AARP v. Moving Service
Claim Number: FA1111001417857
Complainant is AARP (“Complainant”), represented by John J. Dabney of McDermott Will & Emery LLP, Washington, D.C., USA. Respondent is Moving Service (“Respondent”), Massachusetts, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <aarpdiscounts.info>, registered with eNom, 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.
Tyrus R. Atkinson, Jr., 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 December 1, 2011, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <aarpdiscounts.info> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, 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 9, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 29, 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.info. Also on December 9, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 9, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <aarpdiscounts.info> domain name is confusingly similar to Complainant’s AARP mark.
2. Respondent does not have any rights or legitimate interests in the <aarpdiscounts.info> domain name.
3. Respondent registered and used the <aarpdiscounts.info> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, AARP, is the owner of the trademark registrations through the United States Patent and Trademark Office (“USPTO”) for the AARP mark (e.g., Reg. No. 1,046,998 registered August 24, 1976). The mark is used in connection with a variety of goods and services promoting the interests of persons age 50 or older including discounts on various products and services.
Respondent, Moving Service, registered the disputed domain name on March 9, 2011. The <aarpdiscounts.info> domain name resolves to a website which allegedly diverts Internet users to sites that are not connected with Complainant, some of which compete with products and services offered by Complainant, but Complainant provides no evidence to support this claim.
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 argues that it has rights in the AARP mark. The Panels in Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005), and Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006), held that the registration of a mark with a federal trademark authority is evidence of a complainant’s rights in a mark. Complainant has provided evidence to the Panel of its numerous registrations for the AARP mark (e.g., Reg. No. 1,046,998 registered August 24, 2011) with the USPTO. The Panel finds that Complainant, by way of its registration through a federal trademark authority, has rights in its AARP mark pursuant to Policy ¶ 4(a)(i).
Complainant contends that the <aarpdiscounts.info> domain name is confusingly similar to the AARP mark. Respondent fully incorporates Complainant’s mark in the disputed domain name and adds the descriptive term “discounts.” The Panel finds that this change is not so substantial that it negates a finding of confusing similarity. See Am. Online, Inc. v. Karandish, FA 563833 (Nat. Arb. Forum Nov. 2, 2005) (finding that the addition of the descriptive term “talk” to a registered mark does not sufficiently distinguish a domain name under Policy ¶ 4(a)(i)); see also Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (“CHANEL, the salient feature of the Domain Names, is identical to a mark in which Complainant has shown prior rights. The addition of the generic term, “perfumes” is not a distinguishing feature, and in this case seems to increase the likelihood of confusion because it is an apt term for Complainant’s business.”). Respondent also adds the generic top-level domain (“gTLD”) “.info” to the disputed domain name. Panels have held previously that the addition of a gTLD is irrelevant to a Policy ¶ 4(a)(i) determination. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”); see also Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”). The Panel finds that Respondent’s addition of a term which describes the Complainant’s business and a gTLD fail to make the <aarpdiscounts.info> domain name distinctive from the AARP mark and thus that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) is met.
Complainant argues that Respondent lacks rights and legitimate interests in the <aarpdiscounts.info> domain name. In order to accomplish this, Policy ¶ 4(a)(ii) requires that Complainant support this contention by making a prima facie case against Respondent which would effectively shift the burden to Respondent to dispute the claims set against it. Complainant, however, has failed to present a prima facie case as discussed below. See 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)); see also VeriSign Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000) (“Respondent's default, however, does not lead to an automatic ruling for Complainant. Complainant still must establish a prima facie case showing that under the Uniform Domain Name Dispute Resolution Policy it is entitled to a transfer of the domain name.”).
Complainant argues that Respondent is not commonly known by the <aarpdiscounts.info> domain name. Complainant asserts that the WHOIS record is illustrative of this claim. The WHOIS record for the <aarpdiscounts.info> domain name lists “Moving Service” as the domain name registrant. The Panel finds that the listed domain name registrant and the disputed domain name are not the same and do not contain any of the same elements to suggest a connection between the two. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant argues that Respondent’s use of the disputed domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. Complainant, while noting that Respondent uses the <aarpdiscounts.info> domain name to divert Internet users to websites not related to Complainant, some of which are competitive, Complainant gives no further explanation and provides no evidence of such use. Without more than an uncorroborated allegation by Complainant, the Panel does not have sufficient information to hold that Respondent does not have rights or legitimate interests in the <aarpdiscounts.info> domain name. As a result, the Panel finds that Complainant failed to prove a lack of rights and legitimate interests on the part of Respondent pursuant to Policy ¶ 4(a)(ii). 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 VeriSign Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000) (“Respondent's default, however, does not lead to an automatic ruling for Complainant. Complainant still must establish a prima facie case showing that under the Uniform Domain Name Dispute Resolution Policy it is entitled to a transfer of the domain name.”).
The Panel finds that Policy ¶ 4(a)(ii) is not met.
Complainant failed to satisfy the elements of Policy ¶ 4(a)(ii). In order for a Complainant to prevail, all three elements of the Policy must be met. Because the elements of Policy ¶ 4(a)(ii) were not met, the Panel does not need to make a finding as to bad faith under Policy ¶ 4(a)(iii). 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).
Having failed to establish at leat one element required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <aarpdiscounts.info> domain name REMAIN WITH Respondent.
Tyrus R. Atkinson, Jr., Panelist
Dated: January 22. 2012
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page