Desert Schools Federal Credit Union v. James F. Brown IV

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 <desertschools.com>.

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 (http://www.desertschools.org) (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 <desertschools.com>.

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 ‘Desertschools.com’ 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 greatdomains.com 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 <desertschools.com>. 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 <desertschools.com> 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

<desertschools.com> 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 <desertschools.com>

within the meaning of paragraph 4(a) of the Policy, the Panel orders that

the domain name <desertschools.com> 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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