WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Community America Credit Union v. Yorkshire Enterprises Limited / Whois Privacy Services Pty Ltd
Case No. D2010-1620
1. The Parties
The Complainant is Community America Credit Union of Kansas, United States of America, represented by Sughrue Mion, PLLC, United States of America (the “United States”).
The Respondent is Yorkshire Enterprises Limited of Antigua and Barbuda / Whois Privacy Services Pty Ltd. of Australia.
2. The Domain Name and Registrar
The disputed domain name <communityamericacreditunion.com> is registered with Fabulous.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 24, 2010. On September 24, 2010, the Center transmitted by email to Fabulous.com a request for registrar verification in connection with the disputed domain name. On September 28, 2010, Fabulous.com transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 29, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on September 29, 2010.
The Center verified that the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 September 30, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was October 20, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 25, 2010.
The Center appointed Adam Taylor as the sole panelist in this matter on November 3, 2010. 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 is a credit union chartered under the laws of Missouri with a principal place of business in Kansas, United States of America. The Complainant’s predecessor in title was founded on March 19, 1940. The Complainant has been trading under its present name “Members America Credit Union” since 1998.
The Complainant provides a range of financial and banking services. As of December 31, 2009, the Complainant had approximately US $1.8 billion in assets, ranking it the nation's 63rd largest credit union of the nearly 7,000 federally insured credit unions in the United States. The Complainant is the ninth largest credit union in the Midwestern United States. It has 32 branches in the Kansas City, St. Louis and Topeka areas. The Complainant’s advertising and promotion for the period January to December 2009 exceeded US $6 million.
The Complainant owns United States trade mark registrations 2169330 (dated April 11, 1997) and 2866315 (dated June 17, 2003) for COMMUNITY AMERICA CREDIT UNION (plus logo).
The disputed domain name was registered on January 13, 2004.
As of September 29, 2010, the disputed domain name resolved to a website consisting of sponsored links to financial services websites including competitors of the Complainant.
5. Parties’ Contentions
Identical or Confusingly Similar
By virtue of its long and extensive use, the COMMUNITY AMERICA CREDIT UNION mark has become well-known, and it is one of the best known trade marks in the credit unions field. The mark is well recognized as a symbol of the highest quality in credit union services. A Google search for the term returns only results for the Complainant, showing that the Complaint is well-known.
By virtue of the Complainant’s long use and the renown of the Complainant’s COMMUNITY AMERICA CREDIT UNION mark, this mark is associated exclusively with the Complainant.
The disputed domain name is identical to and confusingly similar to the Complainant’s mark.
Rights or Legitimate Interests
The Respondent has no rights or legitimate interests in the disputed domain name based on the Complainant’s continuous and long prior use of its mark and trade name COMMUNITY AMERICA CREDIT UNION.
None of the situations described in paragraph 4(c) of the Policy can be established in this case.
The Respondent cannot conceivably claim to have been unaware of the well-known COMMUNITY AMERICA CREDIT UNION trade mark, or the fact that the mark is owned by Complainant. Nor can the Respondent deny that it lacked permission or authorization to use COMMUNITY AMERICA CREDIT UNION as part of a domain name or in any other way.
The Complainant is the only entity known as COMMUNITY AMERICA CREDIT UNION.
Moreover, the Respondent is not making legitimate non-commercial or fair use of the disputed domain name “without intent for commercial gain.” The domain name resolves to a website where sponsored links to competing credit unions are listed.
The Respondent does not use the disputed domain name to make a bona fide offering of goods or services. The Respondent uses the disputed domain name to attract Internet users and then diverts them to competitive services.
In short, the Respondent has no rights or legitimate interest in the disputed domain name.
Registered and Used in Bad Faith
The Respondent registered the disputed domain name in bad faith.
The Respondent chose the disputed domain name with full knowledge of the Complainant’s rights therein. At the time the Respondent registered disputed domain name, the Respondent was also on constructive notice of Complainant’s well-known mark.
Nor could the Respondent’s selection of the disputed domain name have been in anything other than bad faith; there is no reason for the Respondent to use COMMUNITY AMERICA CREDIT UNION except to attract consumers to its website to generate income from the sponsored links on its website. The Respondent purposely registered the disputed domain name for commercial gain. By diverting customers to its website, the Respondent has registered the disputed domain name in bad faith. While it is not clear if the Respondent chose the advertisements appearing on the parking page that is of no relevance. Certainly, the Respondent knowingly agreed to register the disputed domain name with a company that provides parking pages and that provides sponsored links on those parking pages. Further, it cannot be disputed that the Respondent was aware that the parking company would generate advertisements of some sort at the website associated with the disputed domain name and that the Respondent would benefit from this advertising. There is little doubt that the Respondent and/or the parking company are commercially benefitting from the use of Complainant's trademark. This satisfies the requirements of paragraph 4(b)(iv) of the Policy.
As yet further evidence of the Respondent’s bad faith registration, the Respondent has been involved in a number of other UDRP proceedings and in all of those cases, the relevant domain names have been transferred to Complainant. See Hilton Worldwide, et al. v. Whois Privacy Service Pty. Ltd., WIPO Case No. D2010-1067); Intelius Inc. v Yorkshire Enterprises Ltd., NAF Claim No. 1336980); American Airlines v. Yorkshire Enterprises Ltd., NAF Claim No. 1302679; BHP Billiton Innovation Pty. Ltd. Yorkshire Enterprises Ltd. and Whois Privacy Services Pty Ltd, WIPO Case No. D2009-1558; BHP Billiton Innovation Pty. Ltd. Yorkshire Enterprises Ltd., WIPO Case No. D2008-1937; Reebok International Limited v. Yorkshire Enterprises Limited., WIPO Case. No. D2008-1839. In each of these cases, the panelist found that the subject domain name had been registered in bad faith. The Respondent has therefore engaged in a pattern of bad faith registration and use under paragraph 4(b)(ii) of the Policy.
Moreover, the disputed domain name was originally registered in proxy. In other proceedings, this has been found to be bad faith use and registration where the respondent has a history of abusing domain names as the Respondent does here.
The Respondent’s registration of the disputed domain name is intended to and will confuse the relevant purchasing public into believing Complainant maintains, or has approved, endorsed or is the sponsor of, or is otherwise associated with the Respondent.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has established common law rights in the mark COMMUNITY AMERICA CREDIT UNION arising from its extensive use in the United States since 1998.
The disputed domain name is identical to the Complainant’s mark, disregarding the domain name suffix.
The Complainant has therefore established the first element of the Policy.
B. Rights or Legitimate Interests
The Complainant must establish at least a prima facie case under this heading and, if that is made out, the evidential onus shifts to the Respondent to rebut the presumption of absence of rights or legitimate interests thereby created. See, e.g., Atlas Copco Aktiebolag v. Accurate Air Engineering, Inc., WIPO Case No. D2003-0070.
The Complainant has not licensed or otherwise authorized the Respondent to use its trade mark.
As to paragraph 4(c)(i) of the Policy, the Panel has concluded below that the Respondent has used the disputed domain name to intentionally attempt to attract, confuse and profit from Internet users seeking the Complainant’s products and services. Such use of the disputed domain name could not be said to be bona fide.
There is no evidence that paragraphs 4(c)(ii) or (iii) of the Policy apply.
The Panel finds that the Complainant has established a prima facie case of lack of rights and legitimate interests and there is no rebuttal by the Respondent.
The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of the Policy.
C. Registered and Used in Bad Faith
The Panel has little difficulty in concluding that the disputed domain name was registered and used in bad faith.
Given the identity between the disputed domain name and the Complainant’s distinctive mark, the Respondent’s use of the domain name for a website with sponsored links to the Complainant’s competitors and the Respondent’s track record as a losing respondent in many UDRP cases, it is obvious that that the Respondent registered the disputed domain name with the Complainant’s trade mark in mind.
The Panel concludes that the Respondent has registered and used the disputed domain name in bad faith in accordance with paragraph 4(b)(iv) of the Policy. The Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trade mark.
The Panel therefore finds that the Complainant has established the third element of the Policy.
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 <communityamericacreditunion.com> be transferred to the Complainant.
Dated: November 17, 2010