AARP v. BWI Domain Manager
Claim Number: FA0710001094042
Complainant is AARP (“Complainant”), represented by Melise R. Blakeslee, of McDermott Will & Emery LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <aarpfunds.org>, registered with Rebel.com.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 12, 2007; the National Arbitration Forum received a hard copy of the Complaint on October 15, 2007.
On October 17, 2007, Rebel.com confirmed by e-mail to the National Arbitration Forum that the <aarpfunds.org> domain name is registered with Rebel.com and that Respondent is the current registrant of the name. Rebel.com has verified that Respondent is bound by the Rebel.com 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 October 19, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 8, 2007 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@aarpfunds.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 13, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant is a nonprofit corporation that addresses the needs and interests of persons who are 50 years of age and older.
The AARP service mark has been used continually by Complainant for more than 40 years, and was registered with the United States Patent and Trademark Office (“USPTO”) on August 24, 1976 (Reg. No. 1,047,005).
Among the products and services offered by Complainant are financial services, including investment advice, as well as money market and other investment funds, called AARP FUNDS.
Complainant registered the AARP FUNDS service mark with the USPTO on July 3, 2007 (Reg. No. 3,258,740), having filed for this registration on August 31, 2006.
Respondent registered the <aarpfunds.org> domain name on May 1, 2007.
Respondent is not and never has been commonly known by the disputed domain name.
Respondent is using the disputed domain name for commercial gain by advertising links to products and services competing with those of Complainant.
Respondent’s <aarpfunds.org> domain name is identical to Complainant’s AARP FUNDS service mark.
Respondent does not have any rights to or legitimate interests in the <aarpfunds.org> domain name.
Respondent registered and uses the <aarpfunds.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is substantively identical to a 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."
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant registered the AARP FUNDS service mark with the USPTO, and has therefore established rights to the mark pursuant to Policy ¶ 4(a)(i). Complainant’s filing of the mark with the USPTO before Respondent registered the disputed domain name secures Complainant’s rights to the mark. See Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of a complainant’s rights in a mark date back to the application’s filing date); see also Thompson v. Zimmer, FA 190625 (Nat. Arb. Forum Oct. 27, 2003): “As Complainant’s trademark application was subsequently approved by the U.S. Patent and Trademark Office, the relevant date for showing ‘rights’ in the mark for the purposes of Policy ¶ 4(a)(i) dates back to Complainant’s filing date.”
Respondent’s <aarpfunds.org> domain name is substantively identical to Complainant’s mark with the exception of the generic top-level domain (“gTLD”) “.org”. Because all domain names are required to have a top-level domain, Respondent’s inclusion of the gTLD does not distinguish the disputed domain name from Complainant’s AARP FUNDS mark. Therefore, the disputed domain name is identical to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Koninklijke Philips Elecs. NV v. Goktas, D2000-1638 (WIPO Feb. 8, 2001) (finding that the domain name <philips.org> is identical to a complainant’s PHILIPS mark); see also BMW AG v. Loophole, D2000-1156 (WIPO Oct. 26, 2000) (finding that there is “no doubt” that the domain name <bmw.org> is identical to a complainant’s well-known and registered BMW trademarks).
The Panel therefore finds that Policy ¶ 4 (a)(i) has been satisfied.
Complainant asserts that Respondent has neither rights to nor legitimate interests in the disputed domain name. Complainant has the initial burden of showing that Respondent lacks rights and legitimate interests in the disputed domain name. Once Complainant makes out a prima facie case, the burden shifts to Respondent to show that it nonetheless has rights to or legitimate interests in the disputed domain name. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001):
Proving that the Respondent has no rights or legitimate interests in
respect of the Domain Name requires the Complainant to prove a negative. For
the purposes of this sub paragraph, however, it is sufficient for the
Complainant to show a prima facie case and the burden of proof is then shifted
on to the shoulders of Respondent. In
those circumstances, the common approach is for respondents to seek to bring
themselves within one of the examples of paragraph 4(c) or put forward some
other reason why they can fairly be said to have a relevant right or legitimate
interests in respect of the domain name in question.
See also 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).”
Complainant has made out a prima facie showing that Respondent lacks rights to and legitimate
interests in the <aarpfunds.org>
domain name. And, because Respondent has
failed to answer the Complaint, we may presume that Respondent lacks all rights
and legitimate interests in the disputed domain name. 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 Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence).
Despite Respondent’s failure to respond to the Complaint, we will examine the evidence of record to determine if there is any basis for concluding that Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
We begin by noting that Complainant claims, and Respondent does not deny, that Respondent is not and never has been commonly known by the disputed domain name. In addition, the WHOIS information makes no indication that Respondent is commonly known by the <aarpfunds.org> domain name. Therefore, pursuant to Policy ¶ 4(c)(ii), we conclude that Respondent is not commonly known by the disputed domain name. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating that the fact that “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that a respondent does not have rights in a domain name when that respondent is not known by the mark).
We also observe that there is no dispute as to Complainant’s
allegation that Respondent’s website associated with the disputed domain name
advertises links to competing products and services, presumably for
Respondent’s financial gain. This is 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). See Bank of Am. Corp. v. Nw. Free
Cmty. Access, FA 180704 (Nat.
Arb. Forum Sept. 30, 2003):
Respondent's demonstrated intent to divert Internet users
seeking Complainant's website to a website of Respondent and for Respondent's
benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use
under Policy ¶ 4(c)(iii).
See also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that a respondent’s use of a disputed domain name to redirect Internet users to a financial services website which competed with the business of a complainant was not a bona fide offering of goods or services).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
We have already concluded that Respondent uses the <aarpfunds.org> domain name for commercial gain by advertising links to products and services competing with those of Complainant. Respondent’s domain name, which is substantively identical to Complainant’s mark, is capable of creating confusion as to Complainant’s potential sponsorship, affiliation or endorsement of the competing services advertised on Respondent’s website. This constitutes evidence of registration and use in bad faith under Policy ¶ 4(b)(iv). See TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003): “Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be misled to Respondent’s website at the <century21realty.biz> domain name, which features links for competing real estate websites. Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.” See also Qwest Comm’ns Int’l Inc. v. Ling Shun Shing, FA 187431 (Nat. Arb. Forum Oct. 6, 2003): “Respondent has attempted to commercially benefit from the misleading <qwestwirless.com> domain name by linking the domain name to adult oriented websites, gambling websites, and websites in competition with Complainant. Respondent’s attempt to commercially benefit from the misleading domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv).”
Further, we are persuaded that Respondent’s use of the
disputed domain name to advertise links to competing products and services
constitutes bad faith registration and use under Policy ¶ 4(b)(iii). See S.
Exposure v. S. Exposure, Inc., FA 94864 (Nat.
Arb. Forum July 18, 2000) (finding that a respondent acted in bad faith by
attracting Internet users to a website that competes with a complainant’s
business); see also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003):
Respondent registered a domain name confusingly similar to
Complainant's mark to divert Internet users to a competitor's website. It is a
reasonable inference that Respondent's purpose of registration and use was to
either disrupt or create confusion for Complainant's business in bad faith
pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <aarpfunds.org> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: November 26, 2007
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