AARP v. Domain Admin / Taranga Services Pty Ltd
Claim Number: FA1106001393384
Complainant is AARP (“Complainant”), represented by John J. Dabney of McDermott Will & Emery LLP, Washington D.C., USA. Respondent is Domain Admin / Taranga Services Pty Ltd (“Respondent”), New Zealand.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <aarpmedicaresupplement.com>, registered with Moniker.com.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 14, 2011; the National Arbitration Forum received payment on June 15, 2011.
On June 15, 2011, Moniker.com confirmed by e-mail to the National Arbitration Forum that the <aarpmedicaresupplement.com> domain name is registered with Moniker.com and that Respondent is the current registrant of the name. Moniker.com has verified that Respondent is bound by the Moniker.com 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 June 17, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 7, 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@aarpmedicaresupplement.com. Also on June 17, 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 July 12, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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, without the benefit of a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <aarpmedicaresupplement.com> domain name is confusingly similar to Complainant’s AARP mark.
2. Respondent does not have any rights or legitimate interests in the <aarpmedicaresupplement.com> domain name.
3. Respondent registered and used the <aarpmedicaresupplement.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, AARP, is a nonprofit corporation dedicated to promoting the interests of persons age 50 and older. Complainant owns the AARP mark and has offered a wide variety of products and services under this mark for over 50 years, including health insurance and Medicare Supplement health insurance. Complainant holds over 38 federal registrations for its AARP mark and variations, with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,047,005 issued August 24, 1976).
Respondent, Domain Admin / Taranga Services Pty Ltd, registered the <aarpmedicaresupplement.com> domain name on August 31, 2006. The disputed domain name resolves to a commercial search engine which offers links to Complainant’s website as well as third-party links to Complainant’s competitors in the health insurance and Medicare industry.
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.
The Panel finds that Complainant has established its rights in the AARP mark by registering with a trademark authority according to Policy ¶ 4(a)(i). See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO). Panels have also held that a complainant is not required to register its mark within the country where a respondent resides or operates. See KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
Respondent’s <aarpmedicaresupplement.com> domain name is confusingly similar to Complainant’s AARP mark because it incorporates the entire AARP mark, adds the descriptive words “medicare supplement,” and adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that the inclusion of the descriptive phrase “medicare supplement” references Complainant’s Medicare Supplement insurance services and, therefore, does not reduce the confusing similarity between the disputed domain name and Complainant’s mark. See AARP v. domains ventures, FA 514786 (Nat. Arb. Forum August 25, 2005) (finding that adding the generic terms “pharmacy” and “services,” which have a direct connection to Complainant’s business, fails to properly differentiate the domain name from the relevant trademark). The Panel also finds that the addition of a gTLD is legally irrelevant to 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). The Panel concludes that Respondent’s disputed domain name is confusingly similar to Complainant’s AARP mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent has no rights or legitimate interests in the <aarpmedicaresupplement.com> domain name. In Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008), the panel concluded, “It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.” Here, Complainant has made a prima facie case. The Panel may interpret Respondent’s failure to send in a response to the Complaint as an admission that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond). However, the Panel elects to look to the record to determine whether Respondent has rights or legitimate interests under Policy ¶ 4(c).
Complainant claims that Respondent is not commonly known by the <aarpmedicaresupplement.com> domain name. The WHOIS information identifies the domain name registrant as “Domain Admin / Taranga Services Pty Ltd.,” which is not similar to the disputed domain name. Complainant also states that it has not licensed or permitted Respondent to use the AARP mark or any domain name incorporating the AARP mark. The Panel decides that Respondent is not commonly known by the disputed domain name, pursuant to Policy ¶ 4(c)(ii), as nothing in the record indicates otherwise. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name).
The disputed domain name resolves to a commercial search engine featuring a links to websites of Complainant and websites of Complainant’s direct competitors in the health insurance field. Respondent likely generates click-through fees from these links. The Panel determines that Respondent’s <aarpmedicaresupplement.com> domain name is not being used for 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). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the respondent was not using the <tesco-finance.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by maintaining a web page with misleading links to the complainant’s competitors in the financial services industry); see also Skyhawke Techs., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute 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) has been satisfied.
Respondent registered and is using the <aarpmedicaresupplement.com> domain name in order to disrupt Complainant’s business. Internet users searching for Complainant’s health insurance services may find Respondent’s website and purchases similar services from a competing third-party website as a result. The Panel finds that Respondent’s registration and use of the disputed domain name constitutes bad faith pursuant to Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also 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).
Respondent’s disputed domain name and associated content creates a likelihood of confusion as to Complainant’s sponsorship of, or affiliation with, the domain name and third-party links. Respondent attempts to profit from this confusion through the receipt of click-through fees. The Panel finds that Respondent registered and is using the <aarpmedicaresupplement.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also Asbury Auto. Group, Inc. v. Tex. Int’l Prop. Assocs., FA 958542 (Nat. Arb. Forum May 29, 2007) (finding that the respondent’s use of the disputed domain name to advertise car dealerships that competed with the complainant’s business would likely lead to confusion among Internet users as to the sponsorship or affiliation of those competing dealerships, and was therefore evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).
The Panel finds that Policy ¶ 4(a)(iii) has been 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 <aarpmedicaresupplement.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: July 19, 2011
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