The Complainant is USAlliance Federal Credit Union of New York, United States of America, represented by Lackenbach Siegel LLP, United States of America.
The Respondent is Satoshi Shimoshita of Tokyo, Japan. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 6, 2015. On August 7, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 7, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 21, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was September 10, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 11, 2015.
The Center appointed Christopher J. Pibus, David Perkins and Keiji Kondo as panelists in this matter on October 15, 2015. The Panel finds that it was properly constituted. Each member of 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 not-for-profit financial cooperative organized under the rules and regulations of the National Credit Union Administration. It operates a credit union based in the city of Rye, New York, United States of America. The business adopted the name USAlliance in 1966 as a credit union for the employees of International Business Machines Corporation (“IBM”), and was originally located in the IBM cafeteria. In 1998, the Complainant renamed itself as USAlliance Federal Credit Union and began using “USAlliance” as its trademark in connection with banking services including chequing and savings accounts, debit cards, money market accounts, and credit cards and a variety of lending activities. The Complainant currently serves over 80,000 members through a network of 21 branches located in New York, New Jersey, Connecticut and Massachusetts, in the United States of America.
The Complainant asserts common law rights to the name USALLIANCE, and registered trademark rights in the United States of America, as shown below:
U.S. Registration No. 2,526,435, January 8, 2002.
The Complainant has used the USALLIANCE Trademark since at least as early as October 1, 1998.
The Complainant also owns the domain name and has operated a website in association with that domain name since September, 2002.
The disputed domain name was registered on April 17, 2001, and at the time the Complaint was filed the disputed domain name reverted to a website that provided links to third party entities who are competitors of the Complainant as a “click-through” site. 5. Parties’ Contentions A. Complainant Identical or Confusingly Similar
The Complainant relies on its common law rights to USALLIANCE, and its trademark registration for the mark USALLIANCE Design under US Trademark Registration No. 2,526,435.
The Complainant contends that it has used the trade name USAlliance and the trademark USALLIANCE Design (together “USALLIANCE Marks”) since at least as early as October 1, 1998 to identify its banking, loan and financial services. The Complainant has extensively used the USALLIANCE Marks throughout the United States of America, and has developed a significant reputation in the USALLIANCE Marks and its associated services.
The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s registered and unregistered trademarks. The addition of the “.com” designation does not distinguish the disputed domain name from the Complainant’s trademark.
The Complainant also submits that instances of actual confusion among customers have occurred, and a copy of one such compliant is attached as Annex 8 to the Complaint materials. Rights and Legitimate interests
The Complainant contends that there has never been any relationship between the Respondent and the Complainant that would give rise to any license, permission or authorization for the Respondent to use or register the disputed domain name. The Respondent has never been and is not currently commonly known by the disputed domain name. The Complainant further submits that the Respondent is not using the disputed domain name in a bona fide offering of goods and/or services, as the Respondent is operating a click-through site which provides links to third parties who are competitors of the Complainant. Registered and Used in Bad Faith
The Complainant submits that the Respondent has registered and is using the disputed domain name in bad faith because the Respondent must have been aware of the Complainant’s USALLIANCE Marks and services. The Complainant submits that the Respondent is using a confusingly similar website for the purposes of monetary gain through a click-through scheme, which provides links to third party entities (including credit unions) who are not affiliated with the Complainant, and who are in fact direct competitors of the Complainant. The Complainant further contends that the Respondent is interfering with the Complainant’s ability to conduct its business by registering and using a confusingly similar domain name that directs Internet customers to competitors’ websites. Further, the Respondent offered to sell the disputed domain name to the Complainant for USD 75,000 (Annex 12 of the Complaint), which is much higher than its out of pocket expenses. The Complainant contends that the Respondent’s conduct in this respect is further evidence of bad faith under the Policy. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(i) The disputed domain name is identical or confusingly similar to the trademark 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 Panel finds that the Complainant owns registered trademark rights in the trademark USALLIANCE Design by virtue of its US Trademark Registration No. 2,526,435, and also holds common law rights to the name USALLIANCE which date back to 1998. The trademark USALLIANCE Design consists of three parts, but the textual element “USAlliance” is most prominent, and therefore most important in terms of the confusion analysis.
The Panel further finds that the disputed domain name is confusingly similar with the Complainant’s registered trademark USALLIANCE Design and its trade name USAlliance. The disputed domain name is identical to the principal part of the Complainant’s registered trademark, except for the addition of the “.com” designation. This addition does not serve to distinguish the disputed domain name from the trademark in question.
Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Respondent did not file any Response in this proceeding. Accordingly, the statements and evidence submitted by the Complainant are accepted by the Panel as uncontradicted support for the Complainant’s positions and arguments.
The Panel finds that the Respondent is not commonly known by the name USALLIANCE and was clearly never authorized or licensed by the Complainant to use the name.
The Complainant has filed sufficient evidence to support the claim that the Complainant has used the USALLIANCE Design trademark and name since at least as early as October 1, 1998. As a result of this evidence, and with no response from the Respondent to the contrary, the Panel is prepared to accept that the Respondent was likely aware of the Complainant’s trademark and services in the U.S. The Panel can find no evidence on the record to support a finding that the Respondent had a legitimate interest or right in respect of the disputed domain name.
Furthermore, the Panel is prepared to find that the Respondent is not using the disputed domain name in a bona fide manner. The use of a confusingly similar trademark in association with a click-through site which provides links to third parties which are competitors of the Complainant is not evidence of a bona fide offering of services or goods under the Policy.
Accordingly, the Panel finds that the Complainant has satisfied the required under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel finds, on the evidence filed, that the Respondent was likely aware of the Complainant’s trademark rights in USALLIANCE when it registered the disputed domain name on April 17, 2001, and the Panel concludes that the Respondent has acted and is acting in bad faith by attempting to trade on the goodwill and reputation of the Complainant’s USALLIANCE Marks, by operating a click-through website which provides links to third party entities who are competitors of the Complainant. The subject matter which appears on the Respondent’s website at “www.” provides tangible evidence of bad faith. The website is populated with multiple references and links not only to competing financial institutions but to multiple credit unions, the precise type of business in which the Complainant operates. Nothing about the name “USAlliance” on its own points to a connection to credit unions, and these links therefore appear to be connected to the brand significance of the Complainant’s name and trademark.
The only evidence of a response from the Respondent appears in an e-mail exchange which the Complainant has included in its evidence. In this e-mail, the Respondent claims: “I acquired USA with the aim of long term development.” The Panel notes that the Respondent has adopted the unique capitalization employed by the Complainant for its trademark, wherein the upper case “A” serves as a link between the two word components of the mark. This usage is consistent with the conclusion that the Respondent was and is fully aware of the brand significance of the disputed domain name. The Respondent’s claim to “long term development” goals appears to have no foundation.
In these circumstances, the Panel also finds the insistence by the Respondent of payment in the amount of USD 75,000 for the purchase of the disputed domain name to be further evidence of bad faith under the Policy.
Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name , be transferred to the Complainant.
Christopher J. Pibus
Presiding Panelist
David Perkins
Panelist
Keiji Kondo
Panelist
Date: November 9, 2015
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