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14 Year Old 4 Letter .Com Lost in UDRP To Trademark Filed in 2012:

Posted on the 23 April 2015 by Worldwide @thedomains

A one member UDRP panel has just handed over a 14 year old, four letter .com domain, to GECU of Texas

The domain holder registered the domain on June 29, 2001.

Terry F. Peppard the Panelist found the credit union had common law trademark rights going back to 1998 even though the trademark was not filed until 2012.

Interestedly is owned by another credit union, Gulf Credit Union which seems to go back to 1996 meaning they were in business, the same business as the Complainant, two years before the Complainant.

It would seem that awarding to the credit union formed in 1998 will cause harm and confusion to Gulf Credit which uses the .org. It does not look like the domain holder raised that issue and the panelist

The disputed domain name resolves to a webpage containing links to the websites of Complainant’s commercial competitors, from the operation of which Respondent derives pay-per-click revenues.

The panelist refused to consider latches, that is the delay in bringing thie UDRP for 14 years and until they got their trademark filed with the USPTO going all in on that the domain was going to a parked page with links to banks.

Here are the highlights:

“”Complainant has common law rights in the GECU mark, dating from January of 1998, by virtue of its long and continuous use of the mark in commerce and its extensive advertising and promotion of the mark, all of which have created secondary meaning in it sufficient to create such rights.

We next observe that Complainant asserts that the domain name resolves to a webpage displaying hyperlinks to the web sites of Complainant’s commercial competitors, and that Respondent profits in the form of pay-per-click fees from the operation of those links.

Respondent seeks to escape the natural consequence of these conclusions by arguing that the GECU mark is generic in character, and, therefore, open to adoption in its domain name. In support of this contention, Respondent asserts that “Gecu” can stand for “geriatric extended care unit” or “gas engine control unit.” Particularly in light of Respondent’s employment of the domain name exclusively to conduct commercial operations in competition with the credit union business of Complainant, we find this argument entirely unpersuasive.

We are persuaded by the evidence that Respondent’s use of the domain name, as alleged in the Complaint, disrupts Complainant’s business.

The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).

We are also convinced by the evidence that Respondent uses the domain name, which is substantively identical to Complainant’s GECU mark, to profit financially from confusion caused among Internet users as to the possibility of Complainant’s association with the domain name and its resolving web site.

Respondent is using the disputed domain name to operate a website which features links to competing commercial … websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).

In light of our conclusion with regard to Respondent’s bad faith registration and use of the contested domain name, it is unnecessary for us to examine Respondent’s argument on the question of laches, which is grounded in considerations of equity.””

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