American Thoracic Society v. Steve Johnson
Claim Number: FA1511001647805
Complainant is American Thoracic Society (“Complainant”), represented by Patrick J. Jennings of Pillsbury Winthrop Shaw Pittman, LLP, District of Columbia, USA. Respondent is Steve Johnson (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ats2016.org>, registered with GoDaddy.com, LLC.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 19, 2015; the Forum received payment on November 20, 2015.
On November 20, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <ats2016.org> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 November 23, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 14, 2015 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@ats2016.org. Also on November 23, 2015, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 Forum transmitted to the parties a Notification of Respondent Default.
On December 21, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant has rights in the ATS mark pursuant to its United States Patent and Trademark Office (“USPTO”) registration (e.g., Reg. No. 3,439,861, registered June 3, 2008). Respondent’s <ats2016.org> domain name is confusingly similar to the ATS mark as the domain incorporates the mark entirely and merely appends the number sequence “2016” and the generic top-level domain (“gTLD”) “.org.”
Respondent has no rights or legitimate interests in the disputed <ats2016.org> domain name. Respondent is not commonly known by the disputed domain name, nor is Respondent affiliated with Complainant in any way. Further, Respondent has utilized the disputed domain to imply an association with Complainant in an attempt to deceive Internet users, presumably commercially profiting.
Respondent has registered and used the disputed <ats2016.org> domain name in bad faith. Respondent’s actions of presenting itself as Complainant, and seemingly offered a way to register for Complainant’s conference and book a hotel for the conference even though registration for said conference has yet to be opened, indicate bad faith under Policy ¶ 4(b)(iv) is evident. Respondent’s use of the disputed domain name imputes actual/constructive knowledge of the ATS mark and Complainant’s rights in the mark under Policy ¶ 4(a)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is American Thoracic Society of New York, NY, USA. Complainant is the owner of the mark ATS, which it has used continuously since at least as early as 1960. Complainant uses the mark in connection with its provision of information and services while maintaining its international society which is dedicated to advancing the understanding of certain diseases, illnesses, and disorders.
Respondent is Steve Johnson of New Delhi, India. Respondent’s registrar’s address is listed as Scottsdale, AZ, USA. The disputed domain name was registered on or about October 21, 2015.
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."
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.
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.”).
Complainant has rights in the ATS mark pursuant to its USPTO registration (e.g., Reg. No. 3,439,861, registered June 3, 2008). A consensus exists amongst UDRP panels regarding a USPTO registration sufficiently conferring rights in a mark. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). The Panel here finds that Complainant has rights in the ATS mark per Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <ats2016.org> domain name is confusingly similar to the ATS mark as the domain incorporates the mark entirely and merely appends the number sequence “2016” and the gTLD “.org.” Prior panels have determined such changes insufficient to overcome a finding of confusing similarity per Policy ¶ 4(a)(i). See The Price Company v. Price Club, D2000-0664 (WIPO Aug. 25, 2000) (priceclub2000.com confusingly similar to PRICE CLUB mark); see also World Wrestling Entertainment, Inc. v. emad ibrahim / this domain is for sale, FA 1579757 (Nat. Arb. Forum Oct. 13, 2014) (“The Panel agrees that the [disputed domain] name is identical as the inclusion of a generic top-level domain (“gTLD”) such as “.org” is irrelevant to the Policy ¶ 4(a)(i) confusing similarity analysis.”). The Panel here finds that Respondent’s additions to the ATS mark in the disputed domain name fails to overcome a finding of confusing similarity under Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). The Complainant has met this burden.
Complainant contends that Respondent has no rights or legitimate interests in the disputed <ats2016.org> domain name. Complainant asserts that Respondent is not commonly known by the disputed domain name, nor is Respondent affiliated with Complainant in any way. WHOIS information associated with the domain identifies Respondent as “Steve Johnson,” which does not resemble the disputed domain name. Prior panels have found a respondent to not be commonly known by a disputed domain name based on WHOIS information and a lack of authorization from a complainant. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name). The Panel here finds that Respondent has not been commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).
Complainant urges that Respondent has utilized the disputed domain to imply an association with Complainant in an attempt to deceive Internet users, presumably commercially profiting. Complainant has presented evidence of Respondent’s website in support of its contention that Respondent presents itself to Internet users in such a manner as to create a false association with Complainant. Past panels have found such use fails to provide the user with rights or legitimate interests in the disputed domain name. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks). The Panel here finds that Respondent has not demonstrated any bona fide offering of goods or services or any legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii), respectively, through its use of the disputed domain name.
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
As the Respondent has not provided a response to this action, the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant argues that Respondent has registered and used the disputed <ats2016.org> domain name in bad faith. Respondent has presented itself as ATS and seemingly offered a way to register for Complainant’s conference and book a hotel for the conference even though registration for said conference has yet to be opened. Complainant asserts Respondent’s behavior indicates bad faith under Policy ¶ 4(b)(iv). The Panel finds Respondent’s activities support a finding of bad faith registration and use under Policy ¶ 4(b)(iv). See Tower Labs. Ltd. v. Seltzer, FA 791325 (Nat. Arb. Forum Oct. 16, 2006) (concluding that the respondent registered and was using the <bromoseltzer.com> domain name in bad faith because it displayed a logo similar to the complainant’s BROMO SELTZER mark, which was likely to confuse the public as to the source of the material exhibited at the respondent’s website).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <ats2016.org> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: January 4, 2016
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