AARP v. David Smidt / SeniorDiscounts.com
Claim Number: FA1111001417804
Complainant is AARP (“Complainant”), represented by John J. Dabney of McDermott Will & Emery LLP, Washington, D.C., USA. Respondent is David Smidt / SeniorDiscounts.com (“Respondent”), represented by Thomas Smidt II of Tax, Estate & Business Law, Ltd., New Mexico, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <aarpdiscounts.net> and <aarpdiscount.org>, registered with Wild West Domains, Inc.
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.
Hon. Sir Ian Barker QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 30, 2011; the National Arbitration Forum received payment on December 5, 2011.
On November 30, 2011, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <aarpdiscounts.net> and <aarpdiscount.org> 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 December 8, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 28, 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@aarpdiscounts.net and postmaster@aarpdiscount.org. Also on December 8, 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 December 27, 2011.
On January 13, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Sir Ian Barker QC as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
The Complainant is a non-profit organisation, established under the laws of the District of Columbia, dedicated to promoting the interests of persons aged 50 and older. It has some 40 million members, including about half of the individuals in the United States who are 50 years of age and older.
The Complainant’s licensees have spent large amounts of money advertising and marketing goods and services under the Complainant’s AARP mark. The Complainant earns royalties from the provision of discounts on products and services under its marks.
The Complainant owns 38 United States Federal trademark registrations for AARP and formatives thereof. The trademark has acquired significant goodwill and public recognition.
The disputed domain names are confusingly similar to the Complainant’s registered trademarks. They add the generic words ‘discount’ or ‘discounts’ to the trademarked expression. References to discounts are obvious references to some of the Complainant’s branded services.
The disputed domain names resolve to web-pages which contain links to sites of the Complainant and its licensees. The Complainant gave the Respondent no authorization of any sort to reflect its trademarks in a domain name. None of the situations envisaged by Paragraph 4(c) of the Policy applies to the Respondent.
The Respondent registered and is using the disputed domain names in bad faith. The Respondent must have had knowledge of the Complainant’s trademarks when it registered the disputed domain names on January 14, 2009.
B. Respondent
The Respondent did not intend to use the disputed domain names for commercial purposes. They purchased and registered the disputed domain names through RegisterCheaper.com. The disputed domain names were automatically placed in RegisterCheaper’s free parked-page service. That company has retained the revenues from the advertisements on the websites. The Respondent receives nothing. The Respondent has directed RegisterCheaper.com to remove the parked-page service for the disputed domain names, which has been done.
No request had been received from the Complainant to the Respondent to remove the parked-page advertisements in the 3 years before the filing of the Complaint. The Complainant has had ample time within which to register the disputed domain names itself.
The Respondent has no intent to use the disputed domain names for commercial purposes. They were registered to secure a standing on the mature discount market for older adults. The Respondent has allegedly spoken to representatives of the Complainant regarding possible synergies between the Complainant and the Respondent. The disputed domain names were purchased in part to secure any future relationships that may develop between the Complainant and the Respondent. As long as the disputed domain names are used for storage, they do not infringe the Complainant’s trademarks.
(a) The disputed domain names are confusingly similar to registered trademarks in which the Complainant has rights.
(b) The Respondent has no right or legitimate interest in respect of the disputed domain names.
(c) The disputed domain names have been registered and are being used in bad faith.
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 the Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) The 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.
There is no doubt that the disputed domain names are confusingly similar to the Complainant’s AARP. The addition of the generic words ‘discount’ or ‘discounts’ fails adequately to distinguish the disputed domain names from the Complainant’s trademark. The trademark and word is the dominant element in the disputed domain names. The Respondent did not dispute that the disputed domain names were confusingly similar to the Complainant’s trademark.
Accordingly, Paragraph 4(a)(i) of the Policy is satisfied.
The Complainant gave the Respondent no rights or authorization to reflect its trademark in a domain name.
The Respondent has not made out any case under any part of Paragraph 4(c) of the Policy which could have afforded a defence.
The Complainant alleges that the Respondent is not making a bona fide offering of goods or services or a legitimate non-commercial or fair use of the disputed domain names. The Complainant claims that the disputed domain names resolve to websites that host a list of hyperlinks that include hyperlinks to the Complainant and the Complainant’s subsidiaries, as well as the Complainant’s competitors. Screenshots of both resolving websites were provided.
Based on this use, the Panel determines that the Respondent makes neither a Policy 4(c)(i) bona fide offering of goods or services nor a Policy 4(c)(iii) legitimate non-commercial or fair use of the disputed domain names. See Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy 4(c)(I) or a legitimate non-commercial or fair use pursuant to Policy 4(c)(iii); see also Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does 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).”).
While the Respondent contends that it did not park the disputed domain names, was not aware that the domain names were parked, and did not receive any compensation, the Panel holds that the Respondent is ultimately responsible for the content of the resolving websites under Policy 4(a)(ii). See State Farm Mut. Auto. Ins. 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 Vane Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“Although the websites accessed via the Disputed Domains may be operated by domain parking service providers, that activity is legally and practically attributable back to respondent.”).
WIPO cases are to similar effect. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions ¶ 2.6 (2d. Ed.) [hereinafter WIPO Overview].
Accordingly, Paragraph 4(a)(ii) of the Policy is satisfied.
In the Panel’s view, bad faith registration and use is made out for the following reasons:
(a) Although the offending links may now have been removed from the Respondent’s websites, there must have been disruption of the Complainant’s business through unauthorized use of its marks on the “click-through” websites which also promoted the goods and services of competitors of the Complainant.
(b) The Respondent clearly knew of the Complainant and the fame of its marks when it is admitted that part of the reason for acquiring the disputed domain names was for possible “future synergies” with the Complainant.
(c) The same line of authority that finds lack of legitimate rights and interest in the parking of a disputed domain name in a “click-through” site applies under the bad faith criterion. See WIPO Overview at ¶ 3.8:
Panels have found that a domain name registrant will normally be deemed responsible for content appearing on a website at its domain name, even if such registrant may not be exercising direct control over such content – for example, in the case of advertising links appearing on an “automatically” generated basis. To the extent that the presence of certain advertising or links under such arrangement may constitute evidence of bad faith use of the relevant domain name, such presence would usually be attributed to the registrant unless it can show some good faith attempt toward preventing inclusion of advertising or links which profit from trading on third-party trademarks. It may not be necessary for the registrant itself to have profited directly under such arrangement in order to establish bad faith use under Paragraph 4(b)(iv) of the UDRP. It would normally be sufficient to show that profit or “commercial gain” was made by a third party, such as by the operator of an advertising revenue arrangement applicable to the registrant, or a domain name parking service used by the registrant. Reasons may include that a rights holder should be able to rely on the registrant, or a domain name parking service used by the registrant. Reasons may include that a rights holder should be able to rely on the registrant for enforcement purposes, or that such registrant has undertaken not to infringe third party rights in its registration agreement (see Paragraph 2 of the UDRP).
Accordingly, Paragraph 4(a)(iii) of the Policy is satisfied on the facts of this case.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <aarpdiscounts.net> and <aarpdiscount.org> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Sir Ian Barker QC, Panelist
Dated: January 23, 2012
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