WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Desert Schools Federal Credit Union v. Symlink Communications, llc
Case No. D2001-0528
1. The Parties
The Complainant is Desert Schools Federal Credit Union, with place of business in Phoenix, Arizona, United States of America (USA).
The Respondent is Symlink Communications, llc, with address in Phoenix, Arizona, USA.
2. The Domain Name and Registrar
The disputed domain name is .
The registrar of the disputed domain names is Network Solutions, Inc., with business address in Herndon, Virginia, USA.
3. Procedural History
The essential procedural history of the administrative proceeding is as follows:
(a) Complainant initiated the proceeding by the filing of a complaint via e-mail, received by the WIPO Arbitration and Mediation Center ("the Center") on April 10, 2001, and by courier mail, received by the Center on April 11, 2001. Payment by Complainant of the requisite filing fees accompanied the courier mailing. On April 13, 2001, the Center transmitted a Request for Registrar Verification to the registrar, Network Solutions (with the Registrar�s Response received by the Center on April 17, 2001).
(b) On April 25, 2001, the Center notified the Complainant of a formal filing deficiency in regard to the identity of the Respondent as advised by the Registrar. On May 1, 2001, the Center received an amendment to the Complaint via e-mail, and on May 3, 2001, the Center received an amendment to the Complaint in hardcopy.
(c) On May 4, 2001, the Center transmitted notification of the complaint and commencement of the proceeding to Respondent via e-mail and courier mail.
(d) On May 28, 2001, the Center transmitted notification to Respondent of its default in responding to the complaint via e-mail.
(e) On June 12, 2001, the Center invited the undersigned to serve as panelist in this administrative proceeding, subject to receipt of an executed Statement of Acceptance and Declaration of Impartiality and Independence ("Statement and Declaration"). On June 13, 2001, the undersigned transmitted by fax the executed Statement and Declaration to the Center.
(f) On June 19, 2001, Complainant and Respondent were notified by the Center of the appointment of the undersigned sole panelist as the Administrative Panel (the "Panel") in this matter. The Center notified the Panel that, absent exceptional circumstances, it would be required to forward its decision to the Center by July 3, 2001. On June 19, 2001, the Panel received an electronic file in this matter by e-mail from the Center. The Panel subsequently received a hard copy of the file in this matter by courier mail from the Center.
The Panel has not received any requests from Complainant or Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties (taking note of Respondent�s default in responding to the complaint). The proceedings have been conducted in English.
4. Factual Background
Complainant claims common law service mark rights in "DESERT SCHOOLS" and "DESERT SCHOOLS FEDERAL CREDIT UNION" (hereinafter the "DESERT SCHOOLS marks"). Complainant has not registered such marks on the Principal Register at the United States Patent and Trademark Office (USPTO). Complainant claims to have first used the DESERT SCHOOLS marks in commerce as early as 1972 in connection with its financial services business in the State of Arizona, USA. Complainant asserts that it is the largest Arizona-based financial institution, with over $1.2 billion in assets, operating 17 credit union facilities in the Phoenix area. Complainant has submitted substantial evidence of its advertisement of the DESERT SCHOOLS marks, inter alia, in publications of general circulation, on printed brochures and in radio broadcasts. Complainant has submitted evidence that it has advertised its services on numerous billboards in the Phoenix area using the DESERT SCHOOLS marks. Complainant has also submitted evidence in the form of Lexis-Nexis news database printouts that major newspapers in its geographical area refer to it by the name "DESERT SCHOOLS". (Complaint, para. 13 & Annexes C-H)
Complainant has since August 2000 maintained an active commercial website at Internet address (id., para. 13.c). According to Complainant, this website receives over 68,000 hits per day (id.).
According to the registrar�s verification response to the Center, dated April 17, 2001, Respondent is the listed registrant of the disputed domain name . The Administrative Contact, at the same address, is "Brown IV, James F.". According to a Network Solutions� WHOIS database printout furnished by Complainant, the record for the disputed domain name was created on August 23, 1998, and was last updated on January 24, 2001 (Complaint, Annex A).
The disputed domain name is directed to an "undeveloped" website (id., para. 13.i).
Complainant has furnished a copy of e-mail correspondence between Ron Amstutz, Vice President of Information Technology of Desert Schools Federal Credit Union and James Brown. On August 21, 2000, Mr. Amstutz wrote:
"Desert Schools Federal Credit Union is interested in purchasing the domain name �D� from you as the registered owner. Please contact me either by email or phone to let me know how much you would be willing to sell it for."
On September 11, 2000, Mr. Brown replied:
"I�m not sure that I am willing to sell it. I�m also not sure how much the domain is worth. Looking at I see that some can go for quite a bit of money.
�
Maybe you can give me an idea on how much you were thinking to offer for it? I�ll poke around on the net and see if I can get a better feel for how much a domain like this is worth.
Thanks,
-jfb"
On September 29, 2000, Complainant via counsel transmitted a cease and desist and transfer demand to Respondent�s Administrative Contact. Counsel stated, inter alia, "Mr. Ron Amstutz contacted you about a possible purchase of your domain name, without first consulting me." New legal counsel for Complainant transmitted a further cease and desist and transfer demand on December 14, 2000, via express mail and first class mail. Complainant indicates that Respondent did not reply to either of the aforesaid demands.
The Service Agreement in effect between Respondent and Network Solutions subjects Respondent to Network Solutions� dispute settlement policy, the Uniform Domain Name Dispute Resolution Policy, as adopted by ICANN on August 26, 1999, and with implementing documents approved by ICANN on October 24, 1999. The Uniform Domain Name Dispute Resolution Policy (the "Policy") requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration (Policy, paragraph 4(a)).
5. Parties� Contentions
A. Complainant
Complainant asserts that it has used the marks "DESERT SCHOOLS" and DESERT SCHOOLS FEDERAL CREDIT UNION" extensively in commerce in Arizona (see Factual Background, supra).
Complainant indicates that the disputed domain name is identical and confusingly similar to the DESERT SCHOOLS marks.
Complainant asserts that Respondent knew or should have known of its marks when it registered the disputed domain name since Respondent�s Administrative Contact lives in proximity to several of Complainant�s facilities, and since Complainant advertises extensively in the geographical area where Respondent is located.
Complainant states that Respondent has no rights or legitimate interests in the disputed domain name because it has no "priority rights" in the name, is not affiliated with Complainant and has not been authorized to use its marks.
Complainant alleges that Respondent registered and has used the disputed domain name in bad faith as evidenced by: (1) its failure to use the name in connection with a developed website, (2) its response to Complainant�s expression of interest in purchasing it and (3) its failure to respond to Complainant�s cease and desist and transfer demands.
Complainant requests the Panel to direct the registrar to transfer the disputed domain name from Respondent to Complainant.
B. Respondent
Respondent did not reply to Complainant�s contentions.
6. Discussion and Findings
The Uniform Domain Name Dispute Resolution Policy (the "Policy") adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999, (with implementing documents approved on October 24, 1999), is addressed to resolving disputes concerning allegations of abusive domain name registration. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy, and the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), establish procedures intended to assure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., paragraph 2(a), Rules).
In this case, the Panel is satisfied that the Center took all steps reasonably necessary to notify the Respondent of the filing of the complaint and initiation of these proceedings, and that the failure of the Respondent to furnish a reply is not due to any omission by the Center.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:
(i) Respondent�s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) Respondent�s domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
Because the Respondent has defaulted in providing a response to the allegations of Complainant, the Panel is directed to decide this administrative proceeding on the basis of the complaint (Rules, paragraph 14(a)), and certain factual conclusions may be drawn by the Panel on the basis of Complainant�s undisputed representations (id., paragraph 15(a)).
Complainant has not registered the DESERT SCHOOLS marks on the Principal Register at the USPTO (Footnote 1).Complainant�s asserted marks do not enjoy a presumption of secondary meaning under federal law. (Footnote 2)
Complainant has not asserted a specific legal basis for the rights it asserts in the DESERT SCHOOL marks. However, the name of a financial services institution is capable of service mark protection as identifying a source of services if it is inherently distinctive or has acquired secondary meaning in a relevant market. Common law rights may arise under the federal Lanham Act or state law (Footnote 3). The geographical extent of consumer recognition of the mark may be limited, and the scope of protection afforded to the mark in the infringement context may accordingly be limited (Footnote 4).
Through evidence of extensive advertising in Arizona and references to the DESERT SCHOOLS marks in regional media coverage, Complainant has made a prima facie showing of rights in the DESERT SCHOOLS marks. Respondent has not disputed the evidence submitted by Complainant, or challenged the legal assertion by Complainant of rights in the DESERT SCHOOLS marks. The Panel is satisfied by the evidence in this proceeding that Complainant, for purposes of this proceeding, has established common law service mark rights in "DESERT SCHOOLS" for use in connection with providing financial services in a geographical area at least encompassing the area in which Respondent is located.
Respondent has registered the domain name . The disputed domain name is identical to Complainant�s "DESERT SCHOOLS" mark (Footnote 5) , adding only the generic top level domain (gTLD) ".com" and eliminating the space between terms. The Panel determines that the domain name is identical or confusingly similar to Complainant�s "DESERT SCHOOLS" mark.
Complainant has met the burden of proving that Respondent is the registrant of a domain name that is identical or confusingly similar to a service mark in which the Complainant has rights, and it has thus established the first of the three elements necessary to a finding that Respondent has engaged in abusive domain name registration and use.
Respondent has demonstrated no use of the disputed domain name other than in connection with responding to an inquiry regarding its sale. Respondent has asserted no fair use or other right in the name and Complainant�s mark. Registration alone does not establish rights or legitimate interests in a disputed domain name within the meaning of paragraph 4(a)(ii) of the Policy. Respondent has not established rights or legitimate interests in the disputed domain name within the meaning of paragraphs 4(a)(ii) and 4(c) of the Policy. Complainant has established the second element necessary to prevail on its claim that Respondent has engaged in abusive domain name registration.
The Policy indicates that certain circumstances may, "in particular but without limitation", be evidence of bad faith (Policy, para. 4(b)). Among these circumstances are (1) that the domain name has been registered or acquired by a respondent "primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [respondent�s] documented out-of-pocket costs directly related to the domain name" (Id., para. 4(b)(i)); and (2) that a respondent has registered the domain name "in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct" (id., para. 4(b)(ii)).
It may reasonably be inferred from the evidence in this proceeding that Respondent was aware of Complainant�s distinctive mark when it registered the disputed domain name. Respondent�s Administrative Contact (with the same address as Respondent) lives in close proximity to Complainant�s facilities, and in the same geographic area in which Complainant undertakes extensive advertising. Respondent has made no use of the disputed domain name. The Panel determines that Respondent registered the name in anticipation of the fact that Complainant would eventually seek to acquire it and contact Respondent. Complainant initiated contact with Respondent regarding the potential purchase of the disputed domain name, and Respondent indicated that the name might be worth a substantial amount if it was sold. In light of the unique character of Complainant�s mark, Respondent�s proximity to Complainant�s facilities, and the lack of an explanation for Respondent�s registration of the disputed domain name, the Panel determines on the evidence before it that Respondent registered the name with the principal intention of selling it to Complainant for an amount in excess of its out-of-pocket expenses directly related to the name. This constitutes bad faith within the meaning of paragraph 4(a)(iii) and 4(b)(i) of the Policy.
Having made the aforesaid determination, the Panel need not consider the additional grounds of bad faith asserted by Complainant.
Complainant has established the third and final element necessary for a finding that the Respondent has engaged in abusive domain name registration and use.
The Panel will therefore request the registrar to transfer the domain name to the Complainant.
7. Decision
Based on its finding that the Respondent, Symlink Communications, llc, has engaged in abusive registration and use of the domain name within the meaning of paragraph 4(a) of the Policy, the Panel orders that the domain name be transferred to the Complainant, Desert Schools Federal Credit Union.
Frederick M. Abbott
Sole Panelist
Dated: July 4, 2001
Footnotes:
1. See Factual Background, supra. (back to text)
2. See 15 USCS � 1057(b) (establishing presumption of exclusive right to use based on registration). (back to text)
3. See, e.g., Century 21 Real Estate v. Billy Sandlin, 846 F.2d 1175 (9th Cir. 1988). (back to text)
4. See J. Thomas McCarthy, 2 McCarthy on Trademarks and Unfair Competition � 26:29 (4th ed. 1996 and updated). (back to text)
5. For purposes of comparing Complainant�s mark and the disputed domain name, the Panel examines only Complainant�s "DESERT SCHOOLS" mark, and does not examine "DESERT SCHOOLS FEDERAL CREDIT UNION". (back to text)
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