American Society of Appraisers v.
Claim Number: FA0909001283241
Complainant is American Society of Appraisers (“Complainant”), represented by Jerome
C. Schaefer, of Whiteford,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <americansocietyofappraisers.com>, registered with Compana, LLC.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 8, 2009; the National Arbitration Forum received a hard copy of the Complaint on September 15, 2009.
On September 9, 2009, Compana, LLC confirmed by e-mail to the National Arbitration Forum that the <americansocietyofappraisers.com> domain name is registered with Compana, LLC and that Respondent is the current registrant of the name. Compana, LLC has verified that Respondent is bound by the Compana, LLC 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 23, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 13, 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@americansocietyofappraisers.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 19, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch as Panelist.
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 <americansocietyofappraisers.com> domain name is identical to Complainant’s AMERICAN SOCIETY OF APPRAISERS mark.
2. Respondent does not have any rights or legitimate interests in the <americansocietyofappraisers.com> domain name.
3. Respondent registered and used the <americansocietyofappraisers.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, American Society of Appraisers, is a professional association for appraisers. Complainant owns a registration with the United States Patent and Trademark Office (“USPTO”) for the AMERICAN SOCIETY OF APPRAISERS mark (Reg. No. 1,080,064 issued December 20, 1977).
Respondent registered the <americansocietyofappraisers.com> domain name on January 30,
2005. Respondent’s disputed domain name
resolves to a website displaying third-party websites offering appraisal
services in competition with Complainant.
Complainant
offers evidence that Respondent has a history of registering domain names
infringing upon the trademark rights of others, and has been ordered by
previous UDRP panels to transfer the disputed domain names to the respective
complainants. See Skyhawke Technologies, LLC v.
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 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 owns a registration for the AMERICAN SOCIETY OF
APPRAISERS mark with the USPTO (Reg. No. 1,080,064 issued December 20,
1977). The Panel finds that Complainant
has established rights in the AMERICAN SOCIETY OF APPRAISERS mark for purposes
of Policy ¶ 4(a)(i) through its service mark registration with the USPTO. See
Clear!Blue Holdings, L.L.C. v. NaviSite,
Inc., FA 888071 (Nat. Arb. Forum Mar. 5, 2007) (“The Panel finds that
Complainant has established trademark rights in the CLEAR BLUE marks through
introduction of the certificates for its U.S. registration for those
trademarks. The U.S. Trademark Act is
clear that the certificate of registration on the Principal Register, as here,
is prima facie evidence of the
validity of the registered mark and the registrant's exclusive right to use the
mark in commerce in on or in connection with the goods specified in the
registration.”); see also Lockheed Martin Corp. v. Hoffman, FA 874152 (Nat. Arb. Forum Jan. 31, 2007)
(finding that the complainant had sufficiently established rights in the SKUNK
WORKS mark through its registration of the mark with the USPTO).
Complainant argues that
Respondent’s <americansocietyofappraisers.com> domain name is identical to
Complainant’s AMERICAN SOCIETY OF APPRAISERS mark pursuant to Policy ¶
4(a)(i). Respondent’s disputed domain
name contains Respondent’s mark in its entirety, omits spacing between the terms,
and adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that the omission of spacing
and the addition of a gTLD are irrelevant in distinguishing a disputed domain
name from an established mark. See Little Six, Inc. v. Domain For
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent lacks all rights and
legitimate interests in the <americansocietyofappraisers.com>
domain
name. If Complainant makes a prima facie case in support of its
allegations, the burden shifts to Respondent to prove that rights and
legitimate interests exist pursuant to Policy ¶ 4(a)(ii). In the present case, the Panel finds that
Complainant has establised a prima facie
case. See AOL LLC v. Gerberg, FA 780200 (Nat.
Arb. Forum Sept. 25, 2006) (finding that if the complainant satisfies its prima facie burden, “then the burden
shifts to the respondent to show that it does have rights or legitimate
interest in the subject domain names.”); see
also SEMCO Prods., LLC v. dmg world
media (
Complainant contends that Respondent is neither commonly known
by, nor licensed to register the disputed domain name.
Respondent’s WHOIS information identifies Respondent as “Texas
International Property Associates – NA NA.”
The Panel finds that Respondent’s WHOIS information demonstrates that
Respondent is not commonly known by the disputed domain name. Therefore, pursuant to Policy ¶ 4(c)(ii),
Respondent lacks rights and legitimate interests in the <americansocietyofappraisers.com>
domain name. See G.D. Searle & Co. v.
Cimock, FA 126829 (Nat. Arb. Forum Nov. 13,
2003) (“Due to the
fame of Complainant’s mark there must be strong evidence that Respondent is
commonly known by the disputed domain name in order to find that Respondent has
rights or legitimate interests in the disputed domain name pursuant to Policy ¶
4(c)(ii). However, there is no evidence
on record, and Respondent has not come forward with any proof to establish that
it is commonly known as CELEBREXRX or <celebrexrx.com>.”); see also 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).
Respondent registered <americansocietyofappraisers.com>
domain name on January
30, 2005 and is using it to display links advertising third-party
websites offering appraisal
services in competition with Complainant. The Panel infers that Respondent is using the
disputed domain name to earn click-through fees, and thus finds that Respondent
has not made 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 Wells Fargo & Co. v. Lin Shun Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that
using a domain name to direct Internet traffic to a website featuring pop-up
advertisements and links to various third-party websites is neither a bona
fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii) because the registrant
presumably receives compensation for each misdirected Internet user); see also Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that
the respondent was not using the domain names for a bona fide offering
of goods or services nor a legitimate noncommercial or fair use because the
respondent used the names to divert Internet users to a website that offered
services that competed with those offered by the complainant under its marks).
The Panel finds that Policy ¶
4(a)(ii) has been satisfied.
Complainant offers evidence of
Respondent’s documented history registering domain names containing the
registered trademarks of others. See Skyhawke Technologies, LLC v.
The Panel finds that Respondent’s use of the <americansocietyofappraisers.com> domain name to disrupt the business of Complainant by displaying links to competitors that offer appraisal services is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See EBAY, Inc. v. MEOdesigns, D2000-1368 (Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites); see also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”).
In addition, Respondent is using the <americansocietyofappraisers.com> domain name to intentionally
divert Internet users to the associated website, which displays third-party
links to competing websites offering appraisal servicse. In cases such as this, the Panel assumes that
Respondent is collecting click-through fees and attempting to profit by
creating a likelihood of confusion between Complainant’s mark and the disputed
domain name. The Panel finds that Respondent’s
use of the disputed domain name is further evidence of bad faith registration
and use pursuant to Policy ¶ 4(b)(iv). See 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); see
also
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 <americansocietyofappraisers.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: October 30, 2009
National
Arbitration Forum