AARP v. janedomains
Claim Number: FA0810001230687
Complainant is AARP (“Complainant”),
represented by John J. Dabney of McDermott Will & Emery LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <aarpdiscounts.com>, registered with Godaddy.com, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically October 23, 2008; the National Arbitration Forum received a hard copy of the Complaint October 23, 2008.
On October 23, 2008, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <aarpdiscounts.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. Godaddy.com, Inc. verified that Respondent is bound by the Godaddy.com, Inc. registration agreement and thereby has 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 27, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 17, 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@aarpdiscounts.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 25, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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. The domain name that Respondent registered, <aarpdiscounts.com>, is confusingly similar to Complainant’s AARP mark.
2. Respondent has no rights to or legitimate interests in the <aarpdiscounts.com> domain name.
3. Respondent registered and used the <aarpdiscounts.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, the AARP, registered the AARP mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,047,005 issued August 24, 1976) for the promotion of the needs and interests of persons who are fifty years of age and older. Complainant has more than thirty-nine million members, over two thousand local chapters and provides to them a variety of products and services. Many of these services include “discounts” afforded to Complainant’s members for various third-party products and services.
Respondent registered the <aarpdiscounts.com> domain name March 9, 2005. It resolves to a website titled “AARP DISCOUNTS Fly Cheap” that offers a variety of third-party links to websites that offer travel product discounts and services that compete with those offered under the AARP mark. Additionally, the <aarpdiscounts.com> domain name are currently listed for sale under the <odshag.com> and <domainkiting.com> domain names. The <domainkiting.com> domain name is also owned by Respondent.
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."
Given 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 will draw such inferences as the Panel 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 Complainant to 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.
The Panel finds that Complainant established rights in the
AARP mark for the purposes of Policy ¶ 4(a)(i) through
its registration of the mark with the USPTO. See Metro. Life
Ins. Co. v. Bonds, FA
873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately
demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also VICORP Rests., Inc. v. Triantafillos,
FA 485933 (Nat. Arb. Forum July 14, 2005) (“Complainant has
established rights in the BAKERS SQUARE mark by registering it with the United
States Patent and Trademark Office (“USPTO”).”).
The <aarpdiscounts.com> domain name
incorporates Complainant’s AARP mark in its entirety followed by the
descriptive term “discounts” and the generic top level domain (“gTLD”) “.com.”
It is well-established that the inclusion of a gTLD is irrelevant to a Policy ¶
4(a)(i) analysis. Moreover, the use of the term “discounts”
does not serve to adequately distinguish the disputed domain name because
“discounts” describes the services and products Complainant provides to its
members. As a result of these findings, the Panel finds that the <aarpdiscounts.com>
domain name is confusingly similar to Complainant’s AARP mark pursuant to
Policy ¶ 4(a)(i). See Isleworth
Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27,
2002) (“[I]t is a well established principle that generic top-level domains are
irrelevant when conducting a Policy ¶ 4(a)(i)
analysis.”); see also Whitney Nat’l Bank
v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007) (“The additions
of generic words with an obvious relationship to Complainant’s business and a
gTLD renders the disputed domain name confusingly similar to Complainant’s mark
pursuant to Policy ¶ 4(a)(i).”).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
The first step in a Policy ¶ 4(a)(ii)
analysis is to determine whether Complainant has demonstrated a prima facie case that Respondent lacks
rights and legitimate interests in the disputed domain name. See VeriSign Inc. v. VeneSign
Respondent failed to reply to the Complaint. As a result, the Panel may presume that Respondent lacks rights to and legitimate interests in the disputed domain name. The Panel examines the record, however, to be certain that this presumption is not contradicted by any of the factors listed under Policy ¶ 4(c). 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 the complainant’s allegations are true unless clearly contradicted by the evidence).
Complainant contends that Respondent is not licensed or
otherwise authorized to use Complainant’s AARP mark in any way. Additionally,
the WHOIS information identifies Respondent solely under the “janedomains”
alias. Without any further information, the Panel finds that Complainant is not
commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA
139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s
WHOIS information implies that Respondent is ‘commonly known by’ the disputed
domain name” as one factor in determining that Policy ¶ 4(c)(ii)
does not apply); see also IndyMac Bank F.S.B. v. Eshback,
FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to
establish rights and legitimate interests in the <emitmortgage.com>
domain name as the respondent was not authorized to register domain names
featuring the complainant’s mark and failed to submit evidence of that it is
commonly known by the disputed domain name).
The <aarpdiscounts.com> domain name resolves to
a website utilizing Complainant’s AARP mark and contains a listing of links to
third-parties that provide products and services that compete with those
offered under Complainant’s mark. The Panel considers this to be neither 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 Meyerson v. Speedy Web,
FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has
failed to offer any goods or services on its website other than links to a
variety of third-party websites, it was not using a domain name in connection
with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or
a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb.
Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the
complainant’s marks to send Internet users to a website which displayed a
series of links, some of which linked to the complainant’s competitors, was not
a bona fide offering of goods or services).
Moreover, sufficient evidence in the record shows that the <aarpdiscounts.com>
domain name is being offered for sale by Respondent. This further confirms that
Respondent lacks any rights or legitimate interests in the disputed domain name
pursuant to Policy ¶ 4(a)(ii). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr.
25, 2007) (concluding that a respondent’s willingness to sell a domain name to
the complainant suggests that a respondent has no rights or legitimate
interests in that domain name under Policy ¶ 4(a)(ii)); see also Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum
Mar. 4, 2003) (“Respondent’s lack of rights and legitimate interests in the
domain name is further evidenced by Respondent’s attempt to sell its domain
name registration to Complainant, the rightful holder of the RED CROSS mark.”).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Respondent is utilizing the <aarpdiscounts.com>
domain name to offer a variety of links to third-party commercial websites that
offer travel products and services in competition with those legitimately
offered under Complainant’s AARP mark. The Panel finds that this establishes
Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v.
Domain Mgmt. Servs., FA
877982
(Nat. Arb. Forum Feb.
13, 2007) (concluding that the use of a confusingly similar domain name to
attract Internet users to a directory website containing commercial links to
the websites of a complainant’s competitors represents bad faith registration
and use under Policy ¶ 4(b)(iii)); see
also
Moreover, Complainant contends that it can be assumed that
Respondent is commercially benefiting from its use of the disputed domain name
through some type of referral fee service. The Panel agrees because the links
are to competitors of Complainant. Further, the disputed domain name
incorporates Complainant’s AARP mark. Complainant asserts that this is to
confuse Complainant’s members seeking Complainant online. Therefore, the Panel
finds that the confusingly similar <aarpdiscounts.com> domain name
is being used to commercially benefit and this evidence supports finding of Respondent’s
bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006)
(finding that the respondent’s use of the <arizonashuttle.net> domain
name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract
Internet traffic to Respondent’s website offering competing travel services
violated Policy ¶ 4(b)(iv)); see also Bank of Am. Fork v. Shen, FA
699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous
use of the <bankofamericanfork.com> domain name to maintain a web
directory was evidence of bad faith because the respondent presumably
commercially benefited by receiving click-through fees for diverting Internet
users to third-party websites).
Additionally, the record indicates that the <aarpdiscounts.com>
domain name is being offered for sale by Respondent. The Panel considers this
to be further evidence of Respondent’s bad faith registration and use pursuant
to Policy ¶ 4(b)(i). See Bank of Am.
Corp. v. Nw. Free Cmty. Access,
FA 180704 (Nat. Arb. Forum
Sept. 30, 2003) (“Respondent's general offer of the disputed domain name
registration for sale establishes that the domain name was registered in bad
faith under Policy ¶ 4(b)(i).”); see also
Am. Online, Inc. v. Avrasya
Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000)
(finding bad faith where the respondent offered domain names for sale); see also Banca Popolare Friuladria S.p.A. v.
Zago, D2000-0793 (WIPO Sept. 3, 2000) (finding bad faith where the
respondent offered the domain names for sale).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <aarpdiscounts.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: December 4, 2008.
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