Ric Jo Swaningson v. thu lins
Claim Number: FA0905001264365
Complainant is Ric Jo Swaningson (“Complainant”), Wisconsin, USA. Respondent is thu lins (“Respondent”), Beijing, China.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <aip.com>, registered with Enom, 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 J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 21, 2009; the National Arbitration Forum received a hard copy of the Complaint on May 22, 2009.
On May 22, 2009, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <aip.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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 May 29, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 18, 2009 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@aip.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 24, 2009, 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." 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 <aip.com> domain name is identical to Complainant’s AIP.COM mark.
2. Respondent does not have any rights or legitimate interests in the <aip.com> domain name.
3. Respondent registered and used the <aip.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant operates a 501(c)(3) charitable organization that holds bible prophecy meetings and spreads its message around the world. Complainant uses the AIP.COM mark on all of its marketing materials, and spends more than $100,000 per year using the AIP.COM mark in advertising.
Respondent hijacked the <aip.com> domain name from Complainant’s account on March 28, 2009. There is no record of the current use of the disputed domain name.
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 does not assert a trademark registration for his AIP.COM mark with any governmental trademark authority. However, the Panel finds that Complainant does not need to demonstrate such registrations in order to have rights in the mark under Policy ¶ 4(a)(i) provided Complainant can demonstrate his common law rights in the mark through sufficient secondary meaning. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark); see also SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist).
Complainant asserts
rights in the AIP.COM mark through extensive use of the mark in promoting his
organization throughout the world, and the great expense incurred for the
advertising materials related to his organization. The Panel finds that Complainant has
demonstrated sufficient secondary meaning in his AIP.COM mark under Policy ¶
4(a)(i) to establish common law rights in the mark. See Stellar Call Ctrs. Pty Ltd. v. Bahr, FA 595972 (Nat.
Arb. Forum Dec. 19, 2005) (finding that the complainant established common law
rights in the STELLAR CALL CENTRES mark because the complainant demonstrated
that its mark had acquired secondary meaning); see also Winterson
v. Hogarth, D2000-0235 (WIPO May 22, 2000) (finding that the Policy does
not require that a complainant’s trademark be registered by a government
authority or agency in order for the complainant to establish rights in the
mark).
The Panel finds that there is no distinction between the <aip.com> domain name and Complainant’s AIP.COM mark and therefore it is identical to the mark under Policy ¶ 4(a)(i). See W. Union Holdings, Inc. v. XYZ, D2005-0945 (WIPO Oct. 20, 2005) (finding <wuib.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name WUIB is part of the Internet address and does not add source-identifying significance); see also Reichert, Inc. v. Leonard, FA 672010 (Nat. Arb. Forum May 24, 2006) (“The disputed domain names are identical to Complainant’s mark, but for the addition of a generic top-level domain suffix (“.com” or “.net”)…”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has made a prima facie case that
Respondent lacks rights and legitimate interests in the disputed domain name
under Policy ¶ 4(a)(ii). The burden of
production shifts to Respondent to come forward with evidence of rights or
legitimate interests. See Document
Techs., Inc. v. Int’l Elec. Commc’ns Inc., D2000-0270 (WIPO June 6, 2000)
(“Although Paragraph 4(a) of the Policy requires that the Complainant prove the
presence of this element (along with the other two), once a Complainant makes
out a prima facie showing, the burden of production on this factor
shifts to the Respondent to rebut the showing by providing concrete evidence
that it has rights to or legitimate interests in the Domain Name.”); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb.
Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that
Respondent does not have rights or legitimate interest in the subject domain
names, which burden is light. If
Complainant satisfies its burden, then the burden shifts to Respondent to show
that it does have rights or legitimate interests in the subject domain
names.”).
The WHOIS information lists Respondent as “thu lins,” and nothing else in the record or
the Complaint suggests that Respondent has ever been an owner or licensee of
any rights in the AIP.COM mark. The
Panel finds that Respondent is not commonly known by the <aip.com> domain name under Policy ¶
4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum
Sept. 21, 2006) (finding that the respondent was not commonly known by
the <shoredurometer.com> and <shoredurometers.com> domain names
because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a
Electromatic Equip't as the registrant of the disputed domain names and there
was no other evidence in the record to suggest that the respondent was commonly
known by the domain names in dispute); see
also Am. W. Airlines, Inc.
v. Paik, FA 206396 (Nat. Arb. Forum Dec.
22, 2003) (“Respondent has registered the domain name under the name
‘Ilyoup Paik a/k/a David Sanders.’ Given
the WHOIS domain name registration information, Respondent is not commonly
known by the [<awvacations.com>] domain name.”).
Complainant contends, and provides evidence, that it purchased the disputed domain name from a predecessor-in-interest in October 2007. Complainant also contends that in March 2009, Respondent illegally hacked into Complainant’s registration account for the disputed domain name, and fraudulently substituted Respondent’s information for Complainant’s. Because of this alleged illegal action, Complainant contends that Respondent did not use the disputed domain name for a bona fide use pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). The Panel finds that Respondent’s fraudulent action of hacking into Complainant’s account is evidence that Respondent did not use the disputed domain name for a bona fide use pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See ITX sarl v. Steiner, FA 1222737 (Nat. Arb. Forum Oct. 24, 2008) (finding that where the complainant alleged as its prima facie case that the respondent had hacked into the complainant’s account and replaced the complainant’s information with the respondent’s, the respondent then had the burden of showing that it did use the disputed domain name for a bona fide use pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii), and failed to bear that burden); see also Royal Nycomed Danmark ApS v. Diaz, D2006-0779 (WIPO Aug. 15, 2006) (concluding that the respondent’s use of a disputed domain name to operate a website promoting an illegal food supplement was not 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.
Complainant contends that Respondent illegally hacked into Complainant’s registration account for the disputed domain name, and fraudulently substituted Respondent’s information for Complainant’s. The Panel finds that Respondent’s illegal action of hacking Complainant’s registration account is evidence that Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See ITX sarl v. Steiner, FA 1222737 (Nat. Arb. Forum Oct. 24, 2008) (finding that, where "Complainant has shown that it has a long-term ownership of the domain name at issue before the domain name came under the control of Respondent," and where there was also evidence that the domain name had been transferred to Respondent without the permission of Complainant at a time when Complainant was the registered owner of the domain name, Respondent had registered and was using the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii).); see also Minn. State Lottery v. Mendes, FA 96701 (Nat. Arb. Forum Apr. 2, 2001) (finding bad faith because it would be illegal for the respondent to use the domain name <mnlottery.com> without government approval).
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 <aip.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: July 1, 2009
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum