Ancestry.com Operations Inc. v. WhoIsAgent WhoIsAgent / Glaron LTD
Claim Number: FA1212001476428
Complainant is Ancestry.com Operations Inc. (“Complainant”), represented by Elisa N. Bramble, Pennsylvania, USA. Respondent is WhoIsAgent WhoIsAgent / Glaron LTD (“Respondent”), Greece.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <thefamilytreemaker.org>, 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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 18, 2012; the National Arbitration Forum received payment on December 18, 2012.
On December 19, 2012, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <thefamilytreemaker.org> 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 20, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 9, 2013 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@thefamilytreemaker.org. Also on December 20, 2012, 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 21, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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.
1. Complainant operates an online family history resource, containing ten billion genealogical records from around the world, with two million paying subscribers.
2. Complainant’s “Family Tree Maker” software is widely sold, and available at Complainant’s website at the <familytreemaker.com> domain name.
3. Complainant has used its FAMILY TREE MAKER trademark in relation to its online services since 1989.
4. Complainant owns the FAMILY TREE MAKER mark, and has registrations for the mark with various international trademark agencies, including with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,189,168 registered December 26, 2006), the Canadian Intellectual Property Office (“CIPO”) (e.g., Reg. No. TMA829658 registered August 10, 2012), and the Intellectual Property Office of New Zealand (“IPONZ”) (Reg. No. 789,588 registered May 9, 2011). See Exhibit B.
5. Respondent registered the <thefamilytreemaker.org> domain name, and created a website corresponding to the domain name that provides “Free Family Tree Maker software” at the website, purporting to be the same genealogy-related software sold by Complainant under its FAMILY TREE MAKER mark.
6. The <thefamilytreemaker.org> domain name is confusingly similar to Complainant’s FAMILY TREE MAKER mark.
7. Respondent is not commonly known by the <thefamilytreemaker.org> domain name, and is not licensed to use Complainant’s mark.
8. Respondent allows visitors to its website to download content that uses Complainant’s mark but is not affiliated with Complainant.
9. Respondent does not have rights or legitimate interests in the <thefamilytreemaker.org> domain name.
10. Respondent presumably makes a profit each time a website visitor downloads the software available at the website, and Respondent also offers pay-per-click hyperlinks at the resolving website, as well as collects consumers’ e-mail addresses in connection with the software download.
11. Respondent uses the <thefamilytreemaker.org> domain name to interfere with Complainant’s business by selling competing and counterfeit products.
12. Respondent uses the <thefamilytreemaker.org> domain name to profit from Complainant’s goodwill in its FAMILY TREE MAKER mark and registered and uses the domain name in bad faith.
13. Respondent registered the <thefamilytreemaker.org> domain name to sell competing goods and services with those of Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <the familytreemaker.org> domain name is confusingly similar to Complainant’s FAMILY TREE MAKER mark.
2. Respondent does not have any rights or legitimate interests in the <the familytreemaker.org> domain name.
3. Respondent registered or used the <the familytreemaker.org> domain name in bad faith.
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.
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.”).
Complainant claims ownership of trademark rights in its FAMILY TREE MAKER mark as a result of its various registrations with international registrations with various government authorities, such as with the USPTO (e.g., Reg. No. 3,189,168 registered December 26, 2006), the CIPO (e.g., Reg. No. TMA829658 registered August 10, 2012), and the IPONZ (Reg. No. 789,588 registered May 9, 2011). In Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005), the panel held that the complainant established its rights in the mark via its numerous trademark registrations internationally, including with the USPTO. The Panel determines that Complainant’s trademark registration with the USPTO, the CIPO, and the IPONZ, among others, sufficiently demonstrates Complainant’s rights in the FAMILY TREE MAKER mark under Policy ¶ 4(a)(i).
Complainant alleges that the <thefamilytreemaker.org> domain name is confusingly similar to its FAMILY TREE MAKER mark, because the domain name adds the word “the” to the beginning of the mark, and the generic top-level domain (“gTLD”) “.org” to the end of the mark. Complainant also alleges that the <thefamilytreemaker.org> domain name omits the spaces between the words of the mark. The Panel determines that by removing the spaces in the mark, adding the word “the,” and including the gTLD “.org” to the mark, the disputed domain name is confusingly similar to Complainant’s FAMILY TREE MAKER mark pursuant to Policy ¶ 4(a)(i). 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 AOL LLC v. iTech Ent, LLC, FA 726227 (Nat. Arb. Forum July 21, 2006) (finding that the <theotheraol.com> and <theotheraol.net> domain names were confusingly similar to the AOL mark, as the addition of common terms to a mark does not distinguish the domain names from the mark).
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.”).
Complainant makes the argument that Respondent is not commonly known by the <thefamilytreemaker.org> domain name, as the WHOIS information for the domain name reflects that the registrant is “Glaron LTD.” See Exhibit D. Complainant further contends that Respondent is not licensed to use the FAMILY TREE MAKER mark or authorized to sell Complainant’s products or services. In Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006), the panel concluded that the respondent was not commonly known by the disputed domain name as a result of the WHOIS information, and no further evidence was presented to suggest otherwise. The Panel finds that because Respondent lacks permission to use Complainant’s mark, and because the WHOIS information does not match the disputed domain name, Respondent is not commonly known by the <thefamilytreemaker.org> domain name pursuant to Policy ¶ 4(c)(ii).
Complainant sets forth the allegation that Respondent does not demonstrate use of the <thefamilytreemaker.org> domain name to make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name, as Respondent links the disputed domain name to a website that offers a downloadable “Free Family Tree Maker” software program bearing Complainant’s mark. Complainant argues that Respondent requires users to simultaneously download a translation program that installs itself “across all major Internet browsers and displays advertisements, but is difficult for users to uninstall.” See Exhibit F. Complainant further alleges that Respondent displays pay-per-click links and collects website visitors’ e-mail addresses in connection with the downloaded software. The Panel determines that Respondent’s use of the <thefamilytreemaker.org> domain name to offer competing products to those offered by Complainant, as well as installing software to unsuspecting users’ computers and collecting their e-mail addresses, Respondent fails to make 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 Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also Google Inc. v. Gridasov, FA 474816 (Nat. Arb. Forum July 5, 2005) (finding that the respondent’s use of a disputed domain name “that attempts to download malicious computer software into the computers of those who visit the website,…[which] may annoy or harm the users in some way,…is harmful to Complainant as the users may assume that Complainant has some affiliation with the harmful content. Such use of a website that is presumably intended to jeopardize the goodwill Complainant has created in its mark is not, therefore, a use in connection with a bona fide offering of goods or services or a legitimate or fair use of the domain names pursuant to Policy ¶¶ 4(c)(i) or (iii).”).
Complainant argues that Respondent’s offered software programs are counterfeit versions of Complainant’s software, and contends that such use at the disputed domain name fails to show a bona fide offering of goods or services or a legitimate noncommercial or fair use. The Panel concludes that offering counterfeit products purporting to belong to Complainant at the resolving website is not a bona fide offering of goods or services at the <thefamilytreemaker.org> domain name under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). Keihin Corp. v. Youli Ltd., FA 1106190 (Nat. Arb. Forum Dec. 18, 2007) (finding no rights and legitimate interests when the respondent sold counterfeit versions of the complainant’s products in competition with the complainant’s business).
Complainant makes the contention that Respondent registered and uses the <thefamilytreemaker.org> domain name for the sole purpose of diverting Complainant’s customers and offering a product under a nearly identical name to Complainant’s mark. The Panel infers that by attempting to sell a product that purports to originate from Complainant, Respondent disrupts Complainant’s business, and that such disruption is evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Louis Vuitton Malletier S.A., L.L.C. v. David, FA 1138296 (Nat. Arb. Forum Mar. 5, 2008) (concluding that the complainant’s business is disrupted by the respondent’s registration and use of the disputed domain name for the purpose of selling counterfeit products).
Complainant argues that Respondent presumably profits each time a website visitor downloads its program and that Respondent’s use of a confusingly similar domain name to attract Internet users is proof of Respondent’s bad faith registration and use. Complainant also argues in its Policy ¶ 4(a)(ii) section that Respondent uses the <thefamilytreemaker.org> domain name to sell a counterfeit product and pass the software off as belonging to Complainant’s business. The Panel determines that Respondent’s bad faith registration and use of the <thefamilytreemaker.org> domain name is evident by its attempt to attract Internet users to its website by using a domain name incorporating Complainant’s mark, in order to make a profit. See H-D Michigan, LLC v. Ross, FA 1250712 (Nat. Arb. Forum Apr. 23, 2009) (determining that the respondent’s selling of counterfeit products creates the likelihood of confusion as to the complainant’s affiliation with the disputed domain name and allows the respondent to profit from that confusion).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <thefamilytreemaker.org> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: February 4, 2013
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