The American Institute of Architects, Inc. v. Boriz Grinberg a/k/a Boris Greenberg
Claim Number: FA0204000109750
Complainant is The American Institute of Architects, Inc., Washington, DC (“Complainant”) represented by Jay A. Stephens. Respondent is Boriz Grinberg, a/k/a Boris Greenberg, Moscow, RUSSIA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <aiaconvention2000.com>, registered with Go Daddy Software.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on April 18, 2002; the Forum received a hard copy of the Complaint on April 22, 2002.
On April 19, 2002, Go Daddy Software confirmed by e-mail to the Forum that the domain name <aiaconvention2000.com> is registered with Go Daddy Software and that Respondent is the current registrant of the name. Go Daddy Software has verified that Respondent is bound by the Go Daddy Software 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 April 23, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 13, 2002 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 firstname.lastname@example.org by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On May 22, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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.” 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 that the domain name be transferred from Respondent to Complainant.
The disputed domain name <aiaconvention2000.com> is confusingly similar to Complainant’s famous AIA registered mark.
Respondent has no rights or legitimate interests in respect of the disputed domain name.
Respondent registered and used the disputed domain name in bad faith.
Respondent did not submit a Response in this proceeding.
Complainant has used the AIA mark as an abbreviation for its name, the American Institute of Architects, since 1857. Complainant holds several trademarks and service marks in AIA, registered on the Principal Register of the United States Patent and Trademark Office as early as 1965, including Reg. Nos. 799,532; 792,721; and 789,363; among others.
Complainant asserts that it has expended substantial resources to establish goodwill in its marks and that its marks are well known to consumers, architects, and the design and construction industry, both nationally and internationally.
Complainant currently operates a website at <aia.org> and formerly operated a website at the disputed domain name, although it allowed its registration of that name to lapse.
Respondent registered the disputed domain name on January 17, 2002, and has used the domain name to host pornographic material. An Internet user who attempted to locate information about Complainant’s organization through the disputed domain name contacted Complainant regarding the material hosted by Respondent at the 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 the 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.
Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) the 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.
Identical and/or Confusingly Similar
Complainant has demonstrated its rights in the AIA mark through registration with the U.S. Patent and Trademark Office and through continuous subsequent use.
The disputed domain name is confusingly similar to Complainant’s mark as it incorporates the entirety of the AIA mark and merely adds the term “convention” and the number “2000.”
Given that Complainant has previously used the domain name at issue to provide information about its organization and convention, it is likely that Internet users have and will continue to associate the disputed domain name with Complainant. The addition of the term “convention” to Complainant’s mark does little to defeat the impression of association in the minds of users and, thus, will not defeat a claim of confusing similarity. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the Complainant combined with a generic word or term); see also Space Imaging LLC v. Brownwell, 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).
Similarly, the addition of the number “2000” is of little consequence to the “confusingly similar” inquiry. See Omnitel Pronto Italia S.p.A. v. Carlo Dalla Bella, D2000-1641 (WIPO Mar. 12, 2001) (finding that the contested <omnitel2000.com> domain name was confusingly similar to the OMNITEL trademark); see also Hitachi, Ltd. v. Fortune Int’l Dev. Ent, D2000-0412 (WIPO July 2, 2000) (finding that the domain name <hitachi2000.net> is confusingly similar to Complainant’s mark); see also Nintendo of Am., Inc. v. Lizmi, FA 94329 (Nat. Arb. Forum Apr. 24, 2000) (finding that Respondent’s domain names <pokemon2000.com> and <pokemons.com> are confusingly similar to the Complainant’s mark).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Complainant has demonstrated its rights to and interests in its AIA mark. Because Respondent has not come forward with a Response, the Panel may presume it has no such rights or interests in the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).
The very fact that Complainant once held registration of the disputed domain name permits an inference that Respondent has no rights or legitimate interests in the name. See Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that Complainant’s prior registration of the same domain name is a factor in considering Respondent’s rights or legitimate interest in the domain name).
Respondent’s use of the disputed domain name to provide pornographic material will have a tarnishing effect on Complainant’s mark, and thus, does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Nat’l Football League Prop., Inc. v. One Sex Entm't. Co., D2000-0118 (WIPO Apr. 17, 2000) (finding that the Respondent had no rights or legitimate interests in the domain names <chargergirls.com> and <chargergirls.net> where the Respondent linked these domain names to its pornographic website); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that infringing on another's well-known mark to provide a link to a pornographic site is not a legitimate or fair use).
There is no evidence to suggest Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question).
Respondent has no rights or legitimate interests in respect of the disputed domain name. The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Respondent has not provided any explanation for its registration and use of the <aiaconvention2000.com> domain name. As such, the Panel may infer that Respondent registered and used the name, once held by Complainant, in a bad faith opportunistic attempt to trade on the fame and goodwill built up in Complainant’s well-known mark. See InTest Corp. v. Servicepoint, FA 95291 (Nat. Arb. Forum Aug. 30, 2000) (finding that where the domain name was previously used by the Complainant, subsequent registration of the domain name by anyone else indicates bad faith, absent evidence to the contrary); see also Chanel, Inc. AG v. Designer Exposure, D2000-1832 (WIPO Feb. 15, 2001) (finding that Respondent's registration and use of the famous CHANEL mark suggests opportunistic bad faith); see also London Metal Exch. Ltd. v. Hussain; D2000-1388 (WIPO Dec. 15, 2000) (finding that the “letters ‘lme’ are so obviously connected with a well-known entity that their very use by someone with no connection to Complainant suggests opportunistic bad faith”).
Further, by using Complainant’s mark to direct Internet users to pornographic material, Respondent will create confusion and tarnish Complainant’s mark. Such behavior demonstrates bad faith registration and use under the Policy. See Brown & Bigelow, Inc. v. Rodela, supra (use of another's well-known mark to provide a link to a pornographic site is evidence of bad faith registration and use); see also Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that absent contrary evidence, linking the domain names in question to graphic, adult-oriented websites is evidence of bad faith).
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 the requested relief should be hereby granted.
Accordingly, it is Ordered that the <aiaconvention2000.com> domain name be transferred from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: May 29, 2002
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