Aids Alive, Inc. v. DomainMarket.com
Claim Number: FA0809001224033
Complainant is Aids
Alive, Inc (“Complainant”), represented by Bruce A. McDonald, of Schnader Harrison Segal & Lewis LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <speakup.org>, registered with TierraNet Inc. d/b/a DomainDiscover.
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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 10, 2008; the National Arbitration Forum received a hard copy of the Complaint on September 10, 2008.
On September 11, 2008, TierraNet Inc. d/b/a DomainDiscover confirmed by e-mail to the National Arbitration Forum that the <speakup.org> domain name is registered with TierraNet Inc. d/b/a DomainDiscover and that Respondent is the current registrant of the name. TierraNet Inc. d/b/a DomainDiscover has verified that Respondent is bound by the TierraNet Inc. d/b/a DomainDiscover 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 September 17, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 7, 2008 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@speakup.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 14, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) as Panelist.
On October 16, 2008, Respondent submitted a response which was not timely under ICANN Rule 5(a). On October 21, 2008, Complainant submitted a supplemental statement objecting to Respondent’s response. Because it was not timely, the Panel did not consider Respondent’s response and did not consider Complainant’s Supplemental Statement.
On October 27, 2008, Respondent submitted a timely Supplemental Submission in response to Complainant's Supplemental Submission. Respondent's Supplemental Submission was not considered by the Panel.
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:
1. Respondent’s <speakup.org> domain name is identical to Complainant’s SPEAKUP! mark.
2. Respondent does not have any rights or legitimate interests in the <speakup.org> domain name.
3. Respondent registered and used the <speakup.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, AIDS Alive, Inc., is a non-profit organization that uses its service mark SPEAKUP! (Reg. No. 2,736,090 issued July 15, 2003) in connection with educational services and programs in the fields of AIDS and related issues.
Respondent registered the disputed <speakup.org> domain name on January 9, 2004, and is not currently making any active use of the disputed domain name. Respondent offered to lease the disputed domain name to Complainant in return for advertising on any corresponding website.
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 timely 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 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.”).
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.
Complainant has established sufficient rights in the
SPEAKUP! mark through registration with the USPTO pursuant to Policy ¶
4(a)(i). See Innomed
Techs., Inc. v. DRP Servs., FA 221171
(Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the
USPTO establishes Complainant's rights in the mark.”); see also Vivendi
Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11,
2003) (“Complainant's federal trademark registrations establish Complainant's
rights in the BLIZZARD mark.”).
Respondent’s <speakup.org> domain name includes Complainant’s SPEAKUP! mark, while omitting the exclamation point and adding the generic top-level domain “.org.” The Panel finds neither alteration to be material, since every domain name requires a top-level domain, and because exclamation points cannot be entered in a domain name. Therefore, the Panel finds that the disputed domain name is identical to Complainant’s mark under Policy ¶ 4(a)(i). See Sea World, Inc. v. JMXTRADE.com, FA 872052 (Nat. Arb. Forum Feb. 12, 2007) (“[Since] [t]he top-level gTLD is merely a functional element required of every domain name, the <shamu.org> domain name is identical to the SHAMU mark under a Policy ¶ 4(a)(i).”); see also Mrs. World Pageants, Inc. v. Crown Promotions, FA 94321 (Nat. Arb. Forum Apr. 24, 2000) (finding that punctuation is not significant in determining the similarity of a domain name and mark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent lacks rights and legitimate interests in the disputed domain name. Since Complainant has established a prima facie case supporting its allegations, Respondent thus bears the burden to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Respondent is not currently managing any operating websites that correspond to the disputed domain name, nor has Respondent made any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods and services. The Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See TMP Int’l, Inc. v. Baker Enters., FA 204112 (Nat. Arb. Forum Dec. 6, 2003) (“[T]he Panel concludes that Respondent's [inactive] holding of the domain name does not establish rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).”); see also Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in the domain name where there is no proof that the respondent made preparations to use the domain name or one like it in connection with a bona fide offering of goods and services before notice of the domain name dispute, the domain name did not resolve to a website, and the respondent is not commonly known by the domain name).
Respondent has failed to offer any evidence which suggests
that Respondent is commonly known by the disputed domain name. Furthermore, the WHOIS domain name
registration information fails to offer any contrary inference. Therefore, the Panel finds that Respondent
lacks rights and legitimate interests in the disputed domain names pursuant to
Policy ¶ 4(c)(ii). See Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat.
Arb. Forum Aug. 29, 2000) (finding that the respondent has no rights or
legitimate interests in domain names because it is not commonly known by the
complainant’s marks and the respondent has not used the domain names in
connection with a bona fide offering of goods and services or for a
legitimate noncommercial or fair use); see
also Wells Fargo & Co.
v. Onlyne Corp. Services11, Inc., FA
198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information
for the disputed domain [name], one can infer that Respondent, Onlyne Corporate
Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”).
The Panel also finds that
Respondent’s offer to lease the disputed domain name evidences its lack of
rights or legitimate interests under Policy ¶ 4(a)(ii). See
Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum
May 27, 2003) (holding that under the circumstances, the respondent’s apparent
willingness to dispose of its rights in the disputed domain name
suggested that it lacked rights or legitimate interests in the domain name); see also Wal-Mart Stores, Inc. v. Stork,
D2000-0628 (WIPO Aug. 11, 2000) (finding the respondent’s conduct purporting to
sell the domain name suggests it has no legitimate use).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent has offered to lease the disputed domain name to
Complainant in return for advertising space on a corresponding website. This constitutes bad faith registration and
use under Policy ¶ 4(b)(i). See Cruzeiro Licenciamentos Ltda. v. Sallen,
D2000-0715 (WIPO Sept. 6, 2000) (finding that mere passive holding of a domain
name can qualify as bad faith if the domain name owner’s conduct creates the
impression that the name is for sale); see also Educ. Testing Serv. v. TOEFL, D2000-0044 (WIPO Mar. 16, 2000)
(finding that a general offer of sale combined with no legitimate use of the
domain name constitutes registration and use in bad faith).
Respondent has owned the disputed domain name but has made
no preparations to develop the domain name.
Indeed, Respondent has failed to offer any evidence or assertions of
such intentions. Therefore, the Panel
finds that Respondent’s inactive use of the disputed domain name constitutes
bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See DCI
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 relief shall be GRANTED.
Accordingly, it is Ordered that the <speakup.org> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: November 4, 2008
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