AARP v. domains Ventures
Claim
Number: FA0507000514786
Complainant is AARP (“Complainant”), represented by Melise R. Blakeslee, of McDermott, Will, & Emery LLP, 600 13th Street, N.W., Washington,
DC 20005. Respondent is domains Ventures (“Respondent”), 136 XIAOXUE ROAD, XIAMEN,
Fujian, CN 361001.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <aarppharmacyservices.com>, registered
with Moniker Online Services, 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.
Sandra
Franklin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on July
12, 2005; the National Arbitration Forum received a hard copy of the Complaint
on July 15, 2005.
On
July 18, 2005, Moniker Online Services, Inc. confirmed by e-mail to the
National Arbitration Forum that the domain name <aarppharmacyservices.com>
is registered with Moniker Online Services, Inc. and that Respondent is the
current registrant of the name. Moniker
Online Services, Inc. has verified that Respondent is bound by the Moniker
Online Services, Inc. registration agreement and has thereby agreed to resolve
domain-name disputes brought by third parties in accordance with ICANN's
Uniform Domain Name Dispute Resolution Policy (the "Policy").
On
July 20, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
August 9, 2005 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent's registration as technical, administrative and billing
contacts, and to postmaster@aarppharmacyservices.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
august 12, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed Sandra
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." 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 any
Response from Respondent.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <aarppharmacyservices.com>
domain name is confusingly similar to Complainant’s AARP mark.
2. Respondent does not have any rights or
legitimate interests in the <aarppharmacyservices.com> domain
name.
3. Respondent registered and used the <aarppharmacyservices.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
AARP, is a leading nonprofit organization for individuals over the age of
fifty. Complainant maintains offices in
every state and territory in the United States boasting over 2,000 local
chapters nationwide. Complainant
addresses the needs and interests of those persons fifty years of age and
older. Among the many services and
products provided, Complainant provides pharmacy services in which information
about effective, safe, and affordable prescription drugs, insurance coverage
and related products is made available to interested members. Complainant has registered the AARP
trademark (Reg. No. 741,334 issued November 27, 1962, renewed November 27,
2002) with the United States Patent and Trademark Office (“USPTO”) in
association with services and products offered.
Respondent registered
the <aarppharmacyservices.com> domain name on October 18,
2003. The disputed domain name resolves
to a website featuring links that include Complainant’s AARP mark in addition
to links to various competing and non-competing websites.
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 has
submitted evidence of exclusive rights in the AARP mark. Through its registration with the USPTO,
Complainant has shown that the mark has acquired secondary meaning and
established rights pursuant to Policy ¶ 4(a)(i). See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb.
Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a
presumption that they are inherently distinctive [or] have acquired secondary
meaning.”); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum
Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes
Complainant's rights in the mark.”).
Complainant
asserts that Respondent’s <aarppharmacyservices.com> domain name is confusingly similar to
Complainant’s AARP mark. Respondent’s
domain name includes Complainant’s entire trademark while adding the generic
terms “pharmacy” and “services,” terms with a direct connection to the business
in which Complainant engages. Panels
have held that the addition of generic terms directly related to the business
in which the mark holder engages fails to properly differentiate the domain
name from the relevant trademark. As a
result, the Panel finds that the <aarppharmacyservices.com> domain
name is confusingly similar to Complainant’s trademark pursuant to Policy ¶
4(a)(i). See Space Imaging LLC v.
Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity
where the respondent’s domain name combines the complainant’s mark with a
generic term that has an obvious relationship to the complainant’s business); see
also Christie’s Inc. v. Tiffany’s Jewelry Auction, Inc., D2001-0075 (WIPO
Mar. 6, 2001) (finding that the domain name
<christiesauction.com> is confusingly similar to the complainant's
mark since it merely adds the word “auction” used in its generic sense).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant
further asserts that Respondent lacks rights and legitimate interests in the <aarppharmacyservices.com>
domain name. Complainant’s submission
creates a prima facie case which Respondent has the burden of
refuting. See G.D. Searle v. Martin Mktg.,
FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission
constitutes a prima facie case under the Policy, the burden effectively
shifts to Respondent. Respondent’s failure to respond means that Respondent has
not presented any circumstances that would promote its rights or legitimate
interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Do
The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding
that, where the complainant has asserted that the respondent has no rights or
legitimate interests with respect to the domain name, it is incumbent on the
respondent to come forward with concrete evidence rebutting this assertion
because this information is “uniquely within the knowledge and control of the respondent”). Because Respondent has failed to bring forth
evidence suggesting otherwise, the Panel infers that no rights or legitimate
interests exist pursuant to Policy ¶ 4(a)(ii).
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.”); see also Do
the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of
a respondent to come forward to [contest complainant’s allegations] is
tantamount to admitting the truth of complainant’s assertions in this
regard.”).
Respondent’s
disputed domain name resolves to a website featuring links to various
commercial websites including those that display Complainant’s AARP mark. Presumably, Respondent receives referral
fees for each Internet user diverted through Respondent’s domain name. Such diversionary use is neither a use in
connection with a bona fide offering of goods or services under Policy ¶
4(c)(i) nor a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting
customers, who are looking for products relating to the famous SEIKO mark, to a
website unrelated to the mark is not a bona fide offering of goods or services
under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under
Policy ¶ 4(c)(iii).”); see also Golden Bear Int’l, Inc. v. Kangdeock-ho,
FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name
confusingly similar to Complainant’s mark to divert Internet users to websites
unrelated to Complainant's business 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).”)
Furthermore,
nothing in the record indicates that Respondent is either commonly known by the
disputed domain name or authorized to register domain names bearing
Complainant’s trademark. As a result,
the Panel finds that Respondent lacks rights and legitimate interests pursuant
to Policy ¶ 4(c)(ii). See Gallup,
Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001)
(finding that the respondent does not have rights in a domain name when the
respondent is not known by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar.
14, 2000) (finding no rights or legitimate interest where the respondent was
not commonly known by the mark and never applied for a license or permission
from the complainant to use the trademarked name).
The
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s <aarppharmacyservices.com>
domain name resolves to a website that features links to various commercial
websites through which Respondent presumably receives click-through fees. Because Respondent’s domain name is
confusingly similar to Complainant’s AARP mark, consumer’s accessing
Respondent’s domain name may become confused as to Complainant’s affiliation or
sponsorship of the resulting website.
The Panel finds that this competing use is evidence of bad faith
registration and use pursuant to Policy ¶ 4(b)(iv). See H-D
Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan.
8, 2003) (finding that the disputed domain name was registered and used in bad
faith pursuant to Policy ¶ 4(b)(iv) through the respondent’s registration and
use of the infringing domain name to intentionally attempt to attract Internet
users to its fraudulent website by using the complainant’s famous marks and
likeness); see also Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration
and use of a domain name that incorporates another's mark with the intent to deceive
Internet users in regard to the source or affiliation of the domain name is
evidence of bad faith.”).
Finally,
Respondent registered the <aarppharmacyservices.com> domain name with constructive or actual
knowledge of Complainant’s rights in the AARP trademark. Federal trademark registration with the
USPTO confers constructive knowledge of Complainant’s rights in the AARP mark
onto Respondent. See Orange Glo Int’l v. Blume, FA
118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed
on the Principal Register of the USPTO, a status that confers constructive
notice on those seeking to register or use the mark or any confusingly similar
variation thereof.”); see also Victoria’s Cyber
Secret Ltd. v. V Secret Catalogue, Inc.,
161 F.Supp.2d 1339, 1349 (S.D.Fla. 2001) (noting that “a Principal Register
registration [of a trademark or service mark] is constructive notice of a claim
of ownership so as to eliminate any defense of good faith adoption” pursuant to
15 U.S.C. § 1072). Furthermore, due to
Respondent’s inclusion of Complainant’s mark on the resulting website, along
with competing goods and services associated with that mark, the Panel infers
that Respondent had actual knowledge of Complainant’s rights. Registration of a domain name that is
confusingly similar to another’s mark, despite actual or constructive knowledge
of the mark holder’s rights, is evidence of bad faith registration and use
pursuant to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys.,
FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal
presumption of bad faith, when Respondent reasonably should have been aware of
Complainant’s trademarks, actually or constructively”); see also
Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. 2002)
("Where an alleged infringer chooses a mark he knows to be similar to
another, one can infer an intent to confuse.").
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 <aarppharmacyservices.com> domain name be TRANSFERRED
from Respondent to Complainant.
Sandra Franklin, Panelist
Dated:
August 25, 2005
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