DECISION

 

Articulate Global, LLC v. Arbit Chen / Articulate.AI

Claim Number: FA2410002119541

 

PARTIES

Complainant is Articulate Global, LLC ("Complainant"), represented by Caitlin R. Byczko of Barnes & Thornburg LLP, Indiana, USA. Respondent is Arbit Chen / Articulate.AI ("Respondent"), New York, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <articulateai.com>, registered with Amazon Registrar, Inc.

 

PANEL

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.

 

Debrett G. Lyons as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on October 8, 2024; Forum received payment on October 8, 2024.

 

On October 14, 2024, Amazon Registrar, Inc. confirmed by e-mail to Forum that the <articulateai.com> domain name is registered with Amazon Registrar, Inc. and that Respondent is the current registrant of the name. Amazon Registrar, Inc. has verified that Respondent is bound by the Amazon Registrar, 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 October 15, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 4, 2024 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@articulateai.com. Also on October 15, 2024, 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, Forum transmitted to the parties a Notification of Respondent Default.

 

On November 5, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Debrett G. Lyons as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant asserts trademark rights in ARTICULATE.  Complainant submits that the disputed domain name is confusingly similar to the trademark.  

 

Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.  Further, Complainant alleges that Respondent registered and used the disputed domain name in bad faith.

 

In particular, Complainant asserts that Respondent is using the disputed domain name to impersonate Complainant or appear to be an authorized partner of Complainant by hosting a website displaying Complainant's trademark and advertising AI assistant services highly similar to the Complainant's services.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

The factual findings pertinent to the decision in this case are that:

1.       Complainant is a developer of e-learning and training software, some with integrated AI features, sold by reference to the trademark ARTICULATE;

2.       Complainant is the owner of, inter alia, United States Patent & Trademark Office ("USPTO"), Reg. No. 2,856,506, registered June 22, 2004, for the word mark, ARTICULATE;

3.       the disputed domain name was registered on May 7, 2021, by Respondent using a false identity; and

4.       the disputed domain name directs to webpages displaying the trademark in connection with AI assistant services under the banner, "A new generation of AI agents".

 

DISCUSSION

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.

 

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.  

 

Identical and/or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires a two-fold enquiry - a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.

 

It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights (see, for example, Mothers Against Drunk Driving v. phix, FA 174052 (Forum Sept. 25, 2003)).  The Panel finds that Complainant has rights in the trademark, ARTICULATE, since it provides proof of registration of that term with the USPTO, a national trademark authority.

 

The disputed domain name wholly contains the ARTICULATE, adding the

trademark, and merely includes the gTLD, ".com", and the letters "ai"—a well understood acronym for artificial intelligence.  Those additions are of no distinctive value and the Panel finds the domain name confusingly similar to the trademark (see for example, Am. Int'l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Forum Dec. 31, 2007) (finding that a gTLD can be disregarded in making the comparison); Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) ("Where a relevant trademark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element."); Chai Research Corp. v. Yasin Ibrahim Ekiciler / AXIS STUDYO YAZILIM TICARET LIMITED SIRKETI, FA 2060334 (Forum October 6, 2023) (finding <chai-ai.com> confusingly similar to the complainant's CHAI trademark)).

 

The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

 

Rights or Legitimate Interests

Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:

 

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;  or

 

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights;  or

 

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

 

Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000)).

 

The publicly available WhoIs information shielded the name of the actual owner of the domain name but in consequence of these proceedings the Registrar has identified "Arbit Chen" as the registrant and "Articulate.AI" as the registrant organization. The Panel finds no evidence that Respondent might be commonly known by this name or the disputed domain name. Without evidence to the contrary, the Panel finds that the use of the trademark in the registrant organization name is a ruse to create legitimacy where none exists.

 

There is no evidence that Respondent has any trademark rights. Further, Complainant states that there is no association between the parties. Furthermore, the disputed domain name resolves to webpages using the trademark. The Panel is not entirely convinced of the claim that the webpages impersonate Complainant or create the appearance of an authorized partner of Complainant, but nonetheless finds that use of the trademark is without permission and that that the services on offer are competitive or at least similar services to Complainant's services. Such use does not give rise to rights or a legitimate interest (see, for example, Fadal Engineering, LLC v. DANIEL STRIZICH,INDEPENDENT TECHNOLOGY SERVICE INC, FA 1581942 (Forum Nov. 13, 2014) (finding that respondent's use of the disputed domain to sell products related to complainant without authorization "does not amount to 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)."); Barclays PLC v. Craven Casper, FA 1811368 (Forum Nov. 12, 2018) (finding that where the disputed domain name BARCLAYSBANKDELAWARE.US resolved to a site purported to offer banking services that were identical or closely related to financial services offered by complainant, there was not a bona fide or legitimate use)).

 

A prima facie case has been made and so the onus shifts to Respondent. In the absence of a Response, the Panel finds that Respondent has not discharged the onus and finds that Respondent has no rights or interests.

 

Complainant has accordingly satisfied the second limb of the Policy.

 

Registration and Use in Bad Faith

Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and used in bad faith.  

 

The Panel has already found confusing similarity between the domain name and the trademark. That confusion attracts Internet users to an online location intended for commercial gain. Paragraph 4(b)(iv) of the Policy circumscribes registration and use of a domain name in bad faith as follows:

 

(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent's website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on the site or location.

 

The Panel finds that paragraph 4(b)(iv) of the Policy has direct application to this case and so finds that the third and final element of the Policy is satisfied (see, for example, Metro. Life Ins. Co. v. Bonds, FA 873143 (Forum Feb. 16, 2007) : "The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant's METLIFE mark in order to profit from the goodwill associated with the mark.").

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is ORDERED that the <articulateai.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Debrett G. Lyons, Panelist

Dated: November 6, 2024