them for sale and by the fact that Respondent’s representative sought to treat the transfer of the domain names as involving an analysis of their value rather than Respondent’s actual out-of-pocket costs.
It seems obvious that Respondent was aware that his registrations would prevent Complainant from reflecting its mark in the corresponding domain names. Consistent with the consensus view, the Panel finds that the registration of twelve such domain names establishes a pattern of such conduct. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Question 3.3 (pattern of conduct may a single case where respondent has registered multiple domain names, generally more than two, which are similar to known trademarks).
Under these circumstances, the Panel finds that Respondent has registered and used the domain names in bad faith.
For all the foregoing reasons, in accordance with Paragraph 4(i) of the Policy and Paragraph 15 of the Rules, the Panel orders that each of the domain names:
<telhio.biz>; <telhiocreditunion.org>; <telhio.info>; <telhioloan.com>; <telhioloanonline.com>; <telhioloanonline.org>; <telhioloan.org>; <telhiomortgage.biz>; <telhiomortgage.com>; <telhiomortgage.info>; <telhiomortgage.net>; <telhiomortgage.org>
be transferred to the Complainant.
Debra J. Stanek
Dated: October 22, 2007
1 The Complaint alleges that Complainant has also registered <telhio.us> and <telhiomortgage.us>.