AASKI Technology, Inc. v. Technology Department / Cloud Service, Inc.
Claim Number: FA1809001807368
Complainant is AASKI Technology, Inc. (“Complainant”), represented by Iva Rukelj of Scarinci Hollenbeck, LLC, New York, USA. Respondent is Technology Department / Cloud Service, Inc. (“Respondent”), Minnesota, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <aaskifraud.com> and <aaskicollusion.com>, registered with Google 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 21, 2018; the Forum received payment on September 21, 2018.
On September 21, 2018, Google LLC confirmed by e-mail to the Forum that the <aaskifraud.com> and <aaskicollusion.com> domain names are registered with Google LLC and that Respondent is the current registrant of the names. Google LLC has verified that Respondent is bound by the Google 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 September 24, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 15, 2018 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@aaskifraud.com, postmaster@aaskicollusion.com. Also on September 24, 2018, 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 found compliant on October 14, 2018.
ADDITIONAL SUBMISSIONS
Complainant
The Forum received an additional submission from Complainant on October 19, 2018 which was timely received. The Panel addresses the contents of this submission in its decision and took it into account in reaching that decision.
Respondent
The Forum received an additional submission from Respondent on October 24, 2018 which was timely received. The Panel addresses the contents of this submission in its decision and took it into account in reaching that decision.
On October 23, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
1. Complainant has common law or unregistered trademarks rights in the AASKI and AASKI TECHNOLOGY marks (collectively “the AASKI marks”.
2. The disputed domain names are confusingly similar to the AASKI marks. That is so because the domain names consist of the AASKI marks and in each case a pejorative term.
3. Respondent has no rights or legitimate interests in the disputed domain names as Respondent cannot bring itself within any of the criteria for a right or legitimate interest and the domain names are confusingly similar domain names that denigrate Complainant and its trademarks.
4. Respondent registered and has used the disputed domain names in bad faith.
B. Respondent
Respondent made the following contentions.
1. Complainant has no registered or common law trademarks on which to base its Complaint.
2. In particular, Complainant cannot claim a common law trademark in AASKI as it is simply an alternate spelling of ASCII a common widely used (PC keyboards are ASSKI keyboard).
3. Complainant has no basis for a common law trademark nor has it ever asserted prior to this that it has any trademark interest in the word AASKI.
4. Complainant named its wholly owned subsidiary AASKI Sports and then went about doing things it now find embarrassing. That is not a matter for this tribunal but if need be Respondent hereby asserts as to the truthfulness of the content found on its sites.
5. Respondent is properly using the word AASKI and it is clear in the content that it has shared.
6. In the end analysis Complainant has no trademark protection in the words in question, it has no claim that Respondent is misleading users to divert traffic that is otherwise intended for Complainant’s site. Complainant only disagrees with the content for which there are many forums where that can be raised.
C. Additional Submissions
Complainant
1. Complainant filed a statement by its Chief Operating officer attesting to Complainant’s use of the AASKI marks and awards made to Complainant and other events relied on by Complainant.
Respondent
1. The awards and other events relied on by Complainant relate only to AASKI Technology or AASKI Technology, Inc. and not to AASKI alone.
2. Complainant has no common law trademark and cannot obtain one under any circumstances. The trademark it relies on is a generic work related to encoding and communication and its use by Complainant is a blatant use of a deceptively similar sounding word with the same meaning, and hence it is unprotected.
3. For AASKI Technology to have filed this UDRP Complaint is without question an unjust use of the UDRP process, an effort to stifle free speech, and an unjust encroachment on Respondent’s equal rights to utilize the Internet.
1. Complainant is a United States company that has been engaged in the provision of software, information technology and engineering services since 1997.
2. Respondent is a United States company domiciled in Excelsior, Minnesota 55331 in the United States.
3. Complainant has established its common law or unregistered trademark rights in the AASKI marks.
4. Respondent registered the <aaskifraud.com> domain name on September 12, 2018 and the <aaskicollusion.com> domain name on September 14, 2018.
5. The evidence shows that the disputed domain names are confusingly similar to the AASKI marks.
6. The evidence shows that Respondent has no rights or legitimate interests in the disputed domain names.
7. The evidence shows that Respondent registered and has used the disputed domain names in bad faith.
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.
The first question that arises is whether Complainant has a trademark or service mark on which it may rely in this proceeding. Complainant does not claim that it has a registered trademark that it can rely on, but maintains that it has common law trademark rights in the AASKI marks based upon its use of the marks in commerce in connection with software, IT and engineering services. Complainant alleges the marks have acquired secondary meaning.
It is now well-established that a common law or unregistered trademark is sufficient to give standing to a complainant in UDRP proceedings. That depends, of course, on whether the complainant can prove on the balance or probabilities that it does have the common law or unregistered trademark for which it contends. A complainant may have common law rights in a mark where the mark has been used continuously in commerce, thus garnering secondary meaning, per Policy ¶ 4(a)(i)[i]. In the present case, Complainant contends that it has been using the AASKI marks in commerce since 1997. In support of that contention, it relies, first, on a statement by its Chief Executive Officer, Mr. Bharat Parikh, who says that the company has used the AASKI marks in connection with its services since 1997 and that it has used, advertised and promoted those marks in connection with computer and related services it has provided to the US Government, to the extent that they have become distinctive identifiers of the origin of its goods and services.
Complainant advanced its case further by tendering a further statement, this time by its Chief Operating Officer, Mr. Jerry Rippon, in response to Respondent’s denial that Complainant has common law trademark rights in the two marks claimed. Mr. Rippon’s statement constituted an additional submission on behalf of Complainant. Mr. Rippon reiterates the statements previously made on behalf of Complainant but also goes further. UDRP panels have said on many occasions that on all issues in these cases, but particularly when the issue is whether a common law trademark has been made out, there must be good and cogent evidence to prove it. Mr. Rippon gives examples of awards and recognition of Complainant in its own name and some details of contracts awarded to it. In addition, the Panel has had regard to Complainant’s own website, the address of which has already been put in evidence, thus making it permissible for the Panel to examine its contents. The website contains a great deal of information about Complainant and its activities. Two features emerge from this evidence; first, that Complainant uses the names “AASKI” and “ AASKI TECHOLOGY” virtually interchangeably; and, secondly, it is fairly clear that the company uses the word “AASKI” as its brand and that if inquiries had been made as to who had provided any of the goods and services on offer, the answer would probably have been “AASKI”. Not the least reason why both AASKI and AASKI TECHOLOGY emerge as brands or identifiers of Complainant’s goods and services is that, so far as the Panel can see, not other name is used to identify them. Put in different words, the expressions AASKI and AASKI TECHNOLOGY have acquired the secondary meaning that they identify Complainant’s goods and services, as there are no other possible candidates for that description that emerge from any of the evidence.
The Panel is aware that Respondent also submits, and expands its submission in its Additional Submission to the effect that, in any event, Complainant cannot claim a common law trademark in AASKI as it is simply an alternate spelling of ASCII, a common widely used term reflecting that a personal computer keyboard is an “ASSKI (sic ) keyboard”. The Panel does not accept that submission. It may well be that Complainant chose the name because it invokes the word ASCII because of its computer association, but the Panel must make its judgment on the trademark claimed by the Complainant and not on a different word that it has not claimed.
The Panel therefore finds that Complainant has made out its case that it has and had at all material times common law or unregistered trademarks rights in the AASKI marks.
The second question that arises is whether the disputed domain names are identical or confusingly similar to either or both of Complainant’s trademarks.
Complainant contends that both domain names are confusingly similar to Complainant’s marks because they both contain the entirety of the AASKI trademark and the primary portion of the AASKI TECHNOLOGY mark plus in each case a generic and/or descriptive term. The question may therefore be initially determined by reference to the principle that adding a generic and/or descriptive term to a mark to create a domain name may not be sufficient to distinguish the domain name from a mark under Policy ¶ 4(a)(i) or, in other words, that the domain name will be held to be confusingly similar to the trademark, despite the addition. This is because the internet user is more likely to be influenced by the dominant section of the domain name, in the present case ‘aaski’ and to read the domain name as primarily a domain name that incorporates another party’s trademark. See PADI Americas, Inc. v. MPM Administration, FA 1783415 (Forum May 22, 2018) (finding the <padivacations.com> domain name to be confusingly similar to the complainant’s PADI mark: “the inclusion of the suggestive term “vacations” in the at-issue domain name only adds to any confusion between the domain name and Complainant’s trademark since the term suggests Complainant’s travel related services.”). In all cases, however, the question still has to be asked whether, with the addition of the generic or descriptive word, the domain name is confusingly similar to the trademark. Accordingly, as a matter of first principle, making the comparison between the domain name and the trademarks would lead to the conclusion that the disputed domain names are confusingly similar to both trademarks.
Complainant has therefore made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
The prima facie case
Having regard to those principles the Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s AASKI trademark and the dominant portion of Complainant’s AASKI TECHNOLOGY trademark and used them in creating its two domain names;
(b) Respondent registered the <aaskifraud.com> domain name on September 12, 2018 and the <aaskicollusion.com> domain name on September 14, 2018;
(c) Nothing in Respondent’s name nor its administrative and technical contact information reveals any likely right or legitimate interest in either of the domain names;
(d) There is no evidence that Complainant has licensed Respondent to use its marks, or to register or use a domain name incorporating those marks;
(e) There is no relationship between the parties which would justify the use of the disputed domain names;
(f) Respondent has engaged in registering and using the domain names without the consent or approval of Complainant;
(g) The evidence suggests that Respondent is not commonly known by the domain names.
That being so, the onus shifts to Respondent to see if it has rebutted the prima facie case against it on this issue.
Respondent’s claim to have rebutted the prima facie case
The formal Response itself gives very little by way of fact or argument to rebut the prima facie case. There are only two references that appear to be a foundation for that position. The first is that “… if need be we hereby assert as to the truthfulness of the content found on these sites” which appears to be a defence that the domain names were being used to promote the truth of the matters raised. The Panel has no wish to hinder the opportunity for Respondent to put its case, but it must be said that the few words quoted above could not conceivably mount to a rebuttal of the prima facie case. These cases can be resolved only by evidence and argument and Respondent has not provided any evidence and virtually no argument as to how the prima facie case has been rebutted. Indeed, its statement is little more than a bald assertion and carries no weight.
The same must be said for the second possible statement of a defence in the Response, which is as follows:
“They (presumably the Complainant) have only the disagreement with the content for which there are many forums where that can be raised.”
That proposition is not a defence; the obligation is on Respondent to show why it had a right to register the domain names or a legitimate interest in them. The words quoted from the Response do not do that.
There is therefore nothing in the Response that rebuts the prima facie case.
Respondent’s Additional Submission
Respondent has, however, filed an Additional Submission and as he is self- represented, the Panel will consider that submission and give effect to it as if it contained Respondent’s rebuttal of the prima facie case.
The Additional Submission contains the following sentence which appears raise Respondent’s defence:
“For AASKI Technology to have filed this UDRP Complaint is without question an unjust use of the UDRP process, an effort to stifle free speech, and an unjust encroachment on Respondent’s equal rights to utilize the Internet.”
Those words make it sufficiently clear that Respondent is mounting a free speech defence and relying on the principles espoused in some UDRP decisions that a criticism site can give rise to a right of legitimate interest in a domain name. There certainly is a disposition among some panelists to implement this principle, particularly where the parties are American and where the point is seen as based on the First Amendment to the United States Constitution.
However, the present one is not a case of a free speech or criticism defence. That is so for several reasons.
First, Respondent has an undoubted right to freedom of speech on the internet and elsewhere, subject to the general law. What he does not have is the right to copy another party’s trademark or create a domain name confusingly similar to that trademark and link it with material that denigrates that trademark and those who are readily associated with it. But that is what he has done in the present case. The two domain names associate Complainant directly with fraud and collusion because the domain names virtually state that the AASKI trademarks themselves or their owners have engaged in fraud and collusion. That approach, that such a situation does not create a right or legitimate interest in a domain name, has been generally accepted by UDRP panelists and has been reflected in decisions such as Lloyd Irvin v. [Registrant], Forum Decision: FA1606001677800, (July 1, 2016), where the distinguished panelist observed, in circumstances not dissimilar to those in the present case:
“Complainant contends that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate non-commercial or fair use. Complainant argues that Respondent uses its disputed domain name to divert Complainant’s customers to Respondent’s “gripe site,” or “criticism site.” Panels have held that a respondent lacks rights and legitimate interests where it uses a disputed domain, which incorporates a complainant’s trademark, as a platform for criticizing the complainant. See Dar Al-Arkan Real Estate Development Company v. AnonymousSpeech AnonymousSpeech, D2012-0692 (WIPO June 4, 2012) (finding that “it is not legitimate to use the Complainant’s own trademark as a platform for criticizing the Complainant itself”). Accordingly, the Panel finds that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate non-commercial or fair use under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).”
The same view was expressed in the decisions cited by Complainant, Compagnie Generale des Matieres Nucleaires v. Greenpeace International, WIPO Case No D2001-0376 and British Nuclear Fuels plc v. Greenpeace International, WIPO Case No D2001-1318 and many other decisions.
It might be said that, however, that when internet users get to the website itself, they will in fact see that Respondent has engaged in legitimate criticism. The Panel disagrees. What internet users will see is that Respondent has loaded up his website with a large quantity of material with the highly charged headings:
It should also be remembered that the reason why criticism, in appropriate cases, can give rise to a right or legitimate interest in a domain name is that it brings the domain name within the Policy itself, where it provides that there is “a legitimate noncommercial or fair use of the domain name.”[iii] There is nothing legitimate or fair about making allegations of fraud and collusion in the precise words of a domain name, and then repeating them in the first content of the site that the internet user will see.
Finally, even if an internet user were to persevere and read all of the allegations in the body of the website and what Respondent has to say about them, the Panel doubts if, even then, they qualify as legitimate or fair criticism of Complainant. That is because the content ranges so widely into allegations against so many people and companies that the dispute that is aggravating Respondent seems to have more to do with them than it has with Complainant. At the same time, the allegations contained in the terms of the domain names themselves and by the above headings are a serious denigration of Complainant itself and must be doing considerable damage to it, in view of the sensitive nature of its contracts with the US Government.
For all of those reasons, the Panel finds that Respondent has not rebutted the prima facie case against it and has no right or legitimate interest in the disputed domain names.
Complainant has therefore made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, the matters described above in the section of this decision relating to rights and legitimate interests are equally applicable to the issue of bad faith. It is not necessary to set them out in detail, but Respondent registered and has used the <aaskifraud.com> and <aaskicollusion.com> domain names to denigrate Complainant and others and tarnish the AASKI marks in an extreme manner. Use of a disputed domain name to post defamatory comments about complainant and its business is evidence of registration and use in bad faith under Policy ¶ 4(a)(iii) and such conduct has frequently been held to be so. For example, in The Finest Golf Clubs of the World, LTD d/b/a The Eden Club v. Neil Krauter, FA 1537779 (Forum Feb. 14, 2014) the panel was concerned with the domain name <theedenclubfraud.com> consisting of a trademark and a confusingly similar domain name that added the word “ fraud”, as in the present case. The Panel found that Respondent registered and was using the domain name in bad faith because of the use of the confusingly similar domain name for hosting negative commentary about the complainant’s business, as in the present case. The evidence in the present case already discussed, stated that Complainant had committed fraud and extortion. See Compl. Ex. B. The Panel therefore finds that this conduct by Respondent shows that it registered and used the disputed domain names in bad faith.
Secondly, the evidence, that has not been denied, shows Respondent also sent emails with false information to the US Army, Government Accountability Office, and AASKI employees. See Compl. Ex. D. Accordingly, Respondent must be taken to have registered and used the disputed domain names in bad faith under Policy ¶ 4(a)(iii).
Thirdly, Respondent must have had actual knowledge of the AASKI marks prior to registration of the domain names to have registered them and used them in the way the evidence demonstrates that it did. This constitutes bad faith registration and use within the meaning of Policy ¶ 4(a)(iii) and the Panel so finds: See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018)
Fourthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain names using the AASKI marks and in view of the conduct that Respondent has engaged in when using the disputed domain names, Respondent registered and used them in bad faith within the generally accepted meaning of that expression.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <aaskifraud.com> and <aaskicollusion.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: October 26, 2018
[i] See loanDepot.com, LLC v. sm goo, FA 1786848 (Forum June 12, 2018) (“Complainant’s demonstration of continuous use in commerce and accompanying promotion and media recognition are adequate to sustain its claim of common law rights in the MELLO and MELLO SOLAR marks.”).
[ii] RICO is well understood to indicate the US Statute The Racketeer Influenced and Corrupt Organizations Act.
[iii] See UDRP Policy, Paragraph 4(c) (iii)
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