American Chemical Society v. allogo wang / pala ahhas / Palo ALto
Claim Number: FA1708001746739
Complainant is American Chemical Society (“Complainant”), represented by Douglas A. Rettew of Henderson, Farabow, Garrett & Dunner, L.L.P., Washington D.C., USA. Respondent is allogo wang / pala ahhas / Palo ALto (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <msds-cas.com>, <cas-no.org>, <boxcas.com>, and <casbook.com>, registered with Name.com, Inc.
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.
Mark McCormick as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 29, 2017; the Forum received payment on August 29, 2017.
On August 31, 2017, Name.com, Inc. confirmed by e-mail to the Forum that the <msds-cas.com>, <cas-no.org>, <boxcas.com>, and <casbook.com> domain names are registered with Name.com, Inc. and that Respondent is the current registrant of the names. Name.com, Inc. has verified that Respondent is bound by the Name.com, Inc. 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 September 5, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 25, 2017 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@msds-cas.com, postmaster@cas-no.org, postmaster@boxcas.com, and postmaster@casbook.com. Also on September 5, 2017, 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.
A timely Response was received and determined to be complete on September 7, 2017.
On September 11, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Mark McCormick 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant is a U.S. not-for-profit corporation founded in 1876, whose national charter was approved by Congress on August 25, 1937, for the purposes of encouraging the advancement of chemistry; promoting research in chemical science and industry; increasing and diffusing chemical knowledge; and promoting scientific interests and inquiry through meetings, reports, papers, and publications. Complainant registered the CAS mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,206,442, registered Aug. 24, 1982). Respondent’s <msds-cas.com>, <cas-no.org>, <boxcas.com>, and <casbook.com> domain names are confusingly similar to Complainant’s mark as they incorporate Complainant’s CAS mark in its entirety, adding only generic or descriptive terms like “no,” “box,” “book,” the acronym “msds,” a hyphen in two cases, and various generic top-level domains (“gTLD”).
Respondent has no rights or legitimate interests in the <msds-cas.com>, <cas-no.org>, <boxcas.com>, and <casbook.com> domain names. Respondent is not commonly known by the disputed domain names, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the disputed domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent has chosen domain names that are confusingly similar to Complainant’s CAS mark to redirect users to websites promoting services related to Complainant’s business and activities for Respondent’s own commercial gain. This commercial gain is realized through a commercial pay-per-click website featuring sponsored-link advertisements unrelated or directly related to Complainant’s business.
Respondent registered and uses the domain names in bad faith. Respondent intentionally selected, registered, and is using the domain names to attract Internet users to its websites for commercial gain by engendering confusion and mistake with Complainant and its CAS mark as to the source, sponsorship, affiliation, connection, and endorsement of Respondent’s services. Further, Respondent’s offering of competing services on the resolving webpage disrupts Complainant’s business. Additionally, Respondent has engaged in a pattern of bad faith registration and use by registering four domain names in the instant proceeding. Moreover, Respondent lists one of the domain names as potentially for sale on the resolving webpage. Finally, Respondent undoubtedly knew of Complainant’s rights in the CAS mark due to Complainant’s longstanding, worldwide fame, Respondent’s offering of related goods and services, and Respondent reproduces copyrighted material on the resolving webpages.
B. Respondent
The term “CAS” is a generic name that, while the numbers are named by Complainant, Complainant does not hold exclusive rights to use the mark in connection with domain names. “CAS” simply is a unique numerical identifier assigned to every chemical substance.
Respondent does have rights and legitimate interests in the <msds-cas.com>, <cas-no.org>, <boxcas.com>, and <casbook.com> domain names, as CASBOOK is the name of Respondent’s start-up company. Respondent also makes a legitimate noncommercial or fair use of the disputed domain names. Respondent uses the domain names to provide a free, non-profit CAS number information query for users to conveniently locate information. Respondent does not infringe on any of Complainant’s rights.
C. Additional Submissions
Complainant filed an additional submission on September 12, 2017. It was timely under Supplemental Rule 7. Complainant’s submission is essentially an argument that complainant’s CAS mark has not become generic as alleged by Respondent. Complainant also contends that Respondent has not rebutted Complainant’s evidence supporting the merits of the Complaint.
Respondent also filed a timely additional submission on September 12, 2017. Respondent contends that he uses the disputed domain names to respond without charge to queries about CAS chemistry numbers, much like Google and other services.
Respondent relies solely on his contention that Complainant’s CAS mark is generic and thus unprotected from Respondent’s disputed domain names <msds-cas.com>, <cas-no.org>, <boxcas.com>, and <casbook.com>. Complainant has world-wide registration rights in its CAS mark, and Respondent has acknowledged that Complainant’s Chemical Abstract Service “CAS” assigns the identifiers recognized as CAS numbers. The CAS numbers are unique numerical identifiers, and Complainant’s CAS mark has not become generic.
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.
No dispute exists that complainant holds a USPTO registration of its CAS mark. This demonstrates Complainant’s rights in the mark for purposes of Policy ¶4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015). Respondent’s domain names incorporate Complainant’s mark. Respondent’s addition of generic or descriptive terms and various gTLD’s do not sufficiently distinguish Respondent’s domain names from the CAS mark. See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016). The panel holds that Respondent’s disputed domain names are confusingly similar to the CAS mark within the meaning of Policy ¶4(a)(i).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the CAS mark. The burden thus shifted to Respondent to prove that it does have rights and legitimate interests in the mark. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006).
No evidence has been received to show that Respondent has been commonly known by the CAS mark, and no evidence exists that Complainant ever authorized Respondent to use its mark. These circumstances show Respondent lacks rights and legitimate interests in the CAS mark. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015). The panel finds that Respondent lacks rights and legitimate interests in Complainant’s mark within the meaning of Policy ¶4(a)(ii).
Complainant accuses Respondent of having registered its disputed domain names in bad faith on several grounds. One ground is the contention that the registration of multiple confusingly similar domain names incorporating a complainant’s mark is evidence of bad faith. That ground has plainly been shown here. See Philip Morris USA Inc. v. RapidClic / VAUCLIN Olivier, FA1309001520008 (Forum November 7, 2013). Another ground is that Respondent’s offer of competing service disrupts Complainant’s services and is further evidence of bad faith registration. See Fitness International, LLC v. ALISTAIR SWODECK / VICTOR AND MURRAY, FA1506001623644 (Forum July 9, 2015). That ground has also been established. Moreover, Respondent created a likelihood of confusion by its infringement and use of Complainant’s mark to obtain click-through revenue in its competition with Complainant. See Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA1409001579141 (Forum October 15, 2014). Finally, no doubt exists that Respondent knew of Complainant’s rights when he registered his domain names. This confirms his bad faith. See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007). The Panel finds that Complainant has established Respondent’s bad faith within the meaning of Policy ¶4(a)(iii).
Because Complainant has established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <msds-cas.com>, <cas-no.org>, <boxcas.com>, and <casbook.com> domain names be TRANSFERRED from Respondent to Complainant.
Mark McCormick, Panelist
Dated: September 25, 2017
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