national arbitration forum

 

DECISION

 

CUNA Mutual Insurance Society v. LaPorte Holdings, Inc. c/o Admin

Claim Number:  FA0507000520648

 

PARTIES

Complainant, CUNA Mutual Insurance Society (“Complainant”), is represented by Ariana G. Voigt of Michael Best & Friedrich LLP, 100 East Wisconsin Avenue, Milwaukee, WI 53202.  Respondent is LaPorte Holdings, Inc. c/o Admin (“Respondent”), 5482 Wilshire Blvd #1928, Los Angeles, CA 90036.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <pensionscunamutual.com> and <cunamutal.com>, registered with Nameking.com, Inc.

 

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

 

Houston Putnam Lowry, Chartered Arbitrator, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on July 20, 2005; the National Arbitration Forum received a hard copy of the Complaint on July 22, 2005.

 

On July 22, 2005, Nameking.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <pensionscunamutual.com> and <cunamutal.com> domain names are registered with Nameking.com, Inc. and that Respondent is the current registrant of the names. Nameking.com, Inc. has verified that Respondent is bound by the Nameking.com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On July 27, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 16, 2005 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@pensionscunamutual.com and postmaster@cunamutal.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On August 28, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent.”  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <pensionscunamutual.com> and <cunamutal.com> domain names are confusingly similar to Complainant’s CUNA MUTUAL mark.

 

2.      Respondent does not have any rights or legitimate interests in the <pensionscunamutual.com> and <cunamutal.com>domain names.

 

3.      Respondent registered and used the <pensionscunamutual.com> and <cunamutal.com> domain names in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, CUNA Mutual Insurance Society, is a leading provider of financial services to credit unions and their members worldwide.  Complainant offers lending, protection, financial, employee, and member solutions.  Complainant is a well-recognized provider of insurance, mortgage, and financial services in the credit union marketplace.  Complainant has assets amounting to at least $14 billion and employs over 6,000 workers worldwide. 

 

Complainant has used the CUNA MUTUAL mark in connection with credit union services since 1935.  As a result of Complainant’s widespread, continuous, and prominent use, Complainant’s marks have acquired significant goodwill, wide public recognition, and fame.  Complainant maintains websites at the <cunamutual.com>, <cunamutual.info>, <cunamutual.org>, <cunamutual.biz>, and <cunamutual.us> domain names.  These websites provide substantial amounts of information about Complainant’s services and offer interactive interfaces to allow users to utilize Complainant’s services. 

 

Respondent registered the <cunamutal.com> domain name on September 10, 2002.  Respondent registered the <pensionscunamutual.com> domain name on November 18, 2003.  Respondent is using both domain names to feature links to other businesses purporting to offer financial and insurance services in competition with Complainant.  Respondent receives fees and other income when Internet users click on those links.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

 

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.  The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).

 

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

 

(1)    the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2)    Respondent has no rights or legitimate interests in respect of the domain name; and

(3)    the domain name has been registered and is being used in bad faith.

 

Identical and/or Confusingly Similar

 

Complainant has acquired common law rights in its CUNA MUTUAL mark through widespread, continuous, and prominent use of the mark in association with offering insurance, mortgage, and financial services since 1935.  The Panel holds that registration with the United States Patent and Trademark Office is unnecessary to establish rights in the mark.  See McCarthy on Trademarks and Unfair Competition, § 25:74.2 (4th ed. 2002) (The ICANN dispute resolution policy is “broad in scope” in that “the reference to a trademark or service mark ‘in which the complainant has rights’ means that ownership of a registered mark is not required–unregistered or common law trademark or service mark rights will suffice” to support a domain name complaint under the Policy).  Thus, the Panel concludes that Complainant has established common law rights in the mark by showing that its mark has acquired secondary meaning as a source identifier.  See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of [KEPPEL BANK] in connection with its banking business, it has acquired rights under the common law.”).

 

Absent any evidence to the contrary, this Panel finds Respondent’s <pensionscunamutual.com> and <cunamutal.com> domain names are confusingly similar to Complainant’s CUNA MUTUAL mark.  The <pensionscunamutual.com> mark wholly incorporates Complainant’s mark and adds the generic term “pensions.”  The <cunamutal.com> domain name uses Complainant’s mark, but misspells it by removing the letter “u.”  The Panel holds that neither the addition of a generic term nor the deletion of a letter is sufficient to distinguish Respondent’s domain names from Complainant’s mark.  See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also State Farm Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730 (Nat. Arb. Forum June 15, 2000) (finding that the domain name <statfarm.com> is confusingly similar to the complainant’s STATE FARM mark).

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Absent any evidence to the contrary, this Panel finds Respondent does not have rights or legitimate interests in the <pensionscunamutual.com> and <cunamutal.com> domain names.  Complainant’s assertion establishes a prima facie case and shifts the burden to Respondent.  To meet its burden, Respondent must provide the Panel with evidence that it does have rights or legitimate interests in the disputed domain name.  Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001):

 

Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent.  In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.

 

Id.; see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”).  The Panel will analyze whether Respondent could meet its burden of establishing rights or legitimate interests for purposes of Policy ¶ 4(a)(ii).

 

Respondent is not commonly known by the disputed domain names.  Without a response from Respondent, the Panel accepts as true Complainant’s allegation.  See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence).  Moreover, Respondent’s WHOIS information suggests that Respondent is known as “LaPorte Holdings.”  Therefore, the Panel concludes that Respondent is not commonly known by the disputed domain name and does not have rights or legitimate interests under Policy ¶ 4(c)(ii).  See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).

 

Complainant provides evidence that Respondent benefits from the confusing similarity of the <pensionscunamutual.com> and <cunamutal.com> domain names by displaying links to Complainant’s competitors and receiving pay-per-click fees from confused Internet users who click on these links.  Respondent’s links directly compete with Complainant.  Because Respondent did not respond, the Panel treats Complainant’s arguments as true.  See Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because Respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed.  In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”).  Thus, the Panel concludes that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  See DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services because Respondent is using the domain name to divert Internet users to <visual.com>, where services that compete with Complainant are advertised.”); see also Ultimate Elecs., Inc. v. Nichols, FA 195683 (Nat. Arb. Forum Oct. 27, 2003) (finding that the respondent's “use of the domain name (and Complainant’s mark) to sell products in competition with Complainant demonstrates neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the name”).

 

Consequently, the Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Complainant argues that Respondent is using the <pensionscunamutual.com> and <cunamutal.com> domain names to divert Internet users to websites that feature links to goods and services that compete with Complainant’s and to profit from diverting such Internet users to various websites.  The Panel holds Respondent is creating a likelihood of confusion for its own commercial gain.  The Panel concludes that such use is evidence of bad faith use and registration under Policy ¶ 4(b)(iv).  See Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site); see also MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark).

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <pensionscunamutual.com> and <cunamutal.com> domain names be TRANSFERRED from Respondent to Complainant.

 

  

Houston Putnam Lowry, Chartered Arbitrator, Panelist

Dated: Wednesday, September 7, 2005