The American Institute of Architects,
Inc. v. Boriz Grinberg a/k/a Boris Greenberg
Claim Number: FA0204000109750
PARTIES
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.
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.
The
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
PROCEDURAL HISTORY
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 postmaster@aiaconvention2000.com 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.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
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.
B.
Respondent
Respondent
did not submit a Response in this proceeding.
FINDINGS
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.
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.”
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.
DECISION
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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