national arbitration forum

 

DECISION

 

Case Management Professional Staffing Solutions, Inc. v. Genius Genius of NY Inc.

Claim Number: FA1111001414200

 

PARTIES

Complainant is Case Management Professional Staffing Solutions, Inc. (“Complainant”), represented by Bernard C. Dietz, Virginia, USA.  Respondent is Genius Genius of NY Inc. (“Respondent”), represented by Andrew McNulty, New York, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <aaaceu.com> and <aaaceu.net>, registered with Wild West Domains, Inc.

 

PANEL

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.

 

The Honourable Neil Anthony Brown QC as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on November 4, 2011; the National Arbitration Forum received payment on November 4, 2011.

 

On November 4, 2011, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <aaaceu.com> and <aaaceu.net> domain names are registered with Wild West Domains, Inc. and that Respondent is the current registrant of the names.  Wild West Domains, Inc. has verified that Respondent is bound by the Wild West 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 November 4, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 25, 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@aaaceu.com and postmaster@aaaceu.net.  Also on November 4, 2011, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 28, 2011.

 

On December 6, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

 

Complainant makes the following contentions:

 

1. Complainant has rights in the mark AAACEUS.COM through a trademark registration of that mark with the United States Patent and Trademark Office ("USPTO") (Reg. No. 3,582,290 filed November 29, 2007; registered March 3, 2009).  Complainant also submits that it has common law rights in the mark AAACEUS.COM and that they date back to October 24, 2005.

 

2.  Respondent’s <aaaceu.com> and <aaaceu.net> domain names are confusingly similar to its AAACEUS.COM mark, where the only change is the omission of the letter “s” from the mark, constituting typosquatting.

 

3.  Respondent has no rights or legitimate interests in the disputed domain names.

 

4.  The disputed domain names were registered and used in bad faith.

 

 B. Respondent

 

Respondent makes the following contentions:

 

1.    Complainant is not a recognized leader in continuing education for the professional market it serves and there are many other providers in that field. The claims of Complainant’s affiliate partnerships are irrelevant to these proceedings.

 

2.    This is not a case of typosquatting but one where the disputed domain names are simply different from the trademark.

 

3.    Respondent had no intention to copy the website of Complainant. Respondent merely searched for available domain names and chose the disputed domain names. Respondent also incorporated the company Above All Academics Inc., the filing being dated March 21, 2007.

 

4.    This is not a case of cybersquatting.

 

5.    When the disputed domain names were registered the trademark AAACEUS.COM had not been registered, so the domain names were registered in good and not bad faith.

 

6.    Respondent has a right or legitimate interest in the disputed domain names because of the company name Above All Academics Inc. The company is not the registrant of the domain names as Complainant delayed Respondent from launching its business. Moreover, the domain names have not been used.

 

7.    Complainant or its representative broke a contract that Respondent had with them and this explains the delays and also shows that Complainant has acted improperly.

 

8.    Links on the disputed domain name web sites are not to competitors but to colleges, jobs and grants and non-competitive CEU programs.

 

9.  On the issue of bad faith and the allegation that Respondent set out to mislead internet users and trade off Complainant, this is denied and Respondent in fact does not derive any money from the links. The links are put there by registrars. Respondent has lost money on this activity.  

 

FINDINGS

 

 1.  Complainant is in business as a provider of pre-approved continuing education units for healthcare professionals. Respondent is also in business through Above All Academics Inc.

 

2.  Complainant has rights in the mark AAACEUS.COM through a trademark registration of that mark with the United States Patent and Trademark Office ("USPTO") (Reg. No. 3,582,290 filed November 29, 2007; registered March 3, 2009).  Complainant also has common law rights in the mark AAACEUS.COM darting back to October 24, 2005. Complainant is also the registrant of the <aaaceus.com> domain name.

 

3.  Respondent registered the <aaaceu.com> domain name on April 4, 2007 and the <aaaceu.net> domain name on May 18, 2007. They presently resolve to an Internet parking service.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

The first issue to decide is whether Complainant has trademark rights that it can rely upon.

 

Complainant alleges that it has rights in the mark AAACEUS.COM through a trademark registration of that mark with the United States Patent and Trademark Office ("USPTO") (Reg. No. 3,582,290 filed November 29, 2007; registered March 3, 2009).  The Panel finds that Complainant’s trademark registration with the USPTO grants it rights in the AAACEUS.COM mark under Policy ¶ 4(a)(i) and that those rights date back to the filing date for the mark, November 29, 2007.  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 Hershey Co. v. Reaves, FA 967818 (Nat. Arab. 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”).

 

Complainant also submits that in addition to its rights under the registered trademark, it also has common law trademark rights to AAACEUS.COM and, accordingly, the second issue that arises is whether those common law rights have been established and whether they date back to 2005 or some other date.  In this regard Complainant relies on the fact that it began to use the mark in 2005 in commerce and continued to use it thereafter.  Complainant points to its trademark application with the USPTO which states a “date of first use of October 24, 2005.”  Complainant alleges that it has continuously used the mark since that time for online and home-study educational services for continuing education units for healthcare professionals.  Complainant also notes that it has established over 275 affiliate and corporate partnerships since it began using its mark in 2005. Respondent casts doubts on the standing and achievements of Complainant and submits that it is not a leader in its field. It takes issue particularly with Complainant’s claim that it has established a broad network of affiliate partners. The precise degree of prominence of a company in the position of Complainant is always difficult to judge, but the substance of the record shows that it has been in business in this field since at least 2005 and that it has used the internet actively to promote its wares. Most importantly for present purposes, it has used the name AAACEUs.COM in its business since then. In this regard, the Panel has looked at the record as revealed by the Wayback Machine at <archive.org>, which shows that Complainant’s website has offered and has continued to offer since 2005, similar educational services to those that it offers today. The website <aaaceus.com> does not link these services directly with a company by the name of the present Complainant, but a further search of the domain name <aaaceus.com> reveals that its registrant is AAACEUS.COM of Denver, Colorado, the Administrative Contact is Petersen, VM of Denver, Colorado with an email address at <books4casemanagers.com>, a domain name that Complainant maintains is an associated entity of Complainant and Ms. Petersen. Taking all of those matters into account, the Panel finds on the balance of probabilities that Complainant has established that AAACEUS.COM has been used as the source of Complainant’s services in the provision of the particular educational services at issue in these proceedings and that it has been so used since at least October 24, 2005.

 

Accordingly, the Panel finds that Complainant has established common law trademark rights to ACCEUS.COM dating back to, on or about, the date it submitted as its first use of the mark in commerce, namely October 24, 2005.

 

This analysis is consistent with decisions of previous UDRP panels. 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 Quality Custom Cabinetry, Inc. v. Cabinet Wholesalers, Inc., FA 115349 (Nat. Arb. Forum Sept. 7, 2002) (finding that the complainant established common law rights in the mark through continuous use of the mark since 1995 for the purpose of Policy ¶ 4(a)(i)).

 

 Complainant then argues that the <aaaceu.com> and <aaaceu.net> domain names are confusingly similar to its AAACEUS.COM mark, where the only change is the omission of the letter “s.”  The Panel agrees with this submission and finds that the <aaaceu.com> and <aaaceu.net> domain names are confusingly similar to Complainant’s registered and common law marks under Policy ¶ 4(a)(i). Clearly, the trademark and the domain names are similar and they are confusingly so because the difference of one letter is more likely than not to confuse many users of the Internet. See Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter “s” from the complainant’s UNIVERSAL STUDIOS STORE mark did not change the overall impression of the mark and thus made the disputed domain name confusingly similar to it); see also Keystone Publ’g., Inc. v. UtahBrides.com, D2004-0725 (WIPO Nov. 17, 2004) (finding that the <utahwedding.com> domain name was confusingly similar to the complainant’s UTAHWEDDINGS.COM mark because the domain name simply lacked the letter “s”), and the two decisions cited by Complainant, The Buffalo News v. Barry, FA 146919 (Nat. Arb. Forum March 31, 2003), and Compaq Info. Techs. Group, L.P. v. Seocho, FA 103879 (Nat. Arb. Forum February 25, 2002).

 

In opposition, Respondent argues that its registration of the <aaaceu.com> and <aaaceu.net> domain names predates Complainant’s alleged rights in the mark. However, a determination of that issue is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain names are identical or confusingly similar to Complainant’s mark.  See AB Svenska Spel v. Zacharov, D2003-0527 (WIPO Oct. 2, 2003) (holding that the UDRP does not require a complainant to have registered its trademark prior to the respondent’s registration of the domain name under Policy ¶ 4(a)(i) but may prevent a finding of bad faith under Policy ¶ 4(a)(iii)); see also Clear! Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Nat. Arb. Forum Mar. 5, 2007) (“Although the domain name in dispute was first registered in 1996, four years before Complainant’s alleged first use of the mark, the Panel finds that Complainant can still establish rights in the CLEAR BLUE marks under Policy ¶ 4(a)(i).”). The issue is, however, an important one with respect to the other elements of the Policy and falls for consideration later in this decision.

 

Complainant has thus established the first of the three elements that it must prove.

 

Rights or Legitimate Interests

 

The first matter that arises under this heading is that Complainant must 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 Complainant has made out a prima facie case which is based on the following facts:  the disputed domain names contain Complainant’s trademark with only the slight difference of the letter “s” being removed from the spelling of the trademark to make up the domain names, the domain names are confusingly similar to the trademark, Complainant has not consented to Respondent using its trademark in a domain name or anywhere else and the domain names presently resolve to a website containing advertisements for services at least in part in the same general field as the services provided by Complainant.

 

As Complainant has established a prima facie case, the burden then shifts to Respondent to rebut the prima facie case and show, on the balance of probabilities, that it has a right or legitimate interest in the disputed domain names.

 

Respondent seeks to do this by advancing an argument, to which the Panel has given careful attention , drawing on the relationship between the parties and Respondent’s version of the history of the registration of the domain names, their use since then and other aspects of Respondent’s business. As such, Respondent’s case raises the difficult question of whether and how a UDRP panel should approach such disputes where there is a conflict of testimony. Undoubtedly, there are cases where the dispute is complex and probably not appropriate to be resolved by the limited processes available in UDRP proceedings. On the other hand, a panel has a clear responsibility to make a decision where there is adequate material before it and where it is possible to decide if one party or the other has the better case. In the present case, the Panel has decided that although the parties are in dispute, the dispute is essentially about the domain names and there is sufficient evidence for the Panel to reach a conclusion.

 

Respondent approaches its task by submitting in effect that its registration of the disputed domain names is legitimate as it searched for suitable names and found the disputed domain names which it then registered. As part of its case, Respondent denies that it copied Complainant’s trademark and then tried to cover its tracks by making a slight spelling alteration; in other words, Respondent denies that this is a case of typosquatting.

 

Clearly, if the Panel finds that Respondent engaged in typosquatting, the consequence of such a finding is that it does not have rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii).  See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (concluding that by registering the <microssoft.com> domain name, the respondent had “engaged in typosquatting, which provides additional evidence that [the] respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”); see also Nat’l Ass’n of Prof’l Baseball Leagues, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … as a means of redirecting consumers against their will to another site, does not qualify as a bona fide offering of goods or services, whatever may be the goods or services offered at that site.”).

 

But was it typosquatting? Clearly such issues are difficult to decide. In the present case, the Panel has come to the conclusion that the spelling of the domain names and the registration of the domain names in that form was, on the balance of probabilities, an example of typosquatting. That decision has been reached for essentially the following reasons. Whether Complainant was pre-eminent in its field or not, it is clear that it was in business under its trademark, domain name and website and that it had maintained that position for a period of at least some 18 months, from October 24, 2005 until April 4, 2007, when Respondent registered the first of the two domain names. 18 months is a long time in Internet terms. It must also be remembered that Complainant had the domain name <aaaceus.com> from November 29, 2004 and that it was registered in the name of AAACEUS.COM. Thus, although it is true that Complainant subsequently applied for a trademark in the same name and claimed that its first use in commerce was on October 24, 2005, its domain name was registered almost a year earlier. Moreover, a search using the Wayback Machine at <archive.org> shows that the domain name was actively used and that the first website under that name was on the internet by January 7, 2005, showing a website substantially the same as it remained and as it is today. Not only does this show that Complainant was actively in business during the whole of the time from January 7, 2005 and on the public record as doing so , but that this was the case immediately prior to the two dates when Respondent registered the two disputed domain names.

 

 The Panel therefore concludes that it is more likely than not that when it registered the disputed domain names, Respondent was seeking to emulate Complainant’s trademark. Respondent’s reply to this is in effect that the triple “a” of the domain names are included not because he was copying Complainant’s business and domain names and the name that Complainant had applied to register as a trademark, but because its own company was called Above All Academics, Inc. The Panel does not accept that explanation. Respondent has submitted that it was only after the registration of <aaaceu.com>, the first of the two domain names to be registered, that it “engaged the help of a professional to incorporate under the name Above All Academics.” In other words, on that sequence of events the first domain name was registered before Respondent took steps to incorporate Above All Academics. It is therefore more likely than not that the name <aaaceu.com> was chosen for some reason other than that the acronym for Above All Academics was “aaa”.  Moreover, neither domain name was actually registered in the name of Above All Academics, but in the name of the present Respondent. These facts make it more likely than not that in registering the two disputed domain names, Respondent was influenced by Complainant’ trademark, that it was in effect copying Complainant’s name and that there was no other legitimate reason for registering the two disputed domain  names.

 

As the Panel’s conclusion is that this was a case of typosquatting, it defeats the suggestion that Respondent has a right or legitimate interest in the disputed domain names.

 

In addition, Complainant alleges that Respondent is not using the domain name in a legitimate manner.  Complainant’s evidence appears to show that Respondent’s domain names both resolve to websites featuring third-party links to competing continuing education credit organizations, as well as to unrelated companies.  Such links appear under headings, such as “Free Nursing CEUs Online,” “PT Continuing Education,” “University of Phoenix,” “Nursing Home e-Learning,” and others.  Complainant alleges that Respondent is profiting from its use of the domain names through click-through links and the Panel finds for that reason that Respondent is not making 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 24 Hour Fitness USA, Inc. v. 24HourNames.com-Quality Domains For Sale, FA 187429 (Nat. Arb. Forum Sep. 26, 2003) (holding that Respondent’s use of the <24hrsfitness.com>, <24-hourfitness.com> and <24hoursfitness.com> domain names to redirect Internet users to a website featuring advertisements and links to Complainant’s competitors could not be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use); see also Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was 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)). 

 

While Respondent argues that it is not responsible for the links posted upon its websites, the Panel finds that Respondent remains responsible for the content on the website even if they were parked with the registrar.  See Gold Medal Travel Grp. plc v. Kruzicevic, D2007-1902 (WIPO Mar. 12, 2008) (where the disputed domain name had been parked, the panel found the “the Registrant is responsible for the content of the material appearing on the webpage associated with the domain name in dispute.”); see also Cengage Learning Inc. v. Myers, FA 1116919 (Nat. Arb. Forum, Jan. 15, 2008)(“the view of the panel is that, in the absence of evidence to the contrary in any particular case, of which there is none in the present case, a party in the position of the respondent is also responsible for the sponsored links currently appearing on the website.”).

 

The totality of the evidence is such that it does not bring Respondent within any other ground showing a right or legitimate interest in the disputed domain names.

 

Accordingly, Complainant has made out the second of the three grounds that it must establish.

 

Registration and Use in Bad Faith

 

To establish this element, Complainant must prove that the facts of the case bring it within the criteria for bad faith registration and use as set out in Policy ¶ 4(b) or, as those criteria are not exclusive, that they show bad faith in general.

 

In this regard it should be said at the outset that Complainant’s registered trademark was registered on March 3, 2009 but that it also has common law rights in the mark AAACEUS.COM dating back to October 24, 2005 and probably earlier. Accordingly, it is permissible to examine events that occurred from or about that date to decide if those events gave rise to bad faith registration and use of the disputed domain names. The Panel has decided on the basis of those events that Respondent registered and has used the disputed domain names in bad faith.

 

Complainant has argued that part of Respondent’s websites divert Internet users to third-party websites that deal directly with continuing education credits for medical professionals.  The Panel finds that this is substantially correct and that it is a competing use.  Accordingly, the Panel finds that Respondent is using the domain names to disrupt Complainant’s business and that this constitutes bad faith registration and use pursuant to 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).

 

Complainant further contends that evidence of bad faith under Policy ¶ 4(a)(iii) is also to be found in Respondent’s use of typosquatting, as evidenced through its registration and use of the <aaaceu.com> and <aaaceu.net> domain names and as discussed above. The Panel accepts that submission and finds accordingly.  See Canadian Tire Corp. v. domain adm’r no.valid.email@worldnic.net 1111111111, D2003-0232 (WIPO May 22, 2003) (finding the respondent registered and used the domain name in bad faith because the respondent “created ‘a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location’. . . through Respondent’s persistent practice of ‘typosquatting’”); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a) (iii)).

 

Respondent argues that it was not responsible for posting the links on its websites. However, the Panel finds on the evidence that this was a consequence of Respondent having registered the domain names as an act of typosquatting. Accordingly, in those circumstances, parking the domain name with the registrar, does not prevent the Panel from making a bad faith finding under Policy ¶ 4(a)(iii).  See Express Scripts, Inc. v. Windgather Invs. Ltd., D2007-0267 (WIPO Apr. 26, 2007) (finding that it makes no difference that a respondent contends that the advertisements in this case were “generated by the parking company,” the respondent still registered and used the disputed domain name in bad faith); see also Gold Medal Travel Grp. plc v. Kruzicevic, D2007-1902 (WIPO Mar. 12, 2008) (where the disputed domain name had been parked, the panel found the “the Registrant is responsible for the content of the material appearing on the webpage associated with the domain name in dispute.”).

 

The Panel also finds that the registration and use of the domain names was in bad faith in general, as Respondent sought to copy Complainant’s domain name and business name and to gain potential advantage for itself in a commercial sense as a result of doing so.

 

In all the circumstances, the Panel finds that Respondent registered and used the disputed domain names in bad faith both within the grounds specified in Policy ¶ 4(b) and within the accepted meaning of bad faith generally.

 

Accordingly, Complainant has made out the third of the three elements that it must establish.

 

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 <aaaceu.com> and <aaaceu.net> domain names be TRANSFERRED from Respondent to Complainant.

 

 

The Honourable Neil Anthony Brown QC, Panelist

Dated:  December 12, 2011

 

 

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