American Thoracic Society v. shaheer khan
Claim Number: FA1606001678239
Complainant is American Thoracic Society (“Complainant”), represented by Patrick J. Jennings of Pillsbury Winthrop Shaw Pittman, LLP, District of Columbia, USA. Respondent is shaheer khan (“Respondent”), Pakistan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <americanthoracicsociety.pw>, registered with NameCheap, Inc.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 6, 2016; the Forum received payment on June 7, 2016.
On June 7, 2016, NameCheap, Inc. confirmed by e-mail to the Forum that the <americanthoracicsociety.pw> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 June 7, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 27, 2016 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@americanthoracicsociety.pw. Also on June 7, 2016, 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 June 29, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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 the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant Information
1. Founded in 1905, Complainant American Thoracic Society (“Complainant”) is an international society dedicated to advancing the clinical and scientific understanding of pulmonary diseases, critical illnesses, and sleep-related breathing disorders. Complainant has more than 15,000 members in the medical and healthcare fields. To further its mission, Complainant holds a well-known annual international conference for pulmonary, critical care, and sleep professionals. Nearly 14,000 people attend Complainant’s conference, which offers attendees the chance to learn, present scholarly research, and network.
2. Complainant owns and uses a number of federally registered trademarks, including the marks AMERICAN THORACIC SOCIETY and ATS, to identify and distinguish its goods and services from the goods and services of others.
3. Complainant’s United States trademark registrations are valid, subsisting, and prima facie evidence of the validity and registration of the marks, Complainant’s ownership of the marks, and Complainant’s exclusive right to use the marks in commerce on or in connection with the goods and services specified therein.
4. Complainant’s marks are inherently distinctive, strong, and deserving of a broad scope of protection.
Factual and Legal Grounds
5. This Complaint is based on the following factual and legal grounds.
6. The Domain Name is confusingly similar to Complainant’s registered AMERICAN THORACIC SOCIETY mark.
7. Respondent’s domain name contains all of Complainant’s AMERICAN THORACIC SOCIETY mark.
8. The ccTLD “.pw” in the Domain Name has no bearing on the confusing similarity issue. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding that “the addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants”).
9. Respondent has no rights or legitimate interests in the Domain Name or the AMERICAN THORACIC SOCIETY mark.
10. Respondent does not have any connection with Complainant even though Respondent is using Complainant’s AMERICAN THORACIC SOCIETY mark in the Domain Name and on the Internet site to which the Domain Name resolves and even though the Web site to which the Domain Name resolves contains large amounts of content that Respondent has cut and pasted from Complainant’s <thoracic.org> Web site.
11. Respondent has no rights in the Domain Name because it is not actually using the Domain Name in connection with a bona fide offering of goods or services, or for any legitimate noncommercial purposes. Respondent is using the Domain Name to commit fraud on and mislead Complainant’s members and consumers.
12. The Domain Name is being used to confuse consumers into thinking that Respondent has a connection and affiliation with Complainant.
13. Respondent is trying to falsely suggest a partnership, connection, and affiliation with Complainant when no such partnership, connection, or affiliation exists. See Annexes 4 and 6. This type of predatory, infringing behavior illustrates that Respondent has no rights or legitimate interests in the Domain Name under the terms of the Policy. See Ticketmaster Corporation v. Woofer Smith, D2003-0346 (WIPO July 4, 2003).
14. Respondent is not commonly known or identified by the Domain Name or the mark AMERICAN THORACIC SOCIETY.
15. Respondent’s registration of the Domain Name does not automatically establish a legitimate interest in that domain name. Mrs. America Productions, Inc. v. E.T. Corp., FA0003000094377 (Forum May 15, 2000).
16. Respondent is not a licensee or partner of Complainant, nor is it otherwise authorized to use any of Complainant’s marks.
17. The Domain Name was registered and is being used in bad faith.
18. Respondent registered the Domain Name in bad faith in an attempt to falsely suggest a partnership, connection, and affiliation with Complainant, confuse consumers, and capitalize on the notoriety of Complainant and its ATS and AMERICAN THORACIC SOCIETY marks. The Domain Name features Complainant’s federally registered AMERICAN THORACIC SOCIETY mark and the Web site at that Domain Name contains Complainant’s ATS mark and features large amounts of content that Respondent has cut and pasted from Complainant’s thoracic.org Web site. This conduct is fraudulent, misleading, and infringing and is causing confusion among Complainant’s members and damaging Complainant’s business and reputation. Prior panels have found that the use of a domain name to create a likelihood of confusion for commercial profit constitutes bad faith under Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA0007000095312 (Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
19. Upon information and belief, Respondent’s registration of the Domain Name violates Paragraph 2 of Namecheap.com’s Domain Registration Agreement.
20. Upon information and belief Respondent knew that the Domain Name infringed Complainant’s trademark rights, registered the Domain Name for an unlawful purpose, namely the infringement of Complainant’s AMERICAN THORACIC SOCIETY mark, and knew that it would be infringing Complainant’s rights in the AMERICAN THORACIC SOCIETY mark at the time the Domain Name was registered.
21. Respondent’s registration of a domain name containing Complainant’s federally registered AMERICAN THORACIC SOCIETY mark is evidence of bad faith registration.
22. Respondent had constructive notice of Complainant’s federally registered AMERICAN THORACIC SOCIETY mark when it registered the Domain Name. See 15 U.S.C. § 1072, which states that “[r]egistration of a mark on the principal register . . . shall be constructive notice of the registrant’s claim of ownership thereof.” Constructive knowledge of a complainant’s rights in a mark is a factor supporting a finding of bad faith. See Expedia, Inc. v. European Travel Network, D2000-0137 (WIPO Apr. 18, 2000).
23. Respondent is not using the Domain Name in connection with a bona fide offering of goods or services, or for legitimate noncommercial or fair use purposes. Respondent is using the domain name to cause confusion among and defraud Complainant’s members and the general public.
24. Respondent’s use of the Domain Name is likely to cause confusion in the marketplace and lead consumers to mistakenly believe that Respondent’s domain name is affiliated with Complainant. While some consumers may eventually figure out that Respondent does not actually have any connection with Complainant, Respondent will have already succeeded in using its confusingly similar domain name to attract and redirect those consumers for commercial gain.
25. Respondent’s intentional effort to attract and mislead consumers for commercial gain depends entirely upon its use of a domain that is confusingly similar to Complainant’s AMERICAN THORACIC SOCIETY mark.
26. Respondent’s behavior constitutes cybersquatting under Section 43(a)(d)(1)(A) of the Lanham Act, trademark infringement under Sections 32(1)(a) and 43(a) of the Lanham Act, unfair competition, and bad faith registration and use of the Domain Name under Paragraph 4(b)(iv) of the Policy. See, Yahoo! Inc. and GeoCities v. Data Art Corp., DataArt Enterprises, Inc., Stonybrook Investments, Global Net 2000, Inc., Powerclick, Inc., and Yahoo Search, Inc., D2000-0587 (WIPO Aug. 10, 2000).
B. Respondent
Respondent failed to submit a Response in this proceeding. However, Respondent sent a couple of emails, which said, “[D]ear i dont understand what you want ... i m ready to give you that domain and web as well ... then what is the issue ???” and “ok you can take the domain ... in against you give me any other domain”.
PRELIMINARY ISSUE – CONSENT TO TRANSFER
In its correspondence with the Forum, Respondent displays an apparent willingness to transfer ownership of the <americanthoracicsociety.pw> domain name, stating, “[O]k you can take the domain” and “i m [sic] ready to give you that domain.”
However, after the initiation of this proceeding, NameCheap, Inc. placed a hold on Respondent’s domain name. Therefore, Respondent cannot transfer the disputed domain name while this proceeding is still pending. When a respondent does not contest the transfer of a disputed domain name but instead agrees to transfer the domain name in question to Complainant, the Panel may decide to forego the traditional UDRP analysis and summarily order an immediate transfer of the <americanthoracicsociety.pw> domain name. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant . . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”); see also Disney Enters., Inc. v. Morales, FA 475191 (Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).
This Panel believes Respondent’s emails are not as clear as this Panel would require to find informed consent (this Panel thinks Respondent is not entirely sure what is transpiring).
Alternatively, some respondents use the “consent-to-transfer” approach as one way for cybersquatters to avoid adverse findings against them. In Graebel Van Lines, Inc. v. Tex. Int’l Prop. Assocs., FA 1195954 (Forum July 17, 2008), the panel stated that:
Respondent has admitted in his response to the complaint of Complainant that it is ready to offer the transfer without inviting the decision of the Panel in accordance with the Policy. However, in the facts of this case, the Panel is of the view that the transfer of the disputed domain name deserves to be along with the findings in accordance with the Policy.
This Panel would prefer to perform a full analysis regarding this case. Therefore, the Panel will analyze the case under each of the elements of the UDRP.
(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.
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 Complainant prove the following three elements to obtain an order cancelling or transferring a domain name:
(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(f), 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 (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 claims rights in the AMERICAN THORACIC SOCIETY mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,636,419, registered Feb. 26, 1991). Complainant need only prove it has registered its mark with some governmental authority (such as the USPTO) to prove its rights. Having done this, the Panel must conclude Complainant has rights in the AMERICAN THORACIC SOCIETY mark pursuant to Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶4(a)(i).).
Complainant claims Respondent’s <americanthoracicsociety.pw> domain name is confusingly similar to the AMERICAN THORACIC SOCIETY mark because it contains the entire mark along with the ccTLD “.pw.” A TLD (whether it is a gTLD, sTLD or a ccTLD) must be disregarded under a Policy ¶4(a)(i) analysis because every domain name is required to have a TLD. The domain also lacks the spaces between the words of the mark. Spaces are prohibited characters under domain name syntax, so their absence must be disregarded under a Policy ¶ 4(a)(i) analysis. Therefore, it seems obvious the <americanthoracicsociety.pw> domain name is identical (and not just confusingly similar) to the AMERICAN THORACIC SOCIETY mark. See Basic Trademark S.A. v. Antares S.p.A, FA 1130680 (Forum Mar. 4, 2008) (“The <robedikappa.us> domain name is identical to the ROBE DI KAPPA mark. The only difference is the omission of the space between the words and the addition of the ccTLD “.us,” which does not significantly distinguish the domain name from the mark.”).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case 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 has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (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); see also AOL LLC v. Gerberg, FA 780200 (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.”).
Complainant claims Respondent is not commonly known by the <americanthoracicsociety.pw> domain name and has not been permitted to use the AMERICAN THORACIC SOCIETY mark. The presently available WHOIS information lists “shaheer khan” as Registrant (the disputed domain name was originally registered using a privacy service). There is no obvious relationship between Respondent’s name and the domain name. There is no evidence on the record that Respondent is commonly known by the <americanthoracicsociety.pw> domain name. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant claims Respondent fails to use the <americanthoracicsociety.pw> domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving website is used to mislead, confuse, or perpetrate fraud by creating a false association with Complainant by displaying content copied from Complainant’s own website. Based upon this Panel’s review of the evidence, it certainly appears Respondent is trying to pass itself off as Complainant (although this Panel has not been able to figure out how Respondent will obtain commercial gain by owning the disputed domain name…except as a “ransom-like” play). This Panel finds Respondent fails to use the <americanthoracicsociety.pw> domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶4(c)(i) and Policy ¶4(c)(iii). See Kmart of Mich., Inc. v. Cone, FA 655014 (Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not a bona fide offering of goods or services pursuant to Policy ¶4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website).
Furthermore, Respondent used a WHOIS privacy service to register the disputed domain name. This means Respondent acquired no rights or legitimate interests by registering the domain name because it did nothing to publicly associate itself with the disputed domain name.
The Panel finds Policy ¶ 4(a)(ii) satisfied.
Complainant claims Respondent uses the <americanthoracicsociety.pw> domain name in bad faith because the resolving website is used to mislead, confuse, or perpetrate fraud by creating a false association with Complainant through the display of content copied from Complainant’s own website. Complainant has provided screenshots of its own website and screenshots of Respondent’s resolving website to demonstrate this use. This is sufficient to show Respondent is attempting to pass itself off as Complainant (although the Panel is unsure why Respondent is doing so). This means Respondent registered and uses the <americanthoracicsociety.pw> domain name in bad faith under Policy ¶ 4(b)(iv). See H-D Michigan, Inc. v. Petersons Auto., FA 135608 (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).
Complainant claims Respondent registered the <americanthoracicsociety.pw> domain name in bad faith because it did so with actual knowledge of Complainant’s rights in the AMERICAN THORACIC SOCIETY mark. Respondent knew at the time it registered the domain name that it was infringing upon Complainant’s rights (especially since Respondent copied Complainant’s web site content!). There is no other rational explanation: Respondent had actual knowledge of Complainant's mark and rights. This Panel finds Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Finally, registering a domain name using a privacy service in a commercial context raises a rebuttable presumption of bad faith registration and use. Respondent has done nothing to rebut this presumption. Therefore, the Panel is comfortable finding bad faith registration and use on this point alone.
The Panel finds Policy ¶ 4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <americanthoracicsociety.pw> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Monday, July 11, 2016
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