Amerigroup Corporation v. M3
c/o James Wyatt
Claim Number: FA0903001250762
PARTIES
Complainant is Amerigroup Corporation (“Complainant”), represented by Amy
G. Marino, of Williams Mullen, P.C.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <amerigroup.ws>,
registered with Register.com, Inc.
PANEL
The undersigned certifies that he or she has
acted independently and impartially and to the best of his or her knowledge has
no known conflict in serving as Panelist in this proceeding.
Maninder Singh as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the
National Arbitration Forum electronically on March
5, 2009; the National Arbitration Forum received a hard copy of the
Complaint on March 6, 2009.
On March 6,
2009, Register.com, Inc. confirmed
by e-mail to the National Arbitration Forum that the <amerigroup.ws> domain
name is registered with Register.com, Inc.
and that the Respondent is the current registrant of the name. Register.com,
Inc. has verified that Respondent is bound by the Register.com, Inc. 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 March 17,
2009, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of April 6,
2009 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@amerigroup.ws by
e-mail.
Respondent's Response was received
in electronic copy on April 6, 2009. However, in that the hard copy was
received subsequent to the Response deadline, the Response is considered
deficient under ICANN Rule 5.
An Additional Submission was received from
Complainant on April 13, 2009 and found to be timely and complete pursuant to
the National Arbitration Forum’s Supplemental Rule 7.
Pursuant to
Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Mr. Maninder Singh as
Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be
transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant Amerigroup Corporation (“Amerigroup”) has contended that it
is a leader in providing innovative health care, by offering managed healthcare
services to people who receive healthcare benefits through publicly sponsored
programs throughout the
It is the case of the complainant that the AMERIGROUP mark is federally
registered and incontestable pursuant to 15 USC 1065, 1115(b). Amerigroup has continuously
used the AMERIGROUP MARK IN COMMERCE SINCE AS EARLY AS 1997. Amerigroup also
owns several marks that contain the mark amerigroup that have been in
continuous use since 2005 in connection with the goods and services provided by
Amerigroup. Each of the above marks, among others, is federally registered with
the United States Patent & Trademark Office.
The various AMERIGROUP marks have been used in television and radio
commercials, in print advertisements, on the internet, newspapers, trade journals,
magazines, and in signs, banners, and numerous promotional materials. The
AMERIGROUP mark is widely understood to refer to the goods and services
provided by Amerigroup, and the company has built considerable goodwill in its
AMERIGROUP family of marks.
It has been contended that Amerigroup has invested great time, effort,
and resources in the development of a distinctive and well known series of
trademarks, service marks, and trade dress – all associated with a reputation
for quality healthcare services – such that its unique goods and services have
become widely recognized as emanating from Amerigroup and as maintaining only
the highest quality standards.
Respondent registered the <amerigroup.ws> domain name on
12.10.07. Respondent began using the disputed domain name to offer links to
health care related websites which appeared to directly compete with
Amerigroup. In October 2007, Amerigroup first notified the Respondent that it
objected to its registration and operation of a website at the domain name <amerigroup.ws>,
which was identical to Amerigroup’s AMERIGROUP federal service mark
registration and would cause consumers to believe that Respondent’s business,
goods and services advertised at <amerigroup.ws> originated form, was
endorsed by, or were the same as those Amerigroup.
Despite Amerigroup’s objections to Respondent’s use of the domain <amerigroup.ws>,
Respondent now uses the domain name <amerigroup.ws>, to resolve to an
adult pornographic website. Amerigroup has again contacted Respondent asking
him to take the website down. However, such efforts have been unavailing.
The disputed domain name <amerigroup.ws> registered by
Respondent, is confusingly similar to the AMERIGROUP marks; Respondent has no
rights or legitimate interests in relation to the domain name; and the domain
name has been registered and is being used in bad faith.
The addition to the AMERIGROUP mark of the inconsequential ccTLD does
nothing to detract from the distinctiveness of the AMERIGROUP marks. For the
purposes of Policy 4(a)(i), “domain names that contain a registered mark in its
entirety and add a generic term…are confusingly similar to the mark contained
therein”. Complainant has placed reliance on certain decisions of NAF.
Furthermore, when the disputed domain name was first reserved, it
provided links to websites that offered health care related goods and services
which were identical and directly competitive to those of Amerigroup.
Respondent’s use of a disputed domain name that is confusingly similar to Complainant’s
marks, for the purpose of diverting Internet users to competitive services does
not qualify as a bona fide offering of goods or services under Policy 4(c)(i)
or a legitimate non-commercial use under Policy 4(c)(iii). Continental Airlines
Inc. v. Liang Tu Hui, FA 0712001117471 (Nat’l Arb. Forum Jan. 15, 2008)
(“Respondent’s primary use of the <www.continentalairlines.com> domain
name is to deceivingly send Internet users to a website that features products
and services in direct competition with Complainant”); AOLLLC v. Web Master, FA
0607000747966 (Nat’l Arb. Forum Aug. 21, 2006) citing Bank of Am. Corp. v. Nw.
Free Cmty. Access, FA 180704 (Nat’l 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 bonafide 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)”); Tercent Inc. v. Lee Yi, FA
139720 (Nat’l Arb. Forum Feb. 10, 2003) (holding that the respondent’s use of
the disputed domain name to host a series of hyperlinks and a banner
advertisement was neither a bonafide offering of goods or services nor a
legitimate noncommercial or fair use of the domain name).
Respondent registered and used the disputed domain names in bad faith
pursuant to Policy 4(b)(iv), which provides in pertinent part: “The following
circumstances …. shall be evidence of the registration and use of a domain name
in bad faith …. by using the domain name, you have intentionally attempted to
attract, for commercial gain internet users to your website ….. by creating a
likelihood of confusion with the complainant’s mark as to the source,
sponsorship, affiliation, or endorsement of your website or location or of a
product or service on your website or location.”
The website at the disputed domain name here currently resolves or
links to a pornographic website. Based on para 4(b)(iv) of the Policy, numerous
WIPO panels have concluded that the use of a domain name which is confusingly
similar or identical to a trademark or service mark, that resolves or links to
sexually explicit websites constitutes bad faith registration and use. E.g.
Nat’l Football League Properties Inc. & Chargers Football Co. v. One Sex
Entertainment Co., a/k/a Chargergirls.net, WIPO Case no.D2000-0118 (April 17,
2000) (by redirecting internet users of the domain name
<chargergirls.net> to a pornographic website, respondent had “used the
name to attract, for commercial gain, internet users to its website by creating
a likelihood of confusion regarding whether the owner of the CHARGER GIRLS mark
was the source, sponsor, affiliate or endorser of its website.”); CCA Indus,
Inc. v. Bobby R. Dailey, WIPO Case No.D2000-0022 (March 4, 2003) (“it is
commonly understood, under WIPO case law, that whatever the motivation of
Respondent, the diversion of the domain names to a pornographic site is itself
certainly consistent with the finding that the Domain Name was registered and
is being used in bad faith”) (citing Caledonia Motor Group Ltd. v. Amizon, WIPO
Case no.D2001-0860 (Aug. 29, 2001); and Bass Hotels & Resorts, Inc. v. Mike
Rodgerall, WIPO Case No.D2000-0568 (Aug. 7, 2000) (“while a user who arrives at
the pornographic site may promptly conclude that it is not what he or she was
originally looking for, the registrant has already succeeded in its purpose of
using the service mark to attract the user with a view to commercial gain”);
and Nat’l Assoc. of Stock Car Auto Racing, Inc. (NASCAR) v. RMG Inc. – BUY or
LEASE by EMAIL, WIPO Case No.D2001-1387 (January 23, 2002) (“it is now well
known that pornographers rely on misleading domain names to attract users by
confusing, in order to generate revenue from click-through advertising,
mouse-trapping, and other pernicious online marketing techniques.”.).
Further, Respondent initially registered and “parked” the domain name <amerigroup.ws>
in 2007, allowing competitors of Complainant to offer competing services and
products through links on its website, creating likelihood of consumer
confusion regarding Complainant’s sponsorship of or affiliation with the
resulting websites. Respondent’s registration of the <amerigroup.ws> domain
name intentionally attracted and continues to attract internet users to
Respondent’s website for commercial gain by creating a likelihood of confusion
as to Complainant’s affiliation of the website and disputed domain name.
Internet users seeking Complainant’s products and services are likely to find
Respondent’s website due to its confusing similarity to Complainant’s mark.
Prior to the development of the pornographic website, users were offered
competing products, and consequentially confused as to Complainant’s source or
affiliation with the website or disputed domain name. Thus, Respondent’s
registration of the disputed domain name constitutes bad faith under Policy
4(b)(iv). In this regard, complainant has relied upon the following decisions:
-
(i.)
Owens
Corning v. NA, WIPO Case no.D2007-1143 (Oct. 1, 2007) (“the Panel is of the
view that by placing the Domain Name with a domain name parking service, the
Respondent deliberately attracted, for commercial gain, internet users to the
Respondent’s webpage … by trading a likelihood of confusion with the Complainant’s
mark.”);
(ii.)
Continental
Airlines Inc. Vs. Liang Tu Hui, FA 0712001117471 (Nat’l Arb. Forum Jan 15,
2008) (citing Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat’l Arb. Forum
June 23, 2003) (finding that the respondent’s use of the <saflock.com>
domain name to offer goods competing with the complainant’s illustrates the
respondent’s bad faith registration and use of the domain name, evidence of bad
faith registration and use pursuant to Policy 4(b)(iv); AltaVista Co. v.
Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy
4(b)(iv) where the respondent’s domain name resolved to a website that offered
links to third-party websites that offered services similar to the
complainant’s services and merely took advantage of Internet user mistakes);
Perot Sys. Corp. v. Perot.net, FA 95312 (Nat’l Arb. Forum Aug. 29, 2000)
(finding bad faith where the domain name in question is obviously connected
with the complainant’s well-known marks, thus creating a likelihood of
confusion strictly for commercial gain.)
Although the disputed domain name now resolves to a pornographic
website instead of competitive links, and a user who arrives at the site may
promptly conclude that it is not what he or she was looking for, the registrant
has already succeeded in its purpose of using Amerigroup’s mark to attract the
user with a view toward commercial gain. Such pernicious online marketing
techniques to generate revenue from click-through advertising are clear
evidence of bad faith.
B. Respondent
Respondent in his response dated
6.4.09 contended that it operates <amerigroup.ws> as an umbrella
website that unifies an affiliation of approximately 13 other websites. All
websites provide mature adult entertainment including pornographic content.
Respondent does not own a registered trademark; however, if Respondent did
apply or own a registered trademark, it would likely be in International Class
041 for entertainment related services. Respondent initially targeted this
web-based service for American military stationed outside the
Respondent further contended that on October 25, 2007 (Copy whereof has been annexed as Exhibit-1 with Respondent’s response), Amerigroup’s Representative sent a letter to Respondent regarding <amerigroup.ws>. On October 29, 2007 (Copy whereof has been annexed as Exhibit-2 with Respondent’s response), Respondent submitted a response via United State Postal Service Return Receipt Mail and explained that <amerigroup.ws> was an America-based website that acted as a “parent” website for many other affiliated sites. In addition, Respondent indicated that he did not believe there was any consumer confusion. More important, in the October 29, 2007 letter, Respondent indicated that if he did not hear back from Claimant by November 9, 2007, than he would consider this matter closed. Respondent did not hear back from Claimant and began to develop and promote <amerigroup.ws>.
Respondent also contended that upon launching <amerigroup.ws>, Respondent included the following announcement in his Terms of Use/Disclaimer:
“If you are not of legal age exit now! This site is in no way affiliated, connected with, or sponsored by AmeriGroup Inc, or any of its subsidiaries. This site is for adults over 18. The information in the Forums or from other people, blogs or web sites are provided at face value, we have not confirmed any of these stories/opinions. Copyrighted material has been used for non-commercial purposes only. By accessing this site you agree to immediately contact us to report any incorrect data. We are not responsible for accuracy in story content. Individuals, news organizations or companies on this web site do not endorse this web site and are not affiliated with it (copyrighted materials used without permission). Links to any other sites are for informational purposes only and should not be considered an endorsement of the site. Furthermore, a user must click on the terms of use to be directed from the landing page of www.amerigroup.ws to access the website.”
Respondent further requested that the Panel consider Exhibits 3, 4, 5 and 6 as well as requests that the Panel conduct a search using a major online search engine to consider that there are hundreds if not thousands of others that make use of the mark AMERI and AMERIGOUP. At least one entity has a USPTO Registered Trademark (Exhibit 7).
Respondent has further requested the Panel that <amerigroup.ws> does not take any sales away from AMERIGROUP. For these reasons and others, Respondent asserts that the goods and services are distinct and would not cause any consumer confusion. That is, an ordinary consumer would not be confused.
In addition, Respondent asks that
the Panel consider Exhibit 9 as further persuasive evidence that the use of
term “AMERI” convey a select standard of American quality and desirability that
takes pride in the
(i.) Whether, before any notice to the Respondent of the dispute, Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name is in connection with a bona fide offering of goods or services; or
(ii.) Whether Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if Respondent has not acquired trademark or service mark rights; or
(iii.)
Whether
Respondent is making a legitimate noncommercial or fair use of the domain name,
without intent for commercial gain to misleadingly divert consumers or to
tarnish the trademark or service mark at issue.
In addition, Respondent asks that
the Panel consider Exhibit 9 as further persuasive evidence that the use of
term “AMERI” convey a select standard of American quality and desirability that
takes pride in the
[c.] [Specify in the space below why the domain name(s) should not be considered as having been registered and being used in bad faith.] ICANN Rule 3(b)(ix)(3); ICANN Policy 4(a)(iii).
(i.)
Whether
there are circumstances indicating that Respondent has registered or has
acquired the domain name primarily for the purpose of selling, renting, or
otherwise transferring the domain name registration to the Complainant who is
the owner of the trademark or service mark or to a competitor of that
Complainant, for valuable consideration in excess of Respondent’s documented
out-of-pocket costs directly related to the domain name; or
(ii.) Whether Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii.) Whether Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv.) Whether by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s web site or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or location or of a product or service on Respondent’s web site or location.
Respondent has never included or offered any links to health care related websites. If necessary, Respondent is willing to submit an affidavit or any other information to rebut false and misleading information by Amerigroup.
In addition to the above responses,
Respondent also asked the Panel to consider the below communication sent on
January 5, 2009 to Amerigroup’s Representative. Amy G. Marino, Esq. Williams
Mullen A Professional Corporation 222 Central Park Avenue, Suite 1700
“Amy,
from my last communication with Mr. Eriksen, October 29th 2007 I understood that Amerigroup did not dispute the use of www.amerigroup.ws . Which lead me to the continuation of building and marketing the website.
The letter Mr. Eriksen sent me stated, “Please let us have your written response by no later than Friday, November 2,2007. Otherwise, we will advise our client to pursue all legal and equitable remedies available to it.”
In which I responded back informing Mr. Eriksen,” October 29, 2007 that Amerigroup.ws is our parent company which serves as an umbrella for our multiple adult porn sites and in no way will our website ( www.amerigroup.ws ) conflict with Health Care related services, that we are an adult entertainment business and we are making legitimate non-commercial and or fair us of domain name, without intent for commercial gain to mislead divert consumers or to tarnish the trademark or service at issue. I also informed Mr. Eriksen to, “Please let me have his written response by no later than Friday 9,2007. Otherwise I will take it that this argument is closed.” I relied on earlier communications and have continued to build and invest time and money into this site.
The lack of response from Mr. Eriksen October 29th 2007 has cost me a substantial loss.
C. Additional
Submissions
The Complainant made the following additional submissions:
Respondent falsely asserts that it “has never included or offered any
links to health care related websites”. On the contrary, the additional
documents and correspondence attached hereto as Exhibits 4-9 establish that
after registering the <amerigroup.ws> domain name (the
“Domain Name”) on October 12, 2007, Respondent immediately contacted
Complainant on October 14, 2007, seeking to establish a business relationship.
In this regard the Complainant has drawn the attention to Exhibit-4 Declaration
of Kimberly Solis and Exhibit-5 e-mail correspondence from M3beaumont@yahoo.com.
In that e-mail correspondence, Respondent indicated that his concept was very
simple. Providing a site that lists all physicians that accept your services
for the general public to be able to locate a physician in their area. Along
with advertisement that links directly to your “official site”.
Complainant did not desire to enter any such business deal with
Respondent and at all times, Complainant has objected to Respondent’s
registration and use of Complainant’s registered trademark name in the Domain
Name. Complainant’s counsel at Williams Mullen investigated and found that
Respondent was in fact using the Domain Name to provide sponsored links to
health care related websites which competed with Amerigroup. In this regard,
the Complainant has drawn the attention to Declaration of William R. Poynter
(Exhibit-7), website screen shot of <amerigroup.ws> dated October, 2007.
While referring to Respondent’s Response (Exhibit-1), Complainant stated that
his counsel immediately sent a cease and desist letter to the attention of
Respondent. While referring to Respondent’s Response (Ex.2), the Complainant
stated that in response to counsel’s letter, instead of agreeing to transfer
the Domain Name, Respondent threatened to use the Domain Name with the
pornographic website. Complainant never agreed to this use of the Domain Name
(Exhibit-4).
Nevertheless, in the letter of March 19, 2009 (Ex.7 of the Response)
Respondent’s counsel asserts that “Williams Mullen indicated that AMERIGROUP
would not pursue <amerigroup.ws>, and my client relied on these
representations”. It has been contended that this assertion is not true.
Complainant has at all times objected to Respondent’s registration and use of
the Domain Name, and Respondent’s bad faith is clear from the fact that he
continued to develop the website despite the lack of any affirmative
authorization from Complainant. Indeed, prior to launching the pornographic
website in connection with the Domain Name in January, 2009, Respondent
contacted Williams Mullen to inquire whether Complainant authorized such use.
Counsel reiterated that Complainant objected to his use of the Domain Name. In
this regard he drew the attention to e-mail correspondence of Amy G. Marino of
Williams Mullen with Respondent dated 5.1.09 (Ex.8) and Second Cease and Desist
Letter to Respondent dated 23.1.09 (Ex.9).
Despite Amerigroup’s objections to Respondent’s use of the Domain Name,
Respondent deliberately continues to use the Domain Name to resolve to a
pornographic website in bad faith. Respondent has failed to assert any rights
or legitimate interests in relation to the Domain Name, and Respondent’s
conclusion that its use of a name that is identical to Complainant’s registered
trademarks is not likely to cause confusion does not satisfy the standard under
ICANN Rule 3(b)(ix)(1) and (2) and ICANN Policy 4(a)(i) and (ii).
FINDINGS
The Panel finds that the domain name <amerigroup.ws>
registered by Respondent in bad faith, is confusingly similar to the AMERIGROUP
marks; Respondent has no rights or legitimate interests in relation to the
domain name; and the domain name is being used in bad faith.
The Panel also finds that the domain name <amerigroup.ws> deserves to be transferred to the
Complainant and the Respondent is not entitled to use this domain name. The
Complaint deserves to be allowed forthwith and the Panel decides accordingly.
However, in terms of the ICANN Policy and the requirements thereunder, the
formal observations / findings of the Panel are as under.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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.”
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:
the domain name registered by the Respondent is identical or
confusingly similar to a trademark or service mark in which the Complainant has
rights;
the Respondent has no rights or legitimate interests in respect of the
domain name; and
the domain name has been registered and is being used in bad faith.
The Panel finds that
Complainant has established rights in the AMERIGROUP mark under Policy 4(a)(i)
because Complainant holds a registration of the mark with the United States
Patent and Trademark Office (“USPTO”) (Reg. No. 2,215,444 issued December 29,
1998). See Miller
Brewing
Complainant asserts that Respondent’s <amerigroup.ws> domain name is identical to Complainant’s AMERIGROUP
mark because the disputed domain name contains
Complainant’s entire mark and adds the country code top-level domain (“ccTLD”)
“.ws.” The Panel accepts this
contention of the complainant and finds that the disputed domain name is
confusingly similar to Complainant’s mark under Policy 4(a)(i). See Oki Data Ams., Inc. v. ASD, Inc.,
D2001-0903 (WIPO Nov. 6, 2001) (“The fact that a domain name wholly
incorporates a Complainant’s registered mark is sufficient to establish
identity [sic] or confusing similarity for purposes of the Policy despite the
addition of other words to such marks”); see
also World Wrestling Fed'n
Entm't, Inc. v. Rapuano, DTV2001-0010 (WIPO May 23, 2001) (“The addition of the country code top level domain
(ccTLD) designation <.tv> does not serve to distinguish [the disputed
domain] names from the complainant’s marks since ‘.tv’ is a common Internet
address identifier that is not specifically associated with Respondent.”).
While Respondent contends that the <amerigroup.ws> domain name is comprised of common, descriptive terms
and as such cannot be found to be identical to Complainant’s mark, the
Panel finds that such a determination is
not necessary under Policy 4(a)(i) as this portion of the Policy considers only
while determining – (i) whether
Complainant has rights in the mark and (ii) whether the disputed domain name is
identical or confusingly similar to Complainant’s mark. See
Vance Int’l, Inc. v. Abend, FA
970871 (Nat. Arb. Forum June 7, 2007) (finding that because the complainant had
received a trademark registration for its VANCE mark, the respondent’s argument
that the term was generic failed under Policy 4(a)(i)); see also David Hall Rare Coins v. Tex. Int’l
Prop. Assocs., FA 915206 (Nat. Arb.
Forum Apr. 9, 2007) (“Respondent’s argument that each individual word in
the mark is unprotectable and therefore the overall mark is unprotectable is at
odds with the anti-dissection principle of trademark law.”).
The Panel accepts the contention of the Complainant that the
inconsequential ccTLD does nothing to detract from the distinctiveness of the
AMERIGROUP marks. For the purposes of Policy 4(a)(i), “domain names that
contain a registered mark in its entirety and add a generic term…are
confusingly similar to the mark contained therein.” The Complainant has rightly
placed reliance on the following decisions: -
(i.)
AOL_LLC v. Web Master, FA 747966 (Nat. Arb. Forum, Aug. 21, 2006)
(citing Arthur Guinness Son & Co. (Dublin)
Ltd. v. Healy/BOSTH, D2001-2006 (WIPO Mar. 23, 2007) (finding confusing
similarity where the domain name in dispute contains the identical mark of the
complainant combined with a generic word or term));
(ii.)
Am. Online, Inc. v.
(iii.) Rollerblade,
Inc. v. McCrady, D2000-0429
(WIPO June 25, 2000) finding that the top level of the domain name such as
“.net” or “.com” does not affect the domain name for the purpose of determining
whether it is identical or confusingly similar);
(iv.)W.
Union Holdings, Inc. v. Topiwala, D2005-0945 (WIPO Oct. 20, 2005) (finding <wuib.com> identical
to the complainant’s mark because the generic Top Level Domain “.com” after the
name WUIB is part of the Internet address and does not add source-identifying
significance).
On the issue of visual similarity as well, the Panel finds the
contention of the Complainant to be well founded and fully supported by the
decision in Microsoft Corp. v.
Microsof.com a/k/a Tarek Ahmed, D2000-0548 (WIPO Jul. 24, 2000),
contributing factors to the likelihood of confusion were held to be the visual
similarity between the domain name and the complainant’s mark, and the mark being
strong and immediately recognizable.
The Panel also finds substance in the contention raised by the
complainant that in determining a likelihood of confusion under the Uniform
Domain Name Dispute Resolution Policy, the disputed domain name is compared to
the registered marks, independent of marketing and other use factors ordinarily
utilized in Lanham Act cases brought in federal court. In this case, the
disputed domain name <amerigroup.ws> is nearly identical
to Amerigroup’s federally registered mark AMERIGROUP, and differs only from the
addition of the country-code Top Level Domain Name (“ccTLD”) extension “.ws.”
It is for the Complainant to first make a prima facie case that
Respondent lacks rights and legitimate interests in the disputed domain name
under Policy 4(a)(ii), and then the burden shifts to Respondent to show it does
have rights or legitimate interests. See
Hanna-Barbera Prods., Inc. v. Entm’t Commentaries,
FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must
first make a prima facie case that the respondent lacks rights and
legitimate interests in the disputed domain name under UDRP 4(a)(ii) before the
burden shifts to the respondent to show that it does have rights or legitimate
interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006)
(“Complainant must first make a prima facie showing that Respondent does not
have rights or legitimate interest in the subject domain names, which burden is
light. If Complainant satisfies its
burden, then the burden shifts to Respondent to show that it does have rights
or legitimate interests in the subject domain names.”).
The Panel finds
that the Complainant has discharged this burden. Complainant has contended
that, prior to Complainant’s cease-and-desist letter, Respondent’s <amerigroup.ws> domain name resolved to a website that contains
several hyperlinks to various third-party websites, some of which are in direct
competition with Complainant. Complainant
also contends that the disputed domain name now resolves to a pornographic
website. The Panel finds that Respondent’s conduct in diverting
Internet users to competitive or unrelated websites is not a bona fide offering of goods or services
under Policy 4(c)(i) or a legitimate noncommercial or fair use under Policy
4(c)(iii). See ALPITOUR
S.p.A. v. Albloushi, FA
888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention
of rights and legitimate interests in the <bravoclub.com> domain name
because the respondent was merely using the domain name to operate a website
containing links to various competing commercial websites, which the panel did
not find to be a use in connection with 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 also Target Brands, Inc. v. Bealo Group S.A.,
FA 128684 (Nat. Arb. Forum Dec. 17, 2002) (finding that use of the
<targetstore.net> domain name
to redirect Internet users to a pornographic website did not equate to a bona
fide offering of goods or services under Policy 4(c)(i), or a legitimate
noncommercial or fair use of a domain name under Policy 4(c)(iii)).
Complainant further asserts that Respondent
is not commonly known by the <amerigroup.ws> domain name because
Respondent is listed as “M3 c/o James Wyatt” in its WHOIS information. The
Panel finds that Respondent is not commonly known by the disputed domain name
under 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 Educ. Broad. Corp. v.
DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding
that the respondent was not commonly known by the <thirteen.com> domain
name based on all evidence in the record, and the respondent did not counter
this argument in its response).
Although Respondent contends that its use of
a disclaimer establishes that it has rights and legitimate interests in the
disputed domain name, the Panel still
finds that Respondent’s use of a disclaimer does not mitigate confusion and
thus, Respondent does not have any rights or legitimate interests in the
disputed domain name under Policy
4(a)(ii). See DaimlerChrysler
Corp. v. Bargman, D2000-0222
(WIPO May 29, 2000) (finding that addition of a disclaimer, when the domain
name consists of the complainant’s well-known trademark, does not counter the
expectation of Internet users that the domain name is sponsored by the
complainant); see also AltaVista Co. v.
AltaVisa, FA 95480 (Nat. Arb.
Forum Oct. 31, 2000) (finding that since a disclaimer does not, and could not,
accompany the domain name, then the “domain name attracts the consumer’s
initial interest and the consumer is misdirected long before he/she has the
opportunity to see the disclaimer”).
While Respondent contends that the <amerigroup.ws> domain name is comprised of common, descriptive terms
and as such cannot be found to be identical to Complainant’s mark, the Panel is
clearly of the view that such a determination is not necessary under Policy
4(a)(ii) as this portion of the Policy considers only whether Complainant has
rights in the mark and whether the disputed domain name is identical or
confusingly similar to Complainant’s mark. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 7, 2007)
(finding that because the complainant had received a trademark registration for
its VANCE mark, the respondent’s argument that the term was generic failed
under Policy 4(a)(i)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (“Respondent’s
argument that each individual word in the mark is unprotectable and therefore
the overall mark is unprotectable is at odds with the anti-dissection principle
of trademark law.”).
Respondent is not known individually, as a business, or in any other
manner by the disputed domain name, or by the name “Amerigroup” generally,
under Policy 4(c)(ii). The detailed records from the WHOIS database show that
the Registrant and the Administrative and Technical contacts for the disputed
domain names are listed as “M3 c/o James Wyatt,
The Panel finds that the Respondent does not have any right or
legitimate interests in the disputed Domain name.
Complainant asserts that Respondent
registered and used the <amerigroup.ws> domain name in bad faith
because the disputed domain name uses Complainant’s mark to resolve to a
pornographic website. In addition,
Complainant asserts that upon registration of the disputed domain name, the <amerigroup.ws> domain name
resolved to a website that contains several hyperlinks to various third-party
websites, some of which are in direct competition with Complainant. Complainant
repeats these bad faith assertions in its Additional Submission. The Panel agrees with Complainant’s
contentions that Respondent registered and used the disputed domain name in bad
faith under Policy 4(b)(iv). See
Google Inc. v. Bassano, FA
232958 (Nat. Arb. Forum Mar. 8, 2004) (holding that the respondent’s use of the
<googlesex.info> domain name to intentionally attract Internet users to a
website featuring adult-oriented content constituted bad faith registration and
use under Policy 4(b)(iv)); see also Zee TV USA, Inc. v. Siddiqi, FA
721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in
bad faith registration and use by using a domain name that was confusingly
similar to the complainant’s mark to offer links to third-party websites that
offered services similar to those offered by the complainant).
Although Respondent contends that its use of a
disclaimer eliminates any confusion, the Panel is of the view that Respondent’s
use of a disclaimer does not mitigate bad faith registration and use under
Policy 4(a)(iii). See Continental Airlines, Inc. v. Vartanian, FA 1106528 (Nat. Arb.
Forum Dec. 26, 2007) (“Respondent’s use of a disclaimer does note mitigate
a finding of bad faith under Policy 4(a)(iii) “); see also Auxilium Pharm.,
Inc. v. Patel, FA 642141 (Nat.
Arb. Forum Apr. 6, 2006) (“Respondent’s use of a disclaimer on its website does
not mitigate evidence of bad faith registration and use under Policy
4(a)(iii).”).
Respondent registered and used the disputed domain names in bad faith
pursuant to Policy 4(b)(iv), which provides in pertinent part: “The following
circumstances …. shall be evidence of the registration and use of a domain name
in bad faith …. by using the domain name, you have intentionally attempted to
attract, for commercial gain internet users to your website ….. by creating a
likelihood of confusion with the complainant’s mark as to the source,
sponsorship, affiliation, or endorsement of your website or location or of a
product or service on your website or location.”
The website at the disputed domain name here currently resolves or
links to a pornographic website. Based on paragraph 4(b)(iv) of the Policy,
numerous WIPO panels have concluded that the use of a domain name which is confusingly
similar or identical to a trademark or service mark, that resolves or links to
sexually explicit websites constitutes bad faith registration and use. E.g.,
Nat’l Football League Properties Inc. & Chargers Football Co. v. One Sex
Entertainment Co., a/k/a Chargergirls.net, D2000-0118 (WIPO Apr. 17, 2000)
(by redirecting internet users of the domain name <chargergirls.net> to a
pornographic website, respondent had “used the name to attract, for commercial
gain, internet users to its website by creating a likelihood of confusion
regarding whether the owner of the CHARGER GIRLS mark was the source, sponsor,
affiliate or endorser of its website.”); CCA
Indus, Inc. v. Bobby R. Dailey, D2000-0022 (WIPO Mar. 4, 2003) (citing Caledonia Motor Group Ltd. v. Amizon,
D2001-0860 (WIPO Aug. 29, 2001) (“it is commonly understood, under WIPO case
law, that whatever the motivation of Respondent, the diversion of the domain
names to a pornographic site is itself certainly consistent with the finding
that the Domain Name was registered and is being used in bad faith”)); Bass Hotels & Resorts, Inc. v. Mike
Rodgerall, D2000-0568 (WIPO Aug. 7, 2000) (“while a user who arrives at the
pornographic site may promptly conclude that it is not what he or she was
originally looking for, the registrant has already succeeded in its purpose of
using the service mark to attract the user with a view to commercial gain”); Nat’l Assoc. of Stock Car Auto Racing, Inc.
(NASCAR) v. RMG Inc. – BUY or LEASE by EMAIL, D2001-1387 (WIPO Jan. 23,
2002) (“it is now well known that pornographers rely on misleading domain names
to attract users by confusing, in order to generate revenue from click-through
advertising, mouse-trapping, and other pernicious online marketing techniques.”).
Further, Respondent initially registered and “parked” the <amerigroup.ws> domain name in
2007, allowing competitors of Complainant to offer competing services and
products through links on its website, creating likelihood of consumer
confusion regarding Complainant’s sponsorship of or affiliation with the
resulting websites. Respondent’s registration of the <amerigroup.ws> domain name intentionally attracted and
continues to attract internet users to Respondent’s website for commercial gain
by creating a likelihood of confusion as to Complainant’s affiliation of the
website and disputed domain name. Internet users seeking Complainant’s products
and services are likely to find Respondent’s website due to its confusing
similarity to Complainant’s mark. Prior to the development of the pornographic
website, users were offered competing products, and consequentially confused as
to Complainant’s source or affiliation with the website or disputed domain
name.
Thus, the Panel finds that Respondent’s registration of the disputed
domain name constitutes bad faith under Clause 4(b)(iv) of the Policy.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <amerigroup.ws> domain name be TRANSFERRED
from Respondent to Complainant.
(MANINDER SINGH)
Panelist
Dated: April 29, 2009
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