American Law Institute v. Donald Price
Claim Number: FA1305001497712
Complainant is American Law Institute (“Complainant”), represented by Nancy Rubner Frandsen, Pennsylvania, USA. Respondent is Donald Price (“Respondent”), represented by Miles Archer Woodlief, California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <americanlawinstitute.net> and <americanlawinstitute.org>, registered with GoDaddy.com, LLC.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 1, 2013; the National Arbitration Forum received payment on May 1, 2013.
On May 6, 2013, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <americanlawinstitute.net> and <americanlawinstitute.org> domain names are registered with GODADDY.COM, LLC and that Respondent is the current registrant of the names. GODADDY.COM, LLC has verified that Respondent is bound by the GODADDY.COM, LLC 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 May 8, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 28, 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@americanlawinstitute.net, postmaster@americanlawinstitute.org. Also on May 8, 2013, 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 June 4, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant is the American Law Institute, an association of lawyers who create books and publications regarding various fields of law. Complainant has operated under the AMERICAN LAW INSTITUTE mark for years, and has protected its rights to this mark through United States Patent & Trademark Office (“USPTO”) trademark registrations. See, e.g., Reg. No. 1,273,451 registered on April 10, 1984.
Respondent’s <americanlawinstitute.net> and <americanlawinstitute.org> domain names are identical to the AMERICAN LAW INSTITUTE mark because neither the addition of generic top-level domains nor the deletion of a mark’s spacing is relevant under the Policy.
Respondent lacks rights and legitimate interests. Respondent is not commonly known by either of these domain names. The WHOIS information suggests that Respondent is “Domains By Proxy, LLC,” a name which bears no resemblance to either of the <americanlawinstitute.net> and <americanlawinstitute.org> domain names. Complainant’s correspondence with Respondent has revealed that Respondent may also be “The American Institute of Law and Religious Freedoms.” Complainant can find no web presence for this entity, and does not believe such an entity even exists. Respondent has received no license to make any use of Complainant’s marks in domain names. Respondent has never been otherwise authorized or permitted to make use of Complainant’s marks.
Respondent is using both the <americanlawinstitute.net> and <americanlawinstitute.org> domain names to host parked websites that are dedicated to the hosting of hyperlink advertisements to legal goods and services that are both relevant and competitive to Complainant’s mark. Respondent’s use of these domain names to host a listing of paid advertisements, most of which direct Internet users to competing or related services, is evidence of Respondent’s bad faith attempt to confuse Internet users into clicking through these hyperlinks. Respondent profits through this confusion, as Internet advertisements typically provide the registrant with a per-click revenue each time an Internet user clicks on a hyperlink.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns a USPTO registered trademark for AMERICAN LAW INSTITUTE.
Respondent is not affiliated with Complainant and had not been authorized to use the AMERICAN LAW INSTITUTE mark in any capacity.
Respondent registered the at-issue domain name after Complainant acquired trademark rights in AMERICAN LAW INSTITUTE marks.
The <americanlawinstitute.net> and <americanlawinstitute.org> domain names are used by Respondent to host a website to host parked websites that are dedicated to the hosting of hyperlink advertisements some of which are to legal goods and services that are both relevant and competitive to Complainant’s mark.
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’s USPTO registration for the AMERICAN LAW INSTITUTE mark shows Complainant has rights in such mark under Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Respondent’s <americanlawinstitute.net> and <americanlawinstitute.org> domain names are each identical to Complainant’s AMERICAN LAW INSTITUTE mark within the meaning of Policy ¶ 4(a)(i) because neither the addition of a top level (here “.org” and “.net”) nor the deletion of a mark’s spaces is relevant under the Policy. Respondent’s minor alterations to Complainant’s mark do nothing to distinguish the domain names from Complainant’s trademark, since a top level domain name is mandatory in domain names while the use of spaces is prohibited. See Wembley Nat’l Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16, 2000) (finding that the domain name <wembleystadium.net> is identical to the WEMBLEY STADIUM mark); see also Daedong-USA, Inc. v. O’Bryan Implement Sales, FA 210302 (Nat. Arb. Forum Dec. 29, 2003) (“Respondent's domain name, <kioti.com>, is identical to Complainant's KIOTI mark because adding a top-level domain name is irrelevant for purposes of Policy ¶ 4(a)(i).”).
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the domain name.
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond and since as discussed below there is no evidence supporting a finding pursuant to Policy 4(c) that Respondent has rights or interests in the at-issue domain name, Complainant’s prima facie showing acts conclusively.
WHOIS information identifies “Domains By Proxy, LLC” as the at-issue domain name’s registrant. Moreover, the record before the Panel contains only slight evidence suggesting that Respondent is otherwise commonly known by the domain name. The Panel thus concludes that Respondent is not commonly known by the at-issue domain name for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); 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).
Respondent uses both the <americanlawinstitute.net> and <americanlawinstitute.org> domain names to host parked websites. Each website is dedicated to displaying hyperlink advertisements to legal goods and services that are relevant to, and competitive with, Complainant’s mark as well as to unrelated goods and services. Respondent’s use of the at-issue domain names to host hyperlink advertisements is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See 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)).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).
The at‑issue domain name was registered and is being used in bad faith. As discussed below, Policy ¶ 4(b) circumstance are present as well as other circumstances which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
Respondent’s use of the at-issue domain names to host a listing of paid advertisements, some of which direct Internet users to competing or related services, is evidence of Respondent’s bad faith attempt to drive Internet users looking for Complainant to Respondent’s websites so that such users may click on one or more of the displayed hyperlinks. It is likely that Respondent will profit by this confusion, as Internet advertisements typically provide a website’s sponsor with revenue each time an Internet user clicks on a hyperlink. Respondent’s decision to host competing or unrelated hyperlinks on the <americanlawinstitute.net> and <americanlawinstitute.org> domain names demonstrates bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
Finally, Respondent knew of Complainant’s AMERICAN LAW INSTITUTE mark before it registered the at-issue domain names. Respondent’s prior knowledge of Complainant’s rights in the AMERICAN LAW INSTITUTE mark is shown in light of the Panel’s finding that the domain names are for all intents and purpose identical to Complainant’s trademark and from the fact that there is no alternative explanation in the record as to why Respondent chose to register the AMERICAN LAW INSTITUTE mark in the two at-issue domain names. Knowingly registering the trademark of another in a confusingly similar domain name shows Respondent’s bad faith under the Policy. See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <americanlawinstitute.net> and <americanlawinstitute.org> domain names be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: June 6, 2013
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