Complainant is Steinbach Credit Union Limited of Steinbach, Manitoba, Canada, represented by MLT Aikins LLP, Canada.
Respondent is Vietname Domain Privacy Services of Ho Chi Minh City, Viet Name / Pham Dinh Nhut of Ho Chi Minh City, Viet Nam, self-represented. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with April Sea Information Technology Corporation (the “Registrar”). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on March 5, 2019. On March 5, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 8, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on March 11, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on March 16, 2019.
On March 11, 2019, the Center sent an email in English and Vietnamese to the Parties regarding the language of the proceeding. Complainant requested that English be the language of the proceeding on March 14, 2019. Respondent did not comment on the language of the proceeding by the specified due date.
The Center verified that the Complaint together with 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 and 4, the Center formally notified Respondent in English and Vietnamese of the Complaint, and the proceedings commenced on March 19, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 8, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 9, 2019. On April 16, 2019, Respondent submitted an informal email asking about the status of the proceeding.
The Center appointed Robert A. Badgley as the sole panelist in this matter on April 23, 2019. 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 is a credit union in Canada, and has been operating for more than 70 years. Complainant holds various registered trademarks, including Canadian Registration No. TMA577727 for the mark SCU STEINBACH CREDIT UNION, registered on March 20, 2003.
The Domain Name was registered on June 9, 2004. The Domain Name resolves to a very rudimentary website which contains seven hyperlinks, such as “Credit Union Bank,” “Credit Union,” and “Rbc Canada”. 5. Parties’ Contentions A. Complainant
Complainant asserts that it has established the three elements required under the Policy for a transfer of the Domain Name. B. Respondent
Respondent has not replied to Complainant’s contentions. 6. Discussion and Findings 6.1 Language of Proceedings
Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. The Registrar confirmed that the Registration Agreement for the Domain Name is in Vietnamese.
The Complainant requested that English be the language of the proceeding on the ground that the contents of the website associated with the Domain name is in English. The Respondent did not object the Complainant’s language request nor respond to the Complaint.
Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English. 6.2 Substantive Issues
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel concludes that Complainant has rights in the mark SCU STEINBACH CREDIT UNION through registration and use demonstrated in the record. The Panel concludes further that the Domain Name is confusingly similar to that mark. The only difference between the Domain Name and the mark (after disregarding, as is proper and customary, the generic Top-Level Domain “.com”) is the abbreviation “scu” which precedes the text “steinbach credit union”. Because the abbreviation refers to the text “steinbach credit union” it does not impact the confusing similarity between the Domain Name and the Complainant’s trademark.
Complainant has established Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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 concludes that Respondent has no rights or legitimate interests in respect of the Domain Name. Respondent has not come forward to explain its bona fides in connection with the Domain Name. Respondent’s website merely contains several hyperlinks, some of which appear related to banking and credit union services, i.e., the core business activity of Complainant under its SCU STEINBACH CREDIT UNION mark. This is not a legitimate use of the Domain Name.
Complainant has established Policy paragraph 4(a)(ii). C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that Respondent has registered and used the Domain Name in bad faith. The Panel finds it likely that Respondent had Complainant’s mark in mind when registering the Domain Name. The selection of a Domain Name with the proper noun “steinbach” and the generic term “credit union” is almost certainly no coincidence.
The Panel also finds bad faith use of the Domain Name within the meaning of Policy paragraph 4(b)(iv), quoted above. It is reasonable to infer that Respondent derives commercial gain through its click-through links, some of which pertain to credit unions and banks. It is apparent from the undisputed record here that Respondent has sought to derive commercial gain by engendering consumer confusion between the Domain Name and Complainant’s mark.
Complainant has established Policy paragraph 4(a)(iii). 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 Domain Name be transferred to Complainant.
Robert A. Badgley
Sole Panelist
Date: April 23, 2019
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