DECISION

American Credit Union Buyers Association Inc. v. Acuba Ltd.

Claim Number: FA0306000164306

PARTIES

Complainant is American Credit Union Buyers Association Inc., Mathews, AL, USA (“Complainant”) represented by Robert Willingham. Respondent is Acuba Ltd., Skirlaugh, GB (“Respondent”) represented by Christopher Turner.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <acuba.com>, registered with Melbourne IT, Ltd. d/b/a Internet Names Worldwide.

PANEL

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

Alan L. Limbury as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on June 13, 2003; the Forum received a hard copy of the Complaint on June 18, 2003.

On June 16, 2003, the Registrar confirmed by e-mail to the Forum that the domain name <acuba.com> is registered with Melbourne IT, Ltd. d/b/a Internet Names Worldwide and that Respondent is the current registrant of the name. The Registrar has verified that Respondent is bound by the Registrar’s 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 June 19, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 9, 2003 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@acuba.com by e-mail.

A timely Response was received and determined to be complete on June 21, 2003.

On July 3, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Alan L. Limbury as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Complainant contends the disputed domain name is either identical or confusingly similar to its U.S. registered trademark No. 2721566 ACUBA in International Classes 16 and 35.

That registration was effected on June 3, 2003. Complainant had originally registered the same mark in those classes on May 18, 1993 (U.S. Registration No. 1771418), claiming first use in commerce on May 26, 1992.  That registration had been cancelled on December 23, 2000 because Complainant’s application for renewal did not meet legislative requirements. Hence a fresh registration application was made.

Complainant’s ACUBA mark is well known and enjoys a strong reputation. In addition, Complainant has registered the domain name <acuba.org>.

Respondent has no rights or legitimate interests in the disputed domain name. No evidence indicates the existence of any of the circumstances contemplated by any of the sub-paragraphs of section 4(c) of the Policy, by which a Respondent may demonstrate such rights or legitimate interests.

Respondent registered the disputed domain name in bad faith.  Respondent contacted Complainant and offered to transfer the disputed domain name for £1,500 sterling, well in excess of its reasonable costs associated with the domain name. Further, after being informed of Complainant’s position, Respondent changed the Whois information in the Registrar’s database by removing all verifiable contact information and has not responded further to Complainant’s letters.

B. Respondent

Respondent Acuba Limited was registered as a United Kingdom company on October 21, 1997 (Registration No. 3453239). It is a legitimate electronics company operating and well known in the West Riding of Yorkshire, England. The company uses its name Acuba Limited.

The disputed domain name was registered on April 24, 1998. The email account for acuba.com is active and in use.  Until the summer of 2002 there was a website and there are intentions of republishing the site.

At no stage has anyone contacted Christopher Turner, Managing Director of Respondent, with an offer of £1,500 for the disputed domain name.

The Whois information shows the name of Respondent and its address, where Mr. Turner has lived for over 20 years. He has not received any correspondence from Complainant.

It has taken Complainant 5 years to show any interest in the disputed domain name. Respondent is prepared to continue to trade as ACUBA Limited and will use acuba.co.uk.   It will transfer the disputed domain name to Complainant for £1,500.

FINDINGS

Complainant has failed to establish all three elements of its case.

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”

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;

(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

The disputed domain name is clearly identical to Complainant’s trademark, since the generic top-level domain (gTLD) “.com” is inconsequential: Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the gTLD “.com” after the name POMELLATO is not relevant); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127.

Complainant has established this element of its case.

Rights or Legitimate Interests

When the disputed domain name was registered on April 24, 1998, Complainant was the registered proprietor of the U.S. trademark ACUBA and Respondent was a U.K. company named and trading as Acuba Limited.

There is nothing to suggest that, when it registered the disputed domain name, Respondent, in the U.K., was aware or had any reason to be aware of the existence of the U.S. Complainant, American Credit Union Buyers Association Inc. nor of its trademark, the acronym ACUBA.

In addressing paragraph 4(c)(ii) of the Policy, Complainant asserts:

“No evidence indicates that Respondent has been known, commonly or otherwise, by the Domain Name or any name corresponding to the Domain Name”.

However, the disputed domain name has been registered since 1998 in the corporate name of Respondent, Acuba Limited. This strongly suggests that, if Respondent is a real U.K. company named Acuba Limited, it has rights and legitimate interests in the disputed domain name: VeriSign Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000) (finding that Respondent has rights and a legitimate interest in the domain name since the domain name reflects Respondent’s company name).

Complainant has not produced the results of any search of the U.K. register of companies, which would reveal whether or not Respondent is a real company. Respondent, through its Managing Director, on letterhead headed ACUBA and displaying the email address <sales@acuba.com>, has asserted that Respondent is incorporated and registered under the name Acuba Limited and that since 1997 it has been known in the U.K. and has been trading under that name. Although Respondent has not demonstrated this by producing a copy of its certificate of incorporation, the Panel finds that Complainant, which bears the onus of proof of the absence of rights or legitimate interests on the part of Respondent, has failed to establish even a prima facie case, which would shift the burden to Respondent to show by concrete evidence that it does have rights or legitimate interests in that name: Do The Hustle, LLC v. Tropic Web (WIPO Case No. D2000-0624) and the cases there cited. See also Lush LTD v. Lush Environs, FA 96217 (Nat. Arb. Forum Jan. 13, 2001) (finding that even when Respondent does file a Response, Complainant must allege facts which, if true, would establish that Respondent does not have any rights or legitimate interests in the disputed domain name).

Complainant has failed to establish this element of its case.

Registration and Use in Bad Faith

On September 16, 2002, Complainant’s “web hosting service/representative”, eimperial.com, sent an email addressed to <support@hotchilli.com> and headed “trademark infringement”, saying “Please note that acuba is a US trademark held since May 18, 1993”. The email ordered the recipient to cease and desist from using the disputed domain name and to “provide full control of the domain in favor of the trademark holder”, failing which legal proceedings were threatened. At the time, Complainant’s trademark registration for ACUBA had been cancelled and not yet re-registered. 

By reply dated September 23, 2002, a Mr. Mark Butcher of  “Hotchilli Internet Solutions” said:

     

“We are happy to arrange for a transfer of the domain to you for a fee of £1,500. If you agree to this then we can arrange the transfer immediately”.

Even assuming Mr. Burcher’s offer to arrange transfer of the disputed domain name for £1,500 were made on behalf of Respondent (something that is not entirely clear to the Panel), it came 4 years after the disputed domain name was registered and was made in response to a cease and desist email apparently sent on behalf of Complainant. These circumstances do not enable the conclusion to be drawn that the disputed domain name was registered primarily for the purpose of selling it to Complainant, as contemplated in paragraph 4(b)(i) of the Policy [emphasis added]. Respondent’s willingness, expressed in its Response, to transfer the disputed domain name to Complainant for that sum, likewise affords no foundation for a finding of bad faith registration in 1998.

There are no other circumstances present upon which a finding of bad faith registration and use could properly be made.

Complainant has failed to establish this element.

DECISION

Complainant having failed to establish all three elements required under ICANN Policy, the Panel concludes that relief shall be DENIED.

Alan L. Limbury, Panelist
Dated: July 16, 2003

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