Advanced International Marketing Corporation v. A-A1 Corp
Claim Number: FA1109001406896
Complainant is Advanced International Marketing Corporation (“Complainant”), represented by Scott M. Hoffman, Minnesota, USA. Respondent is A-A1 CORP (“Respondent”), represented by Blake Iverson, Minnesota, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <aaadancers.com>, <aaadancers.net>, <aaadancer.com>, <aaadancer.net> and <aaaclassicdancer.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 September 10, 2011; the National Arbitration Forum received payment September 13, 2011.
On September 12, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <aaadancers.com>, <aaadancers.net>, <aaadancer.com>, <aaadancer.net> and <aaaclassicdancer.com> domain names are registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names. GoDaddy.com, Inc. verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 22, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 12, 2011, 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@aaadancers.com, postmaster@aaadancers.net, postmaster@aaadancer.com, postmaster@aaadancer.net, and postmaster@aaaclassicdancer.com. Also on September 22, 2011, 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.
On October 20, 2011, 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain names that Respondent registered, <aaadancers.com>, <aaadancers.net>, <aaadancer.com>, <aaadancer.net> and <aaaclassicdancer.com>, are confusingly similar to Complainant’s AAA-DANCERS mark.
2. Respondent has no rights to or legitimate interests in the <aaadancers.com>, <aaadancers.net>, <aaadancer.com>, <aaadancer.net> and <aaaclassicdancer.com> domain names.
3. Respondent registered and used the <aaadancers.com>, <aaadancers.net>, <aaadancer.com>, <aaadancer.net> and <aaaclassicdancer.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Advanced International Marketing Corporation, is the owner of the AAA-DANCERS mark and the AAA-CLASSIC DANCERS mark. Complainant registered the AAA-DANCERS mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,009,641 filed January 24, 2011, registered August 9, 2011). Complainant also registered AAA-CLASSIC DANCERTS with the USPTO (Reg. No. 4,015,345 filed December 28, 2010, registered August 23, 2011). Complainant uses its marks in connection with providing entertainment services in the form of live dancers and entertainment.
Respondent, A-A1 Corp, registered the <aaadancers.com> domain name January 14, 2006; the <aaadancers.net> domain name November 23, 2008; the <aaadancer.com> and <aaadancer.net> domain names July 30, 2010 and; the <aaaclassicdancer.com> domain name January 4, 2007. The <aaadancers.com> and <aaadancers.net> domain names are linked to Respondent’s websites offering the exact same services that Complainant offers. The <aaadancer.com>, <aaadancer.net>, and <aaaclassicdancer.com> domain names resolve to inactive websites.
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.
Complainant argues that it has rights in the AAA-DANCERS mark due to its registration of the mark with the USPTO (Reg. No. 4,009,641 filed January 24, 2011, registered August 9, 2011). Registration of a mark with a federal trademark authority is sufficient for a finding that the complainant has rights in the mark. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority). A complainant’s rights in the mark date back to the filing date of a trademark registration. See Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”). Therefore, the Panel finds that Complainant has rights in its AAA-DANCERS mark pursuant to Policy ¶ 4(a)(i), dating back to the filing date of January 24, 2011.
Complainant also urges that it has rights in the AAA-CLASSIC DANCERS mark by its registration of the mark with the USPTO (Reg. No. 4,015,345 filed December 28, 2010, registered August 23, 2011). The Panel finds that Complainant has rights in the AAA-CLASSIC DANCERS mark pursuant to Policy ¶ 4(a)(i), dating back to the filing date of December 28, 2010. See Trip Network Inc., supra; see also Thermo Electron Corp., supra; see also Hershey Co., supra.
The Panel finds that Complainant can establish common law rights in a mark even without a trademark registration or prior to the filing date of a trademark registration. 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 Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Rather, the Complainant need only demonstrate that the mark had established secondary meaning.
Complainant contends that it has common law rights in the AAA-DANCERS mark dating back to 1999 and in the AAA-CLASSIC DANCERS mark dating back to 1990 based upon extensive, continuous usage. In 1988, Complainant began regularly maintaining telephone book advertisements for the AAA-CLASSIC DANCERS mark and filed for an assumed name under that mark with the State of Minnesota in 1993. Complainant provides evidence of both of these claims. See Complainant’s Annex F. Complainant registered a domain name identical to its AAA-DANCERS mark in 1999 and has maintained the website since that time. In addition, the USPTO trademark registration for the AAA-DANCERS mark shows a first use in commerce date of June 1, 2005, and the registration for the AAA-CLASSIC DANCERS mark shows a first use in commerce date of May 29, 1990. Under these trademarks, Complainant has developed its business, and the Panel finds that its efforts have had the effect of establishing secondary meaning sufficient for common law rights in both the AAA-DANCERS and AAA-CLASIC DANCERS marks pursuant to Policy ¶ 4(a)(i). See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also 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).
Complainant contends that the <aaadancers.com>, <aaadancers.net>, <aaadancer.com>, and <aaadancer.net> domain names are confusingly similar to Complainant’s AAA-DANCERS mark. The domain names each make one or more of the following changes to Complainant’s mark within the domain name: the addition of a generic top-level domain (“gTLD”), the deletion of a hyphen, and the deletion of the letter “s.” The Panel finds that none of these changes is sufficient to distinguish the disputed domain names from Complainant’s AAA-DANCERS mark. See 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); see also Nat’l Cable Satellite Corp. v. Black Sun Surf Co., FA 94738 (Nat. Arb. Forum June 19, 2000) (holding that the domain name <cspan.net>, which omitted the hyphen from the trademark spelling, C-SPAN, is confusingly similar to the complainant's mark); see also Granarolo S.p.A. v. Dinoia, FA 649854 (Nat. Arb. Forum Apr. 17, 2006) (finding that the <granarolo.com> domain name was confusingly similar to the complainant’s registered G GRANAROLO mark).
Accordingly, the Panel finds that the <aaadancers.com>, <aaadancers.net>, <aaadancer.com>, and <aaadancer.net> domain names are confusingly similar to Complainant’s AAA-DANCERS mark pursuant to Policy ¶ 4(a)(i).
Complainant further alleges that the <aaaclassicdancer.com> domain name is confusingly similar to Complainant’s AAA-CLASSIC DANCERS mark. The addition of a gTLD, the deletion of a space, the deletion of a hyphen, and the deletion of the letter “s” in a domain name do not amount to a change to a complainant’s mark that precludes a finding of confusing similarity. See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”);see also Nat’l Cable Satellite Corp., supra; see also Granarolo S.p.A., supra. As such, the Panel finds that the <aaaclassicdancer.com> domain name is confusingly similar to Complainant’s AAA-CLASSIC DANCER mark under Policy ¶ 4(a)(i).
The Panel finds that the disputed domain names are confusingly similar to marks in which Complainant has exclusive rights; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant contends that Respondent has no rights to or legitimate interests in the disputed domain names. According to Policy ¶ 4(a)(ii), Complainant must first make a prima facie to support its allegations and that once it does so, Respondent has the burden of proof to show such rights or legitimate interests. See Domtar, Inc. v. Theriault, FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”); see also Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)).
Here, the Panel finds that Complainant made a prima facie case to show that Respondent has no rights or legitimate interests in the disputed domain names <aaadancers.com> and <aaadancers.net>. Respondent failed to submit a response and the Panel may make all reasonable inferences under the information available and may find that Respondent has no rights to or legitimate interests. 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 EK Success, Ltd. v. Yi-Chi, CPR0314 (CPR June 12, 2003) (“[T]he Respondent's default cannot simply be construed as an admission of the allegations contained in the Complaint.”). However, this Panel still reviews the record for information suggesting that Respondent does have rights or legitimate interests in the disputed domain names.
With regard to the <aaadancer.com>, <aaadancer.net>, and <aaaclassicdancer.com> domain names, the Panel finds that Complainant has not made a prima facie case in support of this allegation for the reasons discussed below.
Complainant urges that Respondent is not commonly known by any of the disputed domain names. Panels have previously found, in cases such as Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003), and IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006), that the WHOIS record for disputed domain names and a complainant’s contentions are dispositive of whether a respondent is commonly known by the disputed domain name. The WHOIS record for each of the disputed domain names lists “A-A1 Corp” as the domain name registrant. This name, the Panel finds, does not illustrate a nominal relationship between the domain names and Respondent that satisfy Policy ¶ 4(c)(ii). Additionally, Complainant claims that it is familiar with the individual who has a legally filed assumed name and trademark “A-A1 Absolute Perfect Ten,” and claims that Respondent is not this individual. The Panel finds that Complainant’s statements, along with the WHOIS record listings and Respondent’s failure to submit a response, lead the Panel to find that Respondent is not commonly known by any of the disputed domain names under Policy ¶ 4(c)(ii).
Complainant argues that Respondent’s use of the <aaadancers.com> and <aaadancers.net> domain names is not a bona fide offering of goods or services and it is not a legitimate noncommercial or fair use. The <aaadancers.com> and <aaadancers.net> domain names are linked to Respondent’s websites offering services in the live entertainment industry that compete with those that Complainant offers. The Panel finds that Respondent’s use of the <aaadancers.com> and <aaadancers.net> domain names to resolve to Respondent’s website which offers competing services is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006) (holding that the respondent’s use of the <ftdflowers4less.com> domain name to sell flowers in competition with the complainant did not give rise to any legitimate interest in the domain name); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”).
Complainant argues that Respondent’s holding of the <aaadancer.com>, <aaadancer.net>, and <aaaclassicdancer.com> domain names as inactive websites is further proof that Respondent has neither rights nor legitimate interests under Policy ¶ 4(a)(iii). However, Complainant has failed to provide the Panel with any evidence of the actual use (or lack of ) use of the <aaadancer.com>, <aaadancer.net>, and <aaaclassicdancer.com> domain names. Without such proof, the Panel finds that Complainant failed to establish that Respondent lacks rights and legitimate interests in the <aaadancer.com>, <aaadancer.net>, and <aaaclassicdancer.com> domain names. See O.C. Seacrets, Inc. v. S. TradeWINs, Inc., FA 328042 (Nat. Arb. Forum Oct. 29, 2004) (“Complainant has provided no evidence as to the use of the <jamaicausa.com> domain name and has merely asserted that Respondent has no rights or legitimate interests, which is not sufficient to support a finding that Respondent lacks rights or legitimate interests.”); see also Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum Aug. 24, 2006) (holding that the complainant did not satisfactorily meet its burden and as a result found that the respondent had rights and legitimate interests in the domain name under Policy ¶ 4(a)(ii)).
The Panel thus finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii) relative to the <aaadancers.com> and <aaadancers.net> domain names.
The Panel finds that by failing to offer some evidence that the domain names are being passively held, Complainant did not satisfy the elements of ICANN Policy ¶ 4(a)(ii) relative to the <aaadancer.com>, <aaadancer.net>, and <aaaclassicdancer.com> domain names.
Complainant contends that Respondent’s registration and use of the <aaadancer.com>, <aaadancer.net>, and <aaaclassicdancer.com> domain names demonstrates bad faith under Policy ¶ 4(a)(iii). However, Complainant’s failure to satisfy Policy ¶ 4(a)(ii) in regard to these three disputed domain names renders discussion of bad faith registration and use of these domain names irrelevant because all three Policy elements must be met to prevail. See Vail Corp. & Vail Trademarks, Inc. v. Resort Destination Mktg., FA 1106470 (Nat. Arb. Forum Jan. 8, 2008) (finding it unnecessary to examine all three elements of the Policy once shown the complainant could not satisfy one element); see also Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary).
Complainant contends that the <aaadancers.com> and <aaadancers.net> domain names were registered and are being used in bad faith. Past panels have held that registration and use of a domain name is evidence of bad faith where it is used to link Internet users to the respondent’s competing business, disrupting a complainant’s business. See Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between the complainant and the respondent, the respondent likely registered the contested domain name with the intent to disrupt the complainant's business and create user confusion); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
The <aaadancers.com> and <aaadancers.net> domain names resolve to Respondent’s website, which offers services identical to those that Complainant offers on its own website. The Panel finds that by diverting Internet users to its own website offering competing services, Respondent’s registration and use of the <aaadancers.com> and <aaadancers.net> domain names disrupts Complainant’s business and supports findings of bad faith registration and use under a Policy ¶ 4(b)(iii) evaluation.
Panels have found bad faith under Policy ¶ 4(b)(iv) in cases like MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000), and Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001), where a respondent diverts Internet users through a confusingly similar domain name to the respondent’s own commercial website. The <aaadancers.com> and <aaadancers.net> domain names resolve to Respondent’s own commercial website. The confusing similarity of the domain names is likely to create confusion in Internet users’ minds as to the disputed domain names’ affiliation with Complainant. Upon being directed through the domain names to Respondent’s website, Internet users are invited to have services identical to those Complainant offers, thus increasing the confusion and affirming the belief that Respondent’s websites are associated with Complainant. Given this assumption, some of the Internet users will likely purchase services from Respondent rather than continuing to search for Complainant’s genuine website. From these sales of services, Respondent generates a profit. Therefore, the Panel finds that Respondent’s registration and use of the <aaadancers.com> and <aaadancers.net> domain names is intended to take commercial advantage of Internet users’ confusion, which supports a finding of bad faith under Policy ¶ 4(b)(iv).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii) relative to the <aaadancers.com> and <aaadancers.net> domain names.
The Panel finds that Complainant did not satisfy the elements of ICANN Policy ¶ 4(a)(iii) relative to the <aaadancer.com>, <aaadancer.net>, and <aaaclassicdancer.com> domain names.
The Panel notes that Complainant is not precluded from filing an additional action and offering appropriate proof as to the <aaadancer.com>, <aaadancer.net>, and <aaaclassicdancer.com> domain names.
Having failed to establish all three elements required under the ICANN Policy regarding the <aaadancer.com>, <aaadancer.net>, and <aaaclassicdancer.com> domain names, the Panel concludes that relief shall be DENIED as to those three domain names.
Having established all three elements required under the ICANN Policy regarding the <aaadancers.com> and <aaadancers.net> domain names, the Panel concludes that relief shall be GRANTED as to those two domain names.
Accordingly, it is Ordered that the <aaadancer.com>, <aaadancer.net>, and <aaaclassicdancer.com> domain names NOT BE TRANSFERRED at this time.
Accordingly, it is Ordered that the <aaadancers.com> and <aaadancers.net> domain names be TRANSFERRED TO COMPLAINANT.
Hon. Carolyn Marks Johnson, Panelist
Dated: November 2, 2011.
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