WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The First Stone Inc. v. Credit Master Online Services, Ltd.
Case No. D2007-1507
1. The Parties
The Complainant is The First Stone Inc., of Texas, United States of America, represented by Look Law Firm PLLC, of Arizona, United States of America.
The Respondent is Credit Master Online Services, Ltd., of Cayman Islands, the United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <creditmaster.com> is registered with Signature Domains, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 17, 2007. On October 24, 2007, the Center transmitted by email to Signature Domains, LLC a request for registrar verification in connection with the domain name at issue. On October 24, 2007, Signature Domains, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On October 25, 2007, the Center transmitted to the Complainant by email a notification of deficiency in the Complaint. In response to the notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on October 31, 2007.
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 November 2, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was November 22, 2007. The Response was filed with the Center on November 20, 2007.
The Center appointed John Swinson as the sole panelist in this matter on December 3, 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
The disputed domain name was registered by the Respondent on March 15, 2001.
The Complainant together with its licensee, First Stone Credit Counseling (a non-profit corporation) is in the business of assisting consumers with credit clean-up services, including correcting erroneous credit reporting data.
The Complainant is the registered owner of a US Trade Mark Registration for THE CREDITMASTERS, issued January 2, 2007.
5. Parties' Contentions
The Complainant makes the following arguments:
The Complainant has operated its business of credit clean up services since at least October 1990.
The Complainant's founder, a Mr. Bruce Danielson, is known to consumers as “the creditmaster”.
The Complainant is the registered owner of a US Trade Mark Registration number 3191473 for the mark THE CREDITMASTERS (filed on June 9, 2005 and issued January 2, 2007).
The Complainant has used THE CREDITMASTERS registered mark, and CREDIT MASTER mark for the past 17 years and these marks currently appear on the Complainant's website at “www.firststone.com”.
The Complainant has registered four other domain names which contain the term “creditmaster”, including <thecreditmaster.com>. These websites automatically redirect to the Complainant's main website at “www.firststone.com”.
The disputed domain name, <creditmaster.com>, is virtually identical to the Complainant's THE CREDITMASTERS registered trade mark. The difference between the disputed domain name and the dominant element of the Complainant's registered trade mark is the omission of an “s” and this appears calculated to take advantage of internet users' typing errors, which may lead to customer confusion where the companies are engaged in the same type of business or try to attract the same consumers. The disputed domain name is identical to the Complainant's common law trade mark CREDIT MASTER. The Complainant has acquired common law rights in CREDIT MASTER through long use and promotion for 17 years.
The Respondent operates a website from the disputed domain name which provides links to third party websites. These third party sites compete with the Complainant by providing credit repair, debt counseling and management, bankruptcy and foreclosure assistance and credit report services.
There is no evidence to show that the Respondent had any use of or demonstrable preparations to use the disputed domain name for a bona fide offering of goods or services. There is also no evidence that the Respondent has commonly been known by the disputed domain name.
The Respondent is using the disputed domain name for commercial gain, or to mislead or divert customers away from the Complainant's services offered under the THE CREDITMASTERS and CREDIT MASTER marks. There is no legitimate non-commercial or fair use because the Respondent's website does not mention the Complainant's services, but instead contains links to websites operated by the Complainant's competitors.
The Respondent is using the disputed domain name in bad faith by intentionally attempting to attract for commercial gain, internet users to the Respondent's website, by creating a likelihood of confusion with the Complainant's mark.
The Complainant and the Respondent offer similar types of services, such as credit repair and credit counseling and aim to attract the same type of consumers. Consumers who visit the disputed domain name could easily believe that website is affiliated with the Complainant, or the Complainant is the source of the Respondent's services.
The Respondent contends that the Complainant fails to meet its burden of proof under each element. In particular, the Respondent makes the following arguments:
The Respondent registered the disputed domain name because it contains the descriptive term of “credit master” (descriptive of an expert in credit matters) and it believed no other party could claim exclusive rights to this name. This descriptive term is used by many third parties. The first 300 Google results for a search on “credit master” do not include any reference to the Complainant. This constitutes a legitimate interest of the Respondent.
Many other companies use the term “credit master” in their name, website or name of their product or service. It is inappropriate to give the Complainant a monopoly over a descriptive term.
The Respondent uses the disputed domain name in connection with the bona fide offering of goods and services in the nature of pay-per-click advertisements with “www.DomainSponsor.com”, by which the Respondent receives a share of the revenue earned. The sponsored ads relate to the descriptive meaning of the term “credit master”. This also constitutes legitimate interest of the Respondent.
There is no evidence that the Respondent was aware of the Complainant, its business, website or trade marks when it registered the disputed domain name. It would be impossible for the Respondent to have known of the Complainant's registered trade mark as the trade mark was registered after the Respondent registered the disputed domain name. The Complainant filed its trade mark application four years after the disputed domain name was registered in 2001 (even though the Complainant claims it had been using the trade mark since 1990). It is impossible to prove bad faith registration based on a trade mark that was not in existence at the time the disputed domain name was registered.
The Complainant has not provided any evidence that “credit master” has a secondary meaning, or that consumers associate it exclusively or almost exclusively with the Complainant, in order to establish common law trade mark rights. It would be impossible for the Complainant to prove this because there is substantial third party use of the term “credit master”. As the Respondent did not have knowledge of the Complainant's common law mark, bad faith cannot be proven.
Web page history of the Complainant's website shows that none of the archived website pages used the CREDITMASTER common law mark until at least January 21, 2002, which is a year after the disputed domain name was registered.
The Respondent did not register the disputed domain name with the intent to sell it to the Complainant, to disrupt the Complainant's business or to confuse consumers trying to find the Complainant's website.
Prior to the Respondent obtaining the disputed domain name, the domain name expired, was deleted and became available for anyone to register. This is a signal that any trade mark claim to the disputed domain name was abandoned and it could be registered in good faith.
There is no evidence that the Respondent registered the disputed domain name to capitalise on the Complainant's trade mark so there can be no finding of bad faith.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant asserts common law trade mark rights over CREDIT MASTER (which is identical to the disputed domain name). CREDIT MASTER is a descriptive term, and the Complainant has not provided sufficient evidence to establish that it has acquired a secondary meaning that the public associates the asserted mark with the Complainant's goods and services. (See Amsec Enterprises, L.C. v. Sharon McCall, WIPO Case No. D2001-0083).
The Complainant owns a registered trade mark over THE CREDITMASTERS. The Panel finds that disputed domain name incorporates the main element of the Complainant's THE CREDITMASTERS mark, being “creditmasters”. The word “the” as a common, every day word, is of minor significance and can be ignored.
The dominant element of the Complainant's registered trade mark, “creditmasters”, only differs from the disputed domain name by the addition of an “s”.
The omission of an “s” in the disputed domain name may be a purposeful type of misspelling, particularly as an “s” is often omitted from or added to words to denote the singular or plural. It is a common mistake that consumers are likely to make when entering website addresses. (see InfoSpace.com, Inc. v. Registrar Administrator Lew Blanck, WIPO Case No. D2000-0069; Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415).
The Panel notes that the Respondent registered the disputed domain name prior to the Complainant's trade mark registration (and even prior to the Complainant's trade mark application). Registration of a domain name before the Complainant acquires trade mark rights in a name does not prevent a finding that a domain name is identical or confusingly similar to that trade mark (see for example AB Svenska Spel v. Andrey Zacharov, WIPO Case No. D2003-0527).
The Panel therefore finds that disputed domain name is confusingly similar to the Complainant's registered trade mark of THE CREDITMASTERS, and that the requirements of the Policy, paragraph 4(a)(i), are satisfied.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in the disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(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 non-commercial 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.” (Policy, paragraph 4(c)).”
To succeed on this element, the Complainant must make out an initial prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. If such a prima facie case is made out, the Respondent then has the burden of demonstrating rights or legitimate interests in the domain name.
The Respondent's name is given as Credit Master Online Services, Ltd. It that is so, it therefore appears reasonable that the Respondent may have registered the disputed domain name because it comprises part of its stated company name. The Complainant has not provided indications that the Respondent is not commonly known by the term “credit master”, as an abbreviation of its company name.
The Complainant alleges that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, but instead is using it for commercial gain or to mislead or divert consumers away from the services offered by the Complainant.
The Respondent operates a website which contains links to other websites offering services such as free credit reporting online, credit repair, auto loans and car financing. While these are in the nature of sponsored ads, and the Respondent receives revenue from pay-per-click advertising, the website currently only contains links related to credit services and the more or less descriptive meaning of “credit master”. The Respondent does not appear to be trading off the Complainant's reputation, and by the Complainant's own admission, it does not make any mention of the Complainant or its business.
The term “credit master” could be considered to a considerable extent to be a descriptive term of a person or entity specialising in credit matters. As noted by the Respondent, “credit master” is used by many third parties in relation to the supply of goods or services. Special care should be exercised where one party attempts to acquire exclusive rights in descriptive words (see America Online Inc. v. Media Dial Communications, WIPO Case No. D2001-0799).
The Complainant has not demonstrated that the Respondent at the time of registration of the disputed domain name knew or should have known of the existence of the Complainant's trade mark CREDIT MASTER or THE CREDITMASTERS. Accordingly, there is no evidence suggesting that the disputed domain name was chosen by the Respondent with the intent to profit or otherwise abuse the Complainant's trade mark rights.
The Panel finds that while the Respondent may be profiting from the descriptive meaning of “credit master”, this is apparently without intending to take advantage of any rights the Complainant has in that phrase. See Allocation Network GmbH v. Steve Gregory, WIPO Case No. D2000-0016. The Complainant has not provided any evidence to displace this finding.
The Complainant has failed to make out an initial prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
In view of its finding in the proceeding section, it is not necessary for the Panelist to consider bad faith.
For all the foregoing reasons, the Complaint is denied.
Dated: December 11, 2007