American Association of Colleges of Osteopathic Medicine v. Owner StdLogDMAM c/o Privacy Register Services
Claim Number: FA1006001329743
Complainant is American
Association of Colleges of Osteopathic Medicine (“Complainant”),
represented by David A. W. Wong, of Barnes & Thornburg LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <aacomas.org>, registered with Psi-Usa, Inc. d/b/a Domain Robot.
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 June 14, 2010.
On Jun 15, 2010, Psi-Usa, Inc. d/b/a Domain Robot confirmed by e-mail to the National Arbitration Forum that the <aacomas.org> domain name is registered with Psi-Usa, Inc. d/b/a Domain Robot and that Respondent is the current registrant of the name. Psi-Usa, Inc. d/b/a Domain Robot has verified that Respondent is bound by the Psi-Usa, Inc. d/b/a Domain Robot 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 June 18, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 8, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@aacomas.org by e-mail. Also on June 18, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
Complainant requested a Stay Order on July 9, 2010 that was granted. On August 23, 2010, Complainant’s request to lift the Stay Order was granted by the Forum. When the Stay was originally granted on July 9, 2010, it was after the expiration of the Response period, therefore upon the Forum granting Complainant’s request to lift the Stay Order the instant proceedings were allowed to proceed.
On August 26, 2010, 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" through submission of a Written Notice, as defined in Rule 1. 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 <aacomas.org> domain name is identical to Complainant’s AACOMAS mark.
2. Respondent does not have any rights or legitimate interests in the <aacomas.org> domain name.
3. Respondent registered and used the <aacomas.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, American Association of Colleges of Osteopathic
Medicine, is a provider of educational services in the osteopathic medical
field. Complainant has been providing
educational services to that end since 1898 in the
Respondent, Owner StdLogDMAM c/o Privacy Register Services, registered the <aacomas.org> domain name on December 12, 2001. Respondent’s disputed domain name resolves to a website that displays third-party links to educational goods and services in competition with Complainant.
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 has submitted evidence that it has applied for,
but not yet received, a trademark registration with the USPTO. Previous panels have found that a trademark
registration is not required to establish rights in a mark under Policy ¶
4(a)(i) if Complainant can show that its mark has acquired common law rights by
establishing secondary meaning in the public eye through continuous and
extensive use of the respective mark. See SeekAmerica
Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the
Rules do not require that the complainant's trademark or service mark be
registered by a government authority or agency for such rights to exist); see
also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat.
Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a
trademark registration if a complainant can establish common law rights in its
mark).
Complainant contends that its mark is an acronym that stands for “American Association of Colleges of Osteopathic Medicine Application Service.” Complainant alleges that it devised and began using its AACOMAS mark in 1975 in connection with educational services in the field of osteopathic medical education and as an application program for osteopathic medical students. Complainant asserts that it has been using its mark continuously and extensively since its inception to advertise and promote its services, and that it has established secondary meaning in the public marketplace as such. The Panel finds that Complainant has supplied sufficient evidence indicating that it has established common law rights in its AACOMAS under Policy ¶ 4(a)(i). See Ass’n of Tex. Prof’l Educators, Inc. v. Salvia Corp., FA 685104 (Nat. Arb. Forum May 31, 2006) (holding that the complainant had demonstrated common law rights in the ATPE mark through continuous use of the mark in connection with educational services for over twenty-five years); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (finding that the complainant had common law rights in the JERRY DAMSON ACURA mark because it provided sufficient evidence of its continuous use of the mark since 1989 in connection with a car dealership).
Complainant contends that the <aacomas.org> domain name is identical to its mark because the domain name merely adds the generic top-level domain (“gTLD”) “.org” to Complainant’s AACOMAS mark. The Panel finds that under the standards of Policy ¶ 4(a)(i), Respondent’s <aacomas.org> domain name is identical to Complainant’s AACOMAS mark. See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”); see also Microsoft Corp. v. Mehrotra, D2000-0053 (WIPO Apr. 10, 2000) (finding that the domain name <microsoft.org> is identical to the complainant’s mark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has contended that Respondent does not have any
rights or legitimate interests in the <aacomas.org> domain
name. Once Complainant makes a prima facie case in support of its allegations,
the burden shifts to Respondent to prove that it does have rights or legitimate
interests pursuant to Policy ¶ 4(a)(ii).
The Panel finds Complainant has made a sufficient prima facie case. Due to
Respondent’s failure to respond to the Complaint, the Panel may assume that
Respondent does not have rights or legitimate interests in the disputed domain
name. See Document Techs., Inc. v. Int’l Elec. Commc’ns Inc.,
D2000-0270 (WIPO June 6, 2000) (“Although Paragraph 4(a) of the Policy requires
that the Complainant prove the presence of this element (along with the other
two), once a Complainant makes out a prima facie showing, the burden of
production on this factor shifts to the Respondent to rebut the showing by
providing concrete evidence that it has rights to or legitimate interests in
the Domain Name.”); see also Charles
Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it
appropriate for the panel to draw adverse inferences from the respondent’s
failure to reply to the complaint).
However, the Panel will examine the record to determine whether
Respondent has rights or legitimate interests in the disputed domain name under
Policy ¶ 4(c).
Complainant alleges that Respondent is not commonly known by the disputed domain name or Complainant’s AACOMAS mark. The WHOIS information identifies “aacmos.com” as the registrant of the domain name and Respondent has not come forward with evidence indicating that it is commonly known by the disputed domain name. Further, Complainant asserts that it has not authorized Respondent to use its mark in any way and that Respondent is not affiliated with Complainant. Therefore, the Panel finds that Respondent, although it appears to be known as “aacomas.com,” is not commonly known by the <aacomas.org> domain name under Policy ¶ 4(c)(ii). See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that although the respondent listed itself as “AIM Profiles” in the WHOIS contact information, there was no other evidence in the record to suggest that the respondent was actually commonly known by that domain name); see also Nature’s Path Foods Inc. v. Natures Path, Inc., FA 237452 (Nat. Arb. Forum Apr. 2, 2004) (“In its WHOIS contact information, Respondent lists its name and its administrative contact as ‘Natures Path, Inc.’ However, since Respondent failed to respond to the Complaint, there has not been any affirmative evidence provided to the Panel showing that Respondent was commonly known by the disputed domain name prior to its registration of the domain name.”).
Complainant alleges and submits screen-shot evidence to show that Respondent is using the disputed domain name to display various third-party links to medical education products and services in competition with Complainant. Complainant alleges that Respondent receives click through fees from the businesses advertised on its website and that such use is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. The Panel agrees and finds that Respondent’s use of the disputed domain name to maintain a link directory to the competitors of Complainant is not a use in connection with 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 Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that the respondent’s use of domain names confusingly similar to the complainant’s WAL-MART mark to divert Internet users seeking the complainant’s goods and services to websites competing with the complainant did not constitute 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 also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (holding that using an identical or confusingly similar domain name to earn click-through fees via sponsored links to a complainant’s competitors does not represent 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)).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant alleges that Respondent is using the <aacomas.org> domain name to divert Internet users seeking Complainant’s educational products and services to Complainant’s competitors. The Panel finds that such use of an identical domain name is evidence of bad faith registration and use under 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 Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors).
Further, Complainant has alleged that Respondent receives click through fees from the businesses advertised on Respondent’s website resolving from the disputed domain name. Complainant contends that Respondent is attempting to attract Internet users to its website for commercial gain, and that such use is further evidence of Respondent’s bad faith registration and use of the <aacomas.org> domain name. The Panel agrees and finds that Respondent’s diversionary scheme in which it presumably collects click-through fees from the competing businesses advertised on its website is further evidence of registration and use in bad faith pursuant to Policy ¶ 4(b)(iv). See MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme); see also T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)).
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 <aacomas.org> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: September 7, 2010
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