UFCW International Union v. Union Automation et al. - Domain Name Attorney.com Archives - INTERNET DOMAIN NAME LAWYER,CYBERSQUATTING LAW/UDRP/ADVICE/DISPUTES.

UFCW International Union
v.
Union Automation and Keith Locke

[Indexed as: UFCW International Union v. Union Automation et al.]

[Indexed as: UFCW.COM]

National Arbitration Forum
Administrative Panel Decision

Forum File No. FA0004000094665
Commenced: 1 May 2000
Judgement: 8 June 2000

Presiding Panelist: Judge James A. Carmody [Retired]

Domain name - U.S. Service mark - Identical - Confusingly similar - Bad faith registration - Respondent filing late Response - No explanation for late filing of Response, therefore not admitted - All reasonable inferences of fact in the Complaint taken to be true - Respondent having actual awareness of service mark of Complainant.

Complainant is the United Food and Commercial Workers International Union (UFCW), a labour organization with 1.4 million members. It registered UFCW as a service mark in 1982. Complainant operates a website www.UFCW.org. Respondent registered domain name UFCW.com.

Held, Name Transferred to Complainant

Respondent filed a Response approximately fifteen days late. No explanation was given for the late filing. The Panel decided, therefore, to exclude the Response. All reasonable inferences of fact alleged by Complainant were taken to be true.

Respondent's domain name is identical or deceptively similar to Complainant's registered service mark. Complainant has valuable and legally protectable rights and legitimate interests in the
mark and Respondent has none.

Respondent had actual awareness of the service mark of Complainant, and the disputed site stated that it served the United Food & Commercial Workers Local Unions. The Panel found evidence of bad faith as Respondent intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's site.

Policies referred to

ICANN Rules for Uniform Domain Name Dispute Resolution Policy
National Arbitration Forum's Supplemental Rules to ICANN's Uniform Domain Resolution Policy

Carmody, Panelist: -

The above-entitled matter came on for an administrative hearing on June 8, 2000 before the
undersigned arbitrator on the Complaint of UFCW International Union, appearing by its counsel,
Nicholas W. Clark, Assistant General Counsel (the "Union" or "Complainant"), against Keith
Locke, Union Automation("Locke" or "Respondent") who did not submit a timely response but
appeared through his counsel, Jack B. Burstein, Smith & Burstein, 1730 Sonoma Blvd., PO Box
7026, Vallejo, CA 94590. Upon the written submitted record, including only the Complaint, the
following DECISION is rendered:

PROCEDURAL FINDINGS

Domain Name: UFCW.COM

Domain Name Registrar: Network Solutions

Domain Name Registrant: Union Automation

Administrative Contact: Locke, Keith

Date of Domain Name Registration: September 11, 1995

Date Complaint Filed: May 1, 2000

Date of Commencement of the Administrative Proceeding in Accordance with Rule 2(a) and

Rule 4(c)': May 1, 2000

Due Date for Response: May 22, 2000. Response filed on June 6, 2000.

After reviewing the Complaint, and determining it to be in administrative compliance, the National Arbitration Forum ("Forum") forwarded the Complaint to the Respondent on May 1, 2000, in compliance with Rule 2(a), and the administrative proceeding was commenced pursuant to Rule 4(c). In [1]compliance with Rule 4(d), the Forum immediately notified Network Solutions that the administrative proceeding had commenced. The Complaint was then docketed and forwarded to the undersigned arbitrator for decision. Respondent did not submit a response to the Forum within twenty (20) days pursuant to Rule 5(a).

FINDINGS OF FACT

1. On May 9, 2000, Network Solutions confirmed that Respondent registered the domain name
"UFCW.COM" under the registrant name Union Automation and reflected Locke, Keith as the current Administrative Contact. Network Solutions acknowledged the commencement of this administrative proceeding, that Respondent is bound by the Network Solutions Service Agreement Version 4.0 and that the said domain name is on "Hold" status. Accordingly, Respondent agreed to resolve any dispute regarding its domain name registration pursuant to ICANN's Rules for Uniform Domain Name Dispute Resolution Policy and the Uniform Domain Name Dispute Resolution Policy. Neither the Complainant nor Respondent contests the jurisdiction of the Forum or the undersigned arbitrator to resolve this controversy.

2. By virtue of the fact that there has been no timely appearance by Respondent, all reasonable inferences of fact in the allegations of the Complaint will be taken to be true.[2]

3. Complainant is a labor organization with 1.4 million members and widely known to the general public as the United Food and Commercial Workers International Union or "UFCW" for short.

4. Complainant has duly registered "UFCW" as a service mark with the U.S. Patent and Trademark Office and holds Registration Number 1,212,828, registered on October 12, 1982.

5. As noted above, Respondent registered the domain name "UFCW.COM" on September 11, 1995.

6. Respondent's website reflects actual awareness of Complainant's service mark and Complainant's website at www.UFCW.ORG.

7. On August 12, 1997, Network Solutions advised Respondent by letter that the domain name
"UFCW.COM" was being placed on "Hold" status for failure to make a required response in an
earlier administrative proceeding initiated by Complainant.

8. Respondent's website at www.UFCW.COM indicates that Respondent is an Internet service
provider serving "United Food & Commercial Workers Local Unions." Claim is made on this site
that UFCW.COM is "the proprietary and intellectual property of Union Automation."

9. Complainant seeks relief in the form of transferal of the domain name "UFCW.COM" to Complainant.

CONCLUSIONS

The undersigned certifies that he has acted independently and has no known conflict of interest to serve as the Arbitrator in this proceeding. Having been duly selected, and being impartial, the undersigned makes the following findings and conclusions:

1. Respondent's domain name "UFCW.COM" is identical or deceptively similar to Complainant's registered service mark "UFCW." Paragraph 4.a.i. of the Policy.

2. Complainant has valuable and legally protectable rights and legitimate interests in the
mark: "UFCW" and Respondent has none. Paragraph 4.a.ii. of the Policy.

3. Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's site. Paragraph 4.b.iv. of the Policy. Accordingly, I find that Respondent has registered and used the domain name "UFCW.COM"
in bad faith. Paragraph 4.a.iii. of the Policy.

4. I find that Complainant's requested relief of transferal of the domain name "UFCW.COM" from Respondent to Complainant is warranted based on the foregoing. Paragraph 4.i. of the Policy.

DECISION

Based upon the above findings and conclusions, and pursuant to Rule 4(i) of the ICANN's Rules
for Uniform Domain Name Dispute Resolution Policy and the National Arbitration Forum's
Supplemental Rules to ICANN's Uniform Domain Resolution Policy, it is decided as follows:

THE UNDERSIGNED DIRECTS THAT THE DOMAIN NAME "UFCW.COM" REGISTERED BY RESPONDENT BE FORTHWITH
TRANSFERRED TO COMPLAINANT.

Signed this 8th day of June 2000 by Judge James A. Carmody (Retired), arbitrator.

--------------------------------

[1] Any references to "Rule" or "Rules" are to ICANN's Rules for Uniform Domain Name Dispute
Resolution Policy and Uniform Domain Name Dispute Resolution Policy (the "Policy") as supplemented by the National Arbitration Forum's Supplemental Rules to ICANN's Uniform Domain Resolution Policy.
[2] The untimely Response filed on behalf of Respondent offers no explanation for late filing nor does it contain or accompany any motion that it be given consideration despite its late status. No exhibits, affidavits or other offers of proof are attached to the untimely Response. Accordingly, no factual claim of the Complainant is effectively controverted, and this Decision would result in the same relief granted to Complainant if the untimely Response had been given full consideration.

Domain Name Transferred