AMERIGROUP Corporation v. Ray Barnett Consulting
Claim Number: FA1010001351238
Complainant is AMERIGROUP Corporation ("Complainant"), represented by William R. Poynter of Williams Mullen, P.C., Virginia, USA. Respondent is Ray Barnett Consulting ("Respondent"), Virginia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <amerigroupsucks.com>, registered with Blue Razor Domains, Inc.
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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 8, 2010; the National Arbitration Forum received payment on October 8, 2010.
On October 8, 2010, Blue Razor Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <amerigroupsucks.com> domain name is registered with Blue Razor Domains, Inc. and that Respondent is the current registrant of the name. Blue Razor Domains, Inc. has verified that Respondent is bound by the Blue Razor Domains, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 13, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 2, 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@amerigroupsucks.com. Also on October 13, 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.
A timely Response was received and determined to be complete on November 2, 2010.
A timely Additional Submission was received from Complainant and determined to be complete on November 8, 2010.
On November 12, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Debrett G. Lyons as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant alleges trademark rights in the term AMERIGROUP and submits that the disputed domain name, <amerigroupsucks.com>, is confusingly similar to the trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered and is using the disputed domain name in bad faith.
B. Respondent
Respondent broadly denies those allegations and states that it registered the domain name with the intention to develop a protest website. Respondent asserts that Ray Barnett is Complainant’s former employee and that Barnett quit his employment with Complainant because of workplace issues.
The domain name is parked. Respondent argues that it has no control over the parked website’s contents and that GoDaddy.com has added hyperlinks. Respondent claims that it has not had any commercial gain from his use of the disputed domain name.
1. Complainant provides managed healthcare services.
2. Complainant first used the trademark AMERIGROUP in relation to those services in 1997 and has used the trademark continuously since that time.
3. The trademark is registered with the USPTO.[i]
5. Complainant has not licensed or otherwise permitted the Respondent to use the trademark or to register or use any domain name incorporating the trademark, nor any variation of it.
6. Respondent registered the disputed domain name on May 7, 2010.
7. The domain name resolves to a website that provides hyperlinks to third-party websites, including websites that offer health care related goods and services that compete with Complainant’s business.
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."
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.
The Panel finds that Complainant has rights in the trademark by virtue of U.S. Federal registration.[ii] Panel also finds that the disputed domain name is confusingly similar to Complainant’s trademark.[iii] Both parties made well-worn submissions about the issue of confusion in so-called “sucks” cases. The Panel repeats here what it said in Red Bull GmbH v. Carl Gamel, Case No. D2008-0253 involving the disputed domain name <redbullsucks.com>:
… the Panel is concerned to address […] arguments perpetuated by the Complaint which it regards as specious. The first is that in so‑called “sucks” cases under this Policy, confusing similarity should be assessed by analogy with decisions which have considered domain names consisting of a complainant’s trademark together with a descriptive or otherwise generic term.[iv] …
This Panel’s view is that it is not helpful to characterize “sucks” as a generic term in the same way earlier cases have held “buy‑”, “cheap‑”, “‑online” and numerous similar terms to be non‑distinctive. The virtually universal finding of confusing similarity in those cases is based on the primacy accorded to a complainant’s (usually well known) trademark over added matter of no source distinguishing value.
Trademark jurisprudence carries with it a long and unresolved debate as to whether trademarks deserve protection as “badges of origin” or as “badges of control”. Within the former paradigm, there is no respectable argument that “red bull” and “red bull sucks” would cause confusion as to source.
In a case relied upon by the Complainant, ADT Services AG v ADT Sucks.com, WIPO Case No. D2001‑0213, the Panel said that “[T]he addition of the words “sucks” is a crude attempt to tarnish the mark”. It, and cases like it, which use language such as “tarnishment” and “dilution”, align themselves with the protection of trademarks as badges of control. Put crudely, those laws which protect trademarks from dilution in some way, through threat of infringement, are not rationalised on confusion as to origin.
Paragraph 4(a)(i) of the Policy simply asks whether the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. …
The proper approach to the assessment of confusing similarity in “sucks” cases was taken by David Bernstein in Wal‑Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No.D2000‑0662, where it was said:
“Complainant contends that consumers are likely to believe that any domain name incorporating the sequence “Wal‑Mart” or a close approximation thereof is associated with Complainant. In the ordinary case, when a generic term is appended to the trademark (such as the domain name walmartstores.com), this would be so. But the fame of a mark does not always mean that consumers will associate all use of the mark with the mark’s owner. No reasonable speaker of modern English would find it likely that Wal‑Mart would identify itself using wal‑martsucks.com. Complainant has no evidence of any potential confusion. The Panel specifically rejects Complainant’s argument that consumers are likely to be confused as to the sponsorship or association of a domain name that combines a famous mark with a term casting opprobrium on the mark.
Nevertheless, the Panel understands the phrase “identical or confusingly similar” to be greater than the sum of its parts. The Policy was adopted to prevent the extortionate behavior commonly known as “cybersquatting”, in which parties registered domain names in which major trademark owners had a particular interest in order to extort money from those trademark owners. This describes Respondent’s behavior. Thus, the Panel concludes that a domain name is “identical or confusingly similar” to a trademark for purposes of the Policy when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name. In other words, the issue under the first factor is not whether the domain name causes confusion as to source (a factor more appropriately considered in connection with the legitimacy of interest and bad faith factors), but instead whether the mark and domain name, when directly compared, have confusing similarity.
… … …
The Panel is cognizant of the importance of protecting protest sites that use a trademark to identify the object of their criticism. The “legitimate interest” and “bad faith” factors should adequately insulate true protest sites from vulnerability under the Policy, especially as the Complainant retains the burden of proof on each factor.”
The preferable view is that paragraph 4(a)(i) of the Policy does not depend on a strict application of trademark confusion theory. The “sucks” cases are better regarded as examples of how the object of the Policy informs the meaning of confusing similarity under the Policy. Shoe‑horning “sucks” cases into a traditional trademark infringement analysis is unconstructive. The question is whether, in the abstract, which amongst other things means putting to one side the repute the trademark in question might enjoy, the domain name and the trademark have confusing similarity.
The Panel finds that Complainant has satisfied the first limb of the Policy.
Complainant has the burden to establish that Respondent has no rights or legitimate interests in the domain name. Nevertheless, it is well settled that Complainant need only make out a prima facie case, after which the onus shifts to Respondent to demonstrate rights or legitimate interests.[v]
Complainant has stated there to be no relationship between it and Respondent so there is no issue in this case of authorized usage of the trademark or permission to register the domain name. The WHOIS data does not support any argument that Respondent might be commonly known by the disputed domain name. There is no evidence that Respondent has trademark rights established through use or registration.
Panel finds that Complainant has established a prima facie case and that the burden shifts to Respondent.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of Paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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.
Respondent’s sole argument is that it proposes to use the disputed domain name to host a protest website. That website does not exist and there is no proof of its imminent existence. Instead, the evidence shows that a website corresponding with the disputed domain name carries links to service providers in competition with Complainant.[vi] That is not non-commercial use. It is accordingly impossible for Respondent to bring itself under the protection of Paragraph 4(c)(iii). Moreover, it is open to the Panel to make the inference that it is more likely than not Respondent profits from this use of a confusingly similar domain name through the receipt of pay-per-click fees. Respondent thus uses the domain name for commercial gain and not in connection with a bona fide offering of goods or services under Paragraph 4(c)(i) of the Policy.
Panel finds that Respondent has no rights or legitimate interests in the domain name and so Complainant has established the second limb of the Policy.
Paragraph 4(b) of the Policy sets out the circumstances which shall be evidence of the registration and use of a domain name in bad faith. They are:
(i) circumstances indicating that you have registered or you have 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 your documented out‑of‑pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 your website or location or of a product or service on your website or location.
What is noteworthy about Paragraphs 4(b)(i) – (iv) is that they are cases of both registration and use in bad faith. Paragraph 4(b) is not exhaustive and other instances of bad faith might be in evidence but, in those instances, the Panel must be able to find both bad faith registration and bad faith use. It is therefore logical to first test the facts against these given circumstances.
The Complainant alleges that the Respondent’s conduct falls under paragraphs 4(b)(iii) and (iv).
Clearly, Paragraph 4(b)(iii) is inapplicable since the parties are not competitors. Panel can attach no merit to Complainant’s submissions.
Paragraph 4(b)(iv) requires Respondent to have created a likelihood of confusion by using the domain name. The confusion must be as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. To make that finding would be at odds with the Panel’s earlier comments in relation to paragraph 4(a)(i) of the Policy. The Complainant’s argument accordingly fails.
Panel must therefore assess whether use and registration were in bad faith. The act of linking a disputed domain name to competitors in business of Complainant has long been held bad faith use. That is so whether or not a registrant takes responsibility for what might be done with a parked domain name. The Panel finds bad faith use in this case.
The Panel also finds registration in bad faith. In so doing, it is keen to underscore that registration of a domain name for use in connection with a genuine protest site is not per se proof of bad faith. Instead, on the evidence before this Panel:
· there is no proof work on that protest site was ever commenced (indeed Respondent admits to having made no progress),
· Respondent by its own admission has a personal “gripe” with Complainant,
· Respondent took no interest in the material posted to the website by the parking service,
· that material was antithetical to Complainant’s interests, and
· it can be reasonably inferred that Respondent was indifferent to any disruption that material might have caused to Complainant’s business.
Panel finds that the domain name was both registered and used in bad faith and that Complainant has accordingly satisfied the third and last element under the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <amerigroupsucks.com> domain name be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons,
Sole Panelist
Dated: November 15, 2010
[i] United States Patent and Trademark Office Reg. No. 2,215,444 issued December 29, 1998.
[ii] See Innomed Techs., Inc. v. DRP Servs., NAF Case No. 221171 (“Registration of the NASAL‑AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Men’s Wearhouse, Inc. v. Wick, NAF Case No. 117861 (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive [or] have acquired secondary meaning.”).
[iii] See Rollerblade, Inc. v. McCrady, WIPO Case No. D2000‑0429 (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); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., NAF Case No. 153545 (“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 the subsequent analysis in this decision.
[iv] See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, WIPO Case No. D2001‑0026 (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Space Imaging LLC v. Brownell, eResolution Case No. 0298 (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business); see also AXA China Region Ltd. v. KANNET Ltd., WIPO Case No. D2000‑1377 (finding that the <axachinaregion.com> domain name “is confusingly similar to the Complainant's trade mark ‘AXA’” because “common geographic qualifiers or generic nouns can rarely be relied upon to differentiate the mark if the other elements of the domain name comprise a mark or marks in which another party has rights”); see also J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition §23:50 (4th ed. 1998) (a user of a mark generally “may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or non‑descriptive matter to it”).
[v] See Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 23, 2000); Hanna‑Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006); see also AOL LLC v. Jordan Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006).
[vi] Respondent is ultimately responsible for the content of the resolving website despite the fact that it is parked with GoDaddy.com. See St. Farm Mutual Auto. Insr. Co. v. Pompilio, FA 1092410 (Nat. Arb. Forum Nov. 20, 2007) (“As a rule, the owner of a parked domain name does not control the content appearing at the parking site. Nevertheless, it is ultimately [the] respondent who is responsible for how its domain name is used.”); see also Express Scripts, Inc. v. Windgather Invs. Ltd., D2007-0267 (WIPO Apr. 26, 2007) (“The respondent contends that the advertisements in this case were ‘generated by the parking company’. The implication is that the respondent was not responsible for the content of these advertisements. This may well be correct but in the panel’s view this makes no difference. The respondent placed the Domain Name with a parking company in circumstances where it would have been aware that those using the Domain Name were likely to have mistyped the complainant’s name.”).
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