National Arbitration Forum

 

DECISION

 

Accion International v. eHorizon.com

Claim Number: FA1007001335299

 

PARTIES

Complainant is Accion International (“Complainant”), represented by Samuel B. Hudson, of Foley Hoag LLP, Massachusetts, USA.  Respondent is eHorizon.com (“Respondent”), Virginia, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <accion.com>, registered with ONLINENIC, INC.

 

PANEL

The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.

 

Jeffrey M. Samuels, Carolyn Marks Johnson, and David H. Bernstein, as Panelists.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on July 14, 2010.

 

On July 18, 2010, ONLINENIC, INC. confirmed by e-mail to the National Arbitration Forum that the <accion.com> domain name is registered with ONLINENIC, INC. and that the Respondent is the current registrant of the name.  ONLINENIC, INC. has verified that Respondent is bound by the ONLINENIC, INC. 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 July 20, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 9, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@accion.com.  Also on July 20, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

 

A timely Response was received and determined to be complete on August 9, 2010.

 

A timely Additional Submission was received from Complainant and determined to be complete on August 12, 2010.

 

A timely Additional Submission was received from Respondent and determined to be complete on August 17, 2010.

 

On August 19, 2010, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Jeffrey M. Samuels, Carolyn Marks Johnson, and David H. Bernstein, as Panelists.

 

RELIEF SOUGHT

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

 

PARTIES’ CONTENTIONS

A. Complainant

 

Complainant, ACCION International, is a non-profit New York corporation that was founded in 1961 as a community development organization working in South America to assist the poor.  Complainant was one of the world’s first providers of microfinance, i.e., providing of very small loans to small-scale entrepreneurs to help them finance their businesses.  Today, Complainant assists in providing “microenterprise” loans, financial services and business training to low-to-moderate income business people throughout the world.  In 2008, Complainant’s network of 32 partner microfinance institutions delivered financial services to over 3.7 million people worldwide.  See Complaint, Exhibit E.

 

Complainant owns U.S. trademark registrations for the marks ACCION (Reg. Nos. 3,006,595 and 3,665,363) and ACCION INTERNATIONAL (Reg. No. 3,665,362), as used in connection with business management and technical business consultation services provided to microfinance institutions and for loan financing. The ACCION marks were registered in October 2005 and August 2009, respectively, and the ACCION INTERNATIONAL mark was registered in August 2009.  The ACCION mark was first used in commerce in 1983, and the ACCION INTERNATIONAL mark was first used in commerce in 1961.  Complainant filed an application to register ACCION, as intended to be used in connection with insurance, banking, and educational services, in January 2009. See Complaint, Exhibit B. 

 

In 1996, Complainant registered the domain name <accion.org> and began publishing a website at that address in July 1996.  See Complaint, Exhibit F.

 

Complainant alleges that, by registering its marks with the United States Patent and Trademark Office (“USPTO”) and continuously using such marks in connection with its products and services, it has conclusively established its rights in the ACCION mark.  It further contends that there can be no dispute that <accion.com> is confusingly similar to the ACCION mark, as the domain name fully incorporates Complainant’s mark.

 

Complainant further argues that Respondent has no rights or legitimate interests in the disputed domain name.  It first indicates that Respondent has not used, and has not made demonstrable preparations to use, the domain name in connection with a bona fide offering of goods or services, despite the fact that the disputed domain name was registered on May 1, 2000.  According to Complainant, the current web page displayed at <accion.com> is a collection of web links designed to attract click-through revenue for the operator of the website.  See Complaint, Exhibit G.

 

Complainant also contends that there is no indication that Respondent has ever been “commonly known” or associated with the ACCION mark and that Respondent can make no genuine claim that it is making a legitimate noncommercial or fair use of the domain name.  There is no evidence, Complainant asserts, that Respondent is attempting to operate a discussion forum related to Complainant or engage in any other example of fair use. See Complaint, Exhibit H.  Moreover, Complainant adds, even assuming, arguendo, that this was Respondent’s intent, use of a confusingly similar domain name cannot constitute a “fair use.”

 

Finally, Complainant asserts that the disputed domain name was registered and is being used in bad faith.  Such bad faith is evidenced in the following ways: (1) the disputed domain name is confusingly similar to the ACCION mark; (2) Respondent’s site features advertising related to financial products and services that are similar to those offered by Complainant and its licensees; (3) Respondent has established a pattern of registering domain names that are similar to, or misspellings of, well-known marks; and (4) Respondent is using the entire ACCION mark. 

 

In support of the above contentions, Complainant notes that Respondent registered the disputed domain name well after Complainant began use of the ACCION mark in the U.S. and well after Complainant registered the domain name <accion.org>.  “Although the Respondent registered the accion.com domain name before [Complainant] filed its first United States trademark application, the Respondent had a number of opportunities to be aware of [Complainant] and its reputation, including from [Complainant’s] registration and use of accion.org and the publication of its website at that domain address.  At the date that the Respondent registered the accion.com domain name, Complainant … had published its website at accion.org, featuring the ACCION mark, for three years and ten months, making it highly likely that Respondent was aware of the ACCION mark.”

 

More importantly, Complainant continues, “it is evident that Respondent has used the ACCION Mark in an effort to create a false affiliation between the parties for commercial gain.  By publishing a website that features links to a number of financial products and services that are similar to or identical to the services offered by [Complainant] and its licensees, the Respondent has sought to profit from advertising revenue received when unwary Internet users accidentally find Respondent’s website instead of Complainant[‘s] website.  Respondent’s use of the accion.com domain name has the potential to cause actual confusion among users.”  Complainant notes, for example, that its U.S. affiliate operates a website at accionusa.org that offers information about its small business loans and that Respondent’s website features links for “Start a Business,” “Small Business Finance,” and “Business Loans.” See Complaint, Exhibit J.

 

Complainant also points out that Respondent owns the domain names <obgy.com>, which resolves to a website featuring links to women’s health issues; <arabair.com>, which resolves to a site featuring links to airline tickets; <ziit.com>, which resolves to a site relating to diets; <jyn.com>, which features links to women’s clothing; and <amson.com>, which resolves to a web page featuring books and electronics.  “This pattern,” according to Complainant, “suggests intent to profit from Internet users’ errors, confusion and misspellings and mis-typing, and is evidence of bad faith.”

 

Further, Complainant adds, it appears that Respondent has not provided its correct address for the purposes of the WHOIS registry.  See Complaint, Exhibit L.

  

B. Respondent[1]

 

Noting that Complainant’s trademark registrations are in all capital letters and that the disputed domain name appears as <accion.com>, Respondent asserts that it is “reasonably unlikely” that a user will type the capital letters A, C, C, I, O, N or ACCION INTERNATIONAL to access Respondent’s site.  Thus, Respondent contends, the disputed domain name is not similar to Complainant’s capitalized trademark ACCION or ACCION INTERNATIONAL.

 

Respondent points out that the word “accion” means action in the Spanish language and that a Google search for “accion” resulted in 113 million results.  Based on this, Respondent asserts that acknowledging exclusive rights in the word “accion” based on Complainant’s registrations would discriminate against the 153 million Spanish-speaking people of the world.

 

Respondent further notes that it registered the disputed domain name on May 1, 2000 and contends that it did so because “accion” is a desirable name for a website since it is a commonly used term in businesses, events, sports, and everyday activities.  See Response, Exhibit 5.  Respondent indicates that the products and services offered at <accion.com> are all broadly connected to “action in business” and that “nowhere in Respondent’s accion.com site appear any words similar to Complainant’s trademark ‘ACCION INTERNATIONAL’ or ‘ACCION’ except the domain name itself.  Furthermore, nowhere in accion.com appear any words similar to Complainant’s main business area ‘micro finance’.”  See Response, Exhibit 2.

 

With respect to the <accionusa.org> site referred to in the Complaint, Respondent notes that such site does not belong to Complainant, that it was registered more than two years after Respondent’s registration of <accion.com>, and that the similarity of the links on <accion.com> and <accionusa.org> “is scarce.” 

 

Respondent further contends that there is no evidence that it registered and used the domain name <accion.com> in bad faith.  It emphasizes that it registered the disputed domain name nine years prior to Complainant’s registration of its ACCION and ACCION INTERNATIONAL marks and before the applications to register such marks were filed with the USPTO on June 26, 2000.  See Response, Exhibits 8 and 9.  “Complainant shows nothing to indicate that Respondent had any knowledge of Complainant, Complainant’s business, and of Complainant’s then-unregistered mark when Respondent registered the disputed domain name in 2000.”  Respondent further indicates that it has not attempted to sell the domain name for profit.

 

Focusing on the parties’ respective websites, Respondent contends that they are “clearly distinguishable.”  It maintains that the products or services are related only in the sense that they are connected to “action in business” in a general sense.  There is nothing in its site, Respondent asserts, that would indicate “in any way that it was designed to or would in fact draw or mislead customers searching for the Complainant’s website.”

 

Respondent also takes issue with Complainant’s assertion that Respondent has established a pattern of registering domain names that are similar to, or misspellings of, well-known marks.  It contends that there is nothing wrong in having a women’s health-related link at <obgy.com> since such name is an abbreviation for obstetrics/gynecology; that the domain <jyn.com> is registered as an abbreviation for Respondent’s son’s name; that <ziit.com> is registered because it is a short and good mimetic word for rapid signal transfer; and that the name <amson.com> does not bear any resemblance to <amazon.com>.

 

Respondent asserts that it is “beyond doubt” that Complainant has engaged in reverse domain name hijacking.  In support of such assertion, Respondent notes that Complainant submitted as evidence the pending application to register the mark ACCION for insurance, banking, and educational services, as well as an affiliate’s website.

 

C. Additional Submissions[2]

 

In its Additional Submission, Complainant submits that the disputed domain name is identical to Complainant’s mark, notwithstanding the differences in capitalization.  Complainant also notes that the disputed domain name clearly displays the term “accion.com.”  Complainant indicates that “additional use of the ACCION mark is unnecessary for Respondent’s purposes, which are served by the initial confusion created by use of the accion.com domain name and display of the ACCION mark within the term ‘accion.com’ on Respondent’s website in order to generate website hits and thus advertising and click-through revenue.”

 

With respect to the issue of “bad faith” registration and use, Complainant contends that “[g]iven Respondent’s use of the domain name in infringement of Complainant’s trademark rights, and given Complainant’s prior common law rights and the fact that Respondent has not made legitimate use of the domain name in the 10 years since registration … the totality of the evidence demonstrates that Respondent registered the domain name in bad faith.”

 

Finally, Complainant argues that Respondent’s allegation of reverse domain name hijacking is “groundless.” 

 

In its “Supplemental Response,” Respondent reiterates that the disputed domain name was registered prior to the filing by Complainant of any applications seeking registration of ACCION or ACCION INTERNATIONAL.  It also contends that the design for the <accionusa.org> website was recently changed to show links related to small business loans and that this is evidence of bad faith on the part of Complainant.

 

Respondent further alleges that there is nothing improper in displaying <accion.com> on its website and that the links and ads that appear on accion.com are put there by automated technology without the knowledge or authorization of Respondent.

 

On the issue of reverse domain name hijacking, Respondent emphasizes that Complainant applied for registration of its marks immediately after Respondent’s registration of the <accion.com> domain name.

 

FINDINGS

The Panel finds that: (1) the disputed domain name <accion.com> is identical or confusingly similar to the marks ACCION and ACCION INTERNATIONAL and that Complainant has rights in such mark; (2) Respondent has no rights or legitimate interests in the disputed domain name; (3) the disputed domain name was registered and is being used in bad faith; and (4) Complainant has not used the Policy in bad faith in an attempt to deprive a registered domain name holder of a domain name.

 

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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2)   the 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 Panel concludes that the disputed domain name, <accion.com>, is, for all intents and purposes, identical to the ACCION mark.  It is well established that replicating a complainant’s mark in its entirety and then merely adding a generic top-level domain does not sufficiently distinguish a domain name from a mark.  See W. Union Holdings, Inc. v. XYZ, Case No. D2005-0945 (WIPO Oct. 20, 2005) (wuib.com held identical to WUIB mark); see also Daedong-USA, Inc. v. O’Bryan Implement Sales, FA 210302 (Nat. Arb. Forum Dec. 29, 2003) (kioti.com held identical to KIOTI mark). 

 

The Panel further finds that the disputed domain name is confusingly similar to the ACCION INTERNATIONAL mark since they both share the distinctive term “accion.”

 

The fact that Complainant’s registered ACCION and ACCION INTERNATIONAL marks appear in all capital letters in the registration certificates while the domain name is in all lower case letters is of no significance.  See Cunningham v. Laser Golf Corp., 222 F.3d 943 (Fed. Cir. 2000) (registrations with typed drawings are not limited to any particular rendition of the mark).

 

The evidence further establishes that Complainant has rights in the ACCION and the ACCION INTERNATIONAL marks.  The evidence indicates that such marks have been used in commerce since 1983 and 1961, respectively, and are the subject of U.S. trademark registrations.  See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (a trademark registration adequately demonstrates complainant’s rights in a mark).

   

Rights or Legitimate Interests

 

The Panel rules that Complainant has met its burden of establishing that Respondent has no rights or legitimate interests in the accion.com domain name.  Respondent’s use of accion.com for a pay-per-click parking page is not a legitimate interest since the page is not tied to any generic or merely descriptive use of ACCION.  Cf. Asian World of Martial Arts Inc. v. Texas Int’l Prop. Assocs., D2007-1415 (WIPO Dec. 10, 2007); mVisible Techs., Inc. v. Navigation Catalyst Sys., Inc., D2007-1141 (WIPO Nov. 30, 2007).  The evidence indicates that “accion” is not an English language dictionary word but a Spanish word that means “action” in English. English is the relevant language in this matter since the <accion.com> site is in English and Respondent has not made a showing that it intended to use the domain name for a Spanish-language website.

 

The Panel concludes that none of the other circumstances set forth in paragraph 4(c) of the Policy is applicable.

 

Registration and Use in Bad Faith

 

The Panel finds that the disputed domain name was registered and is being used in bad faith.  The fact that the disputed domain name was registered on May 1, 2000, nearly two months before Complainant sought federal registration of its ACCION and ACCION INTERNATIONAL marks does not compel a contrary determination where, as here, the evidence establishes that Complainant first used the marks in 1983 and 1961, respectively, and registered and used the domain name <accion.org> in 1996.  Under such circumstances, the Panel concludes that it is more likely than not that Respondent was aware of the ACCION marks at the time it registered the disputed domain name.

 

Given the Panel’s finding that the disputed domain name is identical or confusingly similar to Complainant’s marks and the fact that the disputed domain name resolves to a pay-per-click site featuring links to services associated with, if not identical to, those offered by Complainant under its marks, the Panel concludes that Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s site, within the meaning of paragraph 4(b)(iv) of the Policy.  See Maricopa Cmty. Coll. Dist. v. College.com, LLC, FA 536190 (Nat. Arb. Forum Sept. 22, 2005).  

 

Respondent contended that it has no control over the links that appear on its site and cited several cases in support of the contention that such fact disproves bad faith intent.  However, these cases are factually distinct from the instant matter and do not support Respondent’s position.  For example, in The Burton Corp. v. Com & Networks, FA 0646033 (Nat. Arb. Forum Apr. 25, 2006), some of the links on the disputed site apparently led to the complainant’s products.  And, in Churchill Insurance Co. Ltd. v. Churchill Fin. Servs., Ltd., FA 1270466 (Nat. Arb. Forum Sept. 1, 2009), the evidence merely established one instance of bad faith use that was terminated by respondent upon receiving actual notice from the complainant.

 

Reverse Domain Name Hijacking

 

Based on the above, it is clear that there is no evidence that Complainant used the Policy in bad faith in an attempt to deprive a registered domain name holder of a domain name.

Thus, Respondent’s claim of reverse domain name hijacking must be dismissed.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <accion.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Jeffrey M. Samuels, Panel Chair

Carolyn Marks Johnson and David H. Bernstein, Panelists
Dated: August 30, 2010

 

 

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