Association for Financial Professionals, Inc. v. Private Registrations Aktien Gesellschaft
Claim Number: FA1104001382556
Complainant is Association for Financial Professionals, Inc. (“Complainant”), represented by David M. Abrahams of Webster, Chamberlain & Bean, LLP, Washington D.C., USA. Respondent is Private Registrations Aktien Gesellschaft (“Respondent”), St. Vincent and the Grenadines.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <afponline.com>, registered with Network Solutions.
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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 8, 2011; the National Arbitration Forum received payment on April 8, 2011.
On April 11, 2011, Network Solutions confirmed by e-mail to the National Arbitration Forum that the <afponline.com> domain name is registered with Network Solutions and that Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 11, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 2, 2011 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@afponline.com. Also on April 11, 2011, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 9, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <afponline.com> domain name is confusingly similar to Complainant’s AFP mark.
2. Respondent does not have any rights or legitimate interests in the <afponline.com> domain name.
3. Respondent registered and used the <afponline.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Association for Financial Professionals, Inc., owns multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its AFP family of marks (e.g., Reg. No. 2,427,473 filed March 23, 1999; issued February 6, 2001). Complainant is a non-profit trade association for treasury and finance professionals extending to more than 150,000 professionals worldwide. Complainant uses its AFP mark in connection with the provision of goods and services to its members. Complainant is the registrant of the <afponline.org> domain name, which it uses to promotes its goods and services on the Internet.
Respondent registered the disputed domain name on April 26, 1999. The disputed domain name resolves to a website that provides links and information to third-party sites offering competing goods and services in the fields of treasury and finance.
Paragraph 15(a) of 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."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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; and
(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.
Complainant claims rights in its AFP mark by virtue of its registration of the mark with the USPTO (e.g., Reg. No. 2,427,473 filed March 23, 1999; issued February 6, 2001). The Panel finds that Complainant’s USPTO registration is sufficient to establish Complainant’s rights in the AFP mark and that those rights date back to the date the trademark application was filed, March 23, 1999. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”). The Panel also finds that it is irrelevant whether Complainant registered its mark in the country where Respondent resides or operates. Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Complainant argues that Respondent’s <afponline.com> domain name is confusingly similar to Complainant’s AFP mark. The disputed domain name merely adds the generic term “online” and the generic top-level domain (“gTLD”) “.com.” Previous panels have determined that the addition of the word “online” is not sufficient to properly distinguish a disputed domain name from a mark. See Broadcom Corp. v. Domain Depot, FA 96854 (Nat. Arb. Forum Apr. 23, 2001) (finding the <broadcomonline.com> domain name is confusingly similar to the complainant’s BROADCOM mark). Additionally, prior panels have determined that the addition of a gTLD is irrelevant for a Policy ¶ 4(a)(i) analysis. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Accordingly, this Panel finds that Respondent’s <afponline.com> domain name is confusingly similar to Complainant’s AFP mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) is satisfied.
Pursuant to the requirements of Policy ¶ 4(a)(ii), Complainant is required to establish a prima facie case in support of its allegations that Respondent lacks rights and legitimate interests in the disputed domain name in order to satisfy its burden. Once Complainant has successfully presented a prima facie case, the burden is shifted to Respondent to come forth with evidence that Respondent does have rights or legitimate interests in the domain name under the Policy. See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (finding that if the complainant satisfies its prima facie burden, “then the burden shifts to the respondent to show that it does have rights or legitimate interest in the subject domain names.”). The Panel finds that Complainant has established its prima facie case. Respondent has not submitted a Response and thus has failed to uphold its burden. Previous panels have inferred that such a failure to respond can be taken as evidence that a respondent does not have rights or legitimate interests in a disputed domain name. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). This Panel elects to examine the record in its entirety before determining whether Respondent has any rights or legitimate interests in the <afponline.com> domain name.
The WHOIS information for the disputed domain name does not establish any connection between the Respondent and the <afponline.com> domain name. Prior panels have determined that where the WHOIS information does not indicate that a respondent is commonly known by a disputed domain name, the respondent lacks rights and legitimate interests in that domain name. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name). The Panel finds, in accordance with prior panels, that Respondent has no rights or legitimate interests in the <afponline.com> domain name under Policy ¶ 4(c)(ii).
Respondent uses its <afponline.com> domain name to display links and information to third-party websites offering treasury and finance services in competition with those offered by Complainant under its AFP mark. Respondent likely receives monetary compensation from these “pay-per-click” links. The Panel finds that Respondent’s use of the confusingly similar domain name for such a purpose is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (holding that using an identical or confusingly similar domain name to earn click-through fees via sponsored links to a complainant’s competitors does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).
The Panel finds that Policy ¶ 4(a)(ii) is satisfied.
The Panel finds that Respondent’s registration and use of the <afponline.com> domain name to redirect Internet users to websites that offering goods and services that directly compete with those offered by Complainant disrupts Complainant’s business. Internet users who are searching for Complainant via its website resolving from the <afponline.org> domain name, and who mistakenly type the “.com” suffix instead, will be redirected to the competing website and will potentially purchase goods and/or services from a third-party, rather than Complainant. The Panel finds this to be evidence of bad faith under Policy ¶ 4(b)(iii). See David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
As Respondent likely receives pay-per-click fees from the third-party links displayed on its resolving website the Panel supports a finding of bad faith under Policy ¶ 4(b)(iv). Respondent’s registration and use of the confusingly similar disputed domain name appears to have been with the intent to attract Internet users to the resolving website by creating a likelihood of confusion as to Complainant’s affiliation or endorsement of the domain name. This confusion is made more likely by the fact that Respondent’s disputed domain name, <afponline.com>, is nearly identical to Complainant’s own <afponline.org> domain name. Therefore, the Panel concludes that Respondent’s use of the disputed domain name constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-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).”).
The Panel finds that Policy ¶ 4(a)(iii) is satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <afponline.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: May 13, 2011
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page