WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Credit Management Solutions, Inc. v. Collex Resource Management
Case No. D2000-0029
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)
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
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.
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.
We find in favor of Respondent and deny Complainant's request for relief under Paragraph 4(i) of the Policy.
Mark V. B. Partridge
Date: March 17, 2000