[Indexed as:
Credit Management v. Collex]
[Indexed as:
Creditconnection.com et al]
WIPO Arbitration
and Mediation Center
Administrative
Panel Decision
Case No. WIPO
D2000-0029
Commenced:
1 February 2000
Judgment:
17 March 2000
Presiding Panelist: Mark V.B. Partridge
Domain name
United States Service mark United States Trademark Uniform Domain
Name Dispute Resolution Policy Confusingly similar Identical Bad
faith use Bad faith registration Insufficient evidence
Complainant is the owner of the mark, CREDIT CONNECTION. Complainant also registered domain name, CREDITCONNECTION.COM. Respondent registered domain name, CREDITCONNECTION.ORG. Complainant alleged that its registered mark and the registered domain name of the Respondent were confusingly similar and that the Respondent registered the name in bad faith.
Held, Name Not to be Transferred to Complainant
Complainant must establish registered domain name is identical or confusingly similar, that the respondent has no legitimate rights or interest in the name, and that the domain name was registered and used in bad faith.
It is clear that the domain names registered by Respondent are identical to the registered trademark owned by Complainant. However, Respondent used the domain name in connection with the bona fide offering of goods or services prior to the dispute. There is also no evidence of an attempt to sell the name for profit or of an attempt to disrupt Complainants business. This is sufficient to avoid a transfer.
The existence of a legitimate dispute concerning the likelihood of confusion can make a case inappropriate for resolution under the Policy. Complainant has offered insufficient evidence to support claim that Respondents use of name is a deliberate attempt to create confusion. There is also insufficient evidence to support claim that the mark at issue is a famous one entitled to broad protection. Complainant is not entitled to relief on the record presented under the standards applicable to this proceeding.
Policies referred to
Uniform Domain Name Dispute Resolution Policy
Registration Agreements referred to
Cases referred to
Adaptive Molecular
Technologies, Inc. v. Pricilla Woodward & Charles R. Thornton, ICANN
Case No. D2000-0006 (February 28, 2000).
1. The Parties
Complainant
is Credit Management Solutions, Inc., located in Annapolis Junction Maryland.
Respondent
is Collex Resource Management, located in Boynton Beach, Florida.
2. The Domain
Name(s) and Registrar(s)
creditconnection.org
creditconnection.net
The registrar
for each is Network Solutions, Inc.
3. Procedural
History
The complaint
was submitted on February 1, 2000. An Amended Complaint was submitted on
February 4, 2000. A timely response was submitted by Federal Express on
February 25, 2000, and received by WIPO on February 28, 2000. Mark V. B.
Partridge was appointed as a single panelist on March 3, 2000.
4. Factual
Background
Based on the
submissions of the parties, the Panel makes the following findings of fact.
Complainant
is the owner, by assignment, of United States Registration No. 1,901,891,
registered June 27, 1995, for the mark CREDIT CONNECTION for "loan financing
services in the field of retail purchase of vehicles." The original registration
was obtained by Lujack Schierbrock Chevrolet Co., Davenport Iowa, based
on an application filed on February 18, 1994, claiming first use on February
5, 1994. The registration, "together with all goodwill," was assigned by
Lujack to Credit Management Solutions, Inc. on March 6, 1998. Copies of
the relevant registration and assignment records were submitted as exhibits.
Complainant
also claims that it has "extensive common law rights" in the CREDIT CONNECTION
for use with "a variety of software solutions and services for automating
consumer credit analysis and decision making in connection with electronically
transmitting credit related transaction between point of origination and
multiple funding sources." No exhibits were submitted by Complaint relating
to the nature and extent of its use of the CREDIT CONNECTION mark.
Finally, Complainant,
through a subsidiary, registered the domain name CREDITCONNECTION.COM with
Network Solutions, Inc. on March 21, 1996. A copy of the registration record
was submitted as an exhibit. Complainant submitted no exhibits relating
to the nature or extent of its web site. Respondent provided an exhibit
showing a portion of Complainant's web site which states in part, "CreditConnection
(patent pending) is the online network service that can electronically
connect your dealership with multiple funding sources nationwide and through
Canada" and "CreditConnection can . . . easily fit into your normal dealership
operations, whether you're a superstore, large mega-dealer, a traditional
dealership, or a smaller independent dealer."
Respondent
is engaged in the sale of credit cards and credit reports to individual
consumers through third parties. It appears that Respondent registered
CREDITCONNECTION.ORG with Network Solutions, Inc. on November 29, 1998,
and registered CREDITCONNECTION.NET on September 2, 1998.
Respondent
has incorporated a Florida corporation called "www CreditConnection Company,"
but has provided no date for that incorporation.
For a time,
Respondent operated commercial web sites at www.creditconnection.net and
www.creditconnection.org. Complainant invoked the prior dispute resolution
policy of Network Solutions, causing respondent=s domain names to be placed
on hold. It appears, however, that respondent continued to use the phrase
"CreditConnection" with its business. According to Complainant, Respondent
now operates a "Credit Connection site" at an alternate url address which
provides "on-line credit and loan services, including assistance with auto
loans." The exhibits provided by Complainant include screens from Respondent's
web site, which show several uses of the phrase "CreditConnection" and
support Respondent's claim that it is engaged in the sale of credit reports
to consumers. The materials also state that Respondent has "familiarity
with auto financing, credit card, mortgage, and consumer financing products."
5. Parties'
Contentions
A. Complainant
Complainant
contends that Respondent's use of the domain names CREDITCONNECTION.ORG
and CREDITCONNECTION.NET is likely to cause confusion in the marketplace,
but acknowledges that it has no evidence of actual confusion.
Complainant
also contends that Respondent has no rights or no legitimate interests
in the domain names at issue. Complainant also asserts that Respondent
had constructive notice of Complainant's trademark registration and that
its registration of its domain names should be viewed as an attempt to
interfere with Complainant's online identity rather than a legitimate business
activity.
Finally, Complaint
claims that the domain names were registered and used in bad faith.
B. Respondent
Respondent
claims that the parties operate in different channels of trade: Complainant's
services are directed to automobile dealers; Respondent=s services are
directed to consumers.
Respondent
also claims that consumers are attracted to its web sites by key words
such as Asecured credit cards, online credit reports, bad credit,@ and
that the Complainant's name had nothing to do with Respondent's performance.
Further, Respondent claims that it had no actual notice of Complainant's
mark.
6. Discussion
and Findings
To obtain
relief under the ICANN Uniform Domain Name Dispute Resolution Policy, Paragraph
4(a) of the Policy requires the complainant to prove each of the following:
(1) that the
domain name registered by the respondent is identical or confusingly similar
to a trademark or service mark in which the complainant has rights; and
(2) that the
respondent has no rights or legitimate interest in the domain name; and
(3) the domain
name has been registered and used in bad faith.
A. Similarity
Between Domain Names and Trademark
In this case,
it is clear that the domain names registered by Respondent are identical
to the registered trademark owned by Complainant. The addition of .net
or .com or the absence of the space between the words is not significant
in determining similarity. We conclude that Complainant has met its burden
of proof on the first prong.
B. Respondent=s
Legitimate Interest In Domain Names.
Under Paragraph
4(c) of the Policy, evidence of a registrant's rights to and legitimate
interest in the domain name includes:
(1) demonstrable
preparations to use the domain name in connection with a bona fide offering
of goods or services prior to the dispute;
(2) an indication
that the registrant has been commonly known by the domain name even if
it has acquired no trademark rights; or
(3) legitimate
noncommercial or fair use of the domain name without intent to divert consumers
or to tarnish the trademark.
It appears
that Respondent satisfies the first of these factors and has sufficient
interest in the domain names to avoid a transfer. The evidence submitted
by Complainant, including Lycos search results and screen shots from Respondent's
web site, shows that Respondent used the domain name in connection with
the bona fide offering of goods or services prior to the dispute.
On the second
factor, Respondent also suggests that it is known by the name "www Credit
Connection Company". Complainant correctly states that state corporate
registration does not in itself create enforceable trademark rights. But
that is not the issue. The incorporation of a name can be evidence of a
legitimate interest in a domain name when it predates the dispute. Here,
we give no weight to this fact, however, because Respondent did not provide
any evidence of the date of incorporation.
Complainant
challenges respondent's use as an attempt to create confusion in the market
place, relying heavily on the traditional likelihood of confusion test.
The materials submitted by the parties, however, present significant factual
issues as to whether Respondent's use is or is not an infringement of Complainant=s
trademark rights, particularly with respect to the scope of Complainant=s
alleged rights and the proximity of the services offered by the parties.
The existence of a legitimate dispute concerning likelihood of confusion
can make a case inappropriate for resolution under the Policy. See Adaptive
Molecular Technologies, Inc. v. Pricilla Woodward & Charles R. Thornton,
ICANN Case No. D2000-0006 (February 28, 2000). Moreover, Complainant has
not submitted sufficient evidence to prove its claim that Respondent's
use of CREDIT CONNECTION is a deliberate attempt to create confusion. Complainant,
for example, has not provided advertising materials or screens from its
own web site to show the exact nature of its use of its trademark and has
not submitted any materials showing the dates of its actual use of the
trademarks. No evidence has been submitted to support its claim that CREDIT
CONNECTION is a famous mark entitled to broad protection, and there is
insufficient evidence on the various other factors to be considered in
determining a likelihood of confusion.
C. Bad Faith
Registration and Use
Under Paragraph
4(b) of the Policy, evidence of bad faith registration and use includes:
(1) circumstances
indicating the domain name was registered for the purpose of resale to
the trademark owner or competitor for profit;
(2) a pattern
of conduct showing an attempt to prevent others from obtaining a domain
name corresponding to their trademarks;
(3) registration
of the domain name for the purpose of disrupting the business of competitor;
or
(4) "by using
the domain name, you have intentionally attempted to attract, for commercial
gain, Internet users to your web site or other on-line location, by creating
a likelihood of confusion with the complainants mark . . ."
We find that
the Complainant has not met its burden of proof on the issue of bad faith
registration and use. There has been no attempt to sell the domain name
for profit. There is no evidence that Respondent engages in a pattern of
registering the trademarks of others as domain names. It does not appear
from the evidence submitted that Respondent registered the domain name
for the purpose of disrupting the business of a competitor. Finally, as
discussed above, the record contains insufficient evidence to establish
that Respondent intentionally attempted to create a likelihood of confusion
with Complainant's mark. Rather, based on the record before us, it appears
that Respondent uses the phrase "CreditConnection" for a bona fide business
which is not directly competitive with Complainant's business.
This decision
should not be construed as a finding that there is no likelihood of confusion
between the parties' respective uses of CREDIT CONNECTION. Rather, there
appears to be a genuine dispute on that issue which can not be resolved
in the context of this proceeding. We merely conclude that Complainant
is not entitled to relief on the record presented under the standards applicable
to this proceeding.
7. Decision
We find in
favor of Respondent and deny Complainant's request for relief under Paragraph
4(i) of the Policy.
Mark V. B.
Partridge
Presiding
Panelist
Date: March
17, 2000
Decision for Respondent.