American Animal Hospital Association v. Domain Manager / Hog Advertising LLC
Claim Number: FA1308001516145
Complainant is American Animal Hospital Association (“Complainant”), represented by Pamela N. Hirschman of Sheridan Ross P.C., Colorado, USA. Respondent is Domain Manager / Hog Advertising LLC (“Respondent”), represented by Charles Carreon, Arizona, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <aaha.org>, registered with Moniker Online Services LLC (“Moniker”).
The undersigned, David H Tatham, 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.
Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on August 22, 2013 and the Forum received payment on August 22, 2013.
On September 5, 2013, Moniker confirmed by e-mail to the Forum that the <aaha.org> domain name is registered with it and that Respondent is the current registrant of the name. Moniker has also verified that Respondent is bound by its 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”) and Rules for Uniform Domain Name Dispute Resolution Policy (“the Rules”).
On September 13, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 3, 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@aaha.org. Also on September 13, 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.
A timely Response was received and determined to be complete on October 3, 2013.
On October 8, 2013 an Additional Submission from Complainant was received by the Forum and deemed to be in compliance with its Supplemental Rule 7.
On October 8, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David H Tatham as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a non-profit corporation that is an animal exclusive veterinary association. It was founded in 1933 and since then has used the name American Animal Hospital Association and, latterly, the name AAHA, being the abbreviation of its full name. It has officially provided its services under the name AAHA since 1963 and this is now a registered trademark. It promotes veterinary medicine and animal hospitals by creating standards of veterinary care, by evaluating animal hospitals, and by providing educational courses and publications.
Complainant owns registrations with the USPTO for the trademarks AAHA, AAHA & Design, AAHA MARKETLINK, and AAHA HELPING PETS FUND and it contends that the first two of these marks are identical to the disputed domain name <aaha.org> and that the others are all confusingly similar to it.
It was in the Fall of 2012 that Complainant first became aware that Respondent was using the disputed domain name to misdirect Internet users to a website that was a parked search engine that provided links to a variety of third party websites. Copies of pages from the site were filed and these show links to various veterinary related topics such as ‘pet health insurance, ‘vet animal hospital’, ‘veterinarian’, ‘free pet exam coupon’, ‘ask a vet online now’, ‘the animal doctor, PC’, and ‘find a vet near you’. Complainant contends that because Respondent must be making a commission, or a pay-per-click fee, from all of these links, it is neither a bona fide offering of goods or services, nor a legitimate offering of goods or services, nor legitimate non-commercial or fair use. Respondent’s actions are therefore contrary to the Policy.
However, at the time of making the Complaint, Respondent’s website was not available to the public and Complainant contends that this failure to make any use of the disputed domain name does not support a bona fide offering of goods or services.
Respondent’s name is “Domain Manager, Hog Advertising LLC” and Complainant further contends that it is not therefore commonly known by the disputed domain name. Furthermore the name contains the TLD ‘org’ which is normally reserved for non-profit organizations. In addition, the name was registered in 2000 although apparently Respondent did not obtain ownership of it until several years later, whilst Complainant’s use of the identical trademark AAHA commenced some 40 years earlier in 1963.
Finally, Complainant contends that Respondent is not making any legitimate or non-commercial use of the disputed domain name because not only is it attempting to make commercial gain from the disputed name – as explained above – but it has also attempted to sell the disputed domain name for more than its out-of-pocket expenses. Complainant describes how, although it offered to purchase the name from Respondent in return for a reimbursement of its registration costs, Respondent asked for $18,000.
This offer to sell is, in Complainant’s opinion, also evidence of Respondent’s bad faith. Complainant has in fact been attempting to arrange a transfer of the disputed domain name for several months, but refrained from doing so for some time on being informed that the principal of Respondent had had a stroke. However, Respondent has an attorney and Complainant increased its offer to purchase the disputed domain name for $3,000. However, the price demanded by Respondent remained at $18,000. This is, in the opinion of Complainant, clear evidence of bad faith.
Furthermore, Complainant contends that Respondent has:
a. Prevented Complainant from reflecting its trademark in the corresponding domain name because the TLD .org is normally reserved for non-profit organisations which is what Complainant is;
b. Intentionally attempted to attract Internet users to a website which is unrelated to Complainant and so created a likelihood of confusion with Complainant’s name and incontestable trademark;
c. Never made any active use of the disputed domain name.
B. Respondent
Respondent states that the true Respondent in this matter is “AAHA.ORG, Hog Advertising, LLC, through Linda Meyer” which is referred to in the Response by the abbreviation of its name – “HALLC”. Mrs. Meyer has recently taken over HALLC since her husband, Mr. Hal Meyer, suffered a stroke and has lost much of his ability to speak and all of his ability to write or use a computer. In a Declaration, Mrs. Meyer asserts that there could be life-threatening consequences if he were to participate in this dispute in any way.
Mrs. Meyer contends that it was Mr. Meyer’s practice to purchase four-letter domain names through a service that tracked such names when they became available, in order to provide advertising space for HALLC. There are no available records of the transaction by which Mr. Meyer acquired the disputed domain name <aaha.org>.
Mrs. Meyer also alleges that it was Complainant’s counsel who first initiated any negotiations for the purchase of the disputed domain name and so it is outrageous to claim that these negotiations amount to bad faith. Also, she alleges that Mr. Meyer never offered to sell the disputed domain name to Complainant.
Respondent contends that Complainant’s delay in filing the Complaint has impaired Respondent’s ability to establish that it has legitimate rights in the disputed domain name in view of Mr. Meyer’s current condition. A delay of thirteen years in bringing this Complaint gives rise to a strong inference that Complainant does not believe, and never has believed, that it has a valid claim under the Policy. It was incumbent upon Complainant to bring its claim promptly so that Respondent could marshal all of its evidence before this was lost. The entire institutional memory of HALLC has been placed beyond human reach.
Respondent claims that the word AAHA – together with its near cousins AHA and AHAA – are merely expressions of surprise so the disputed domain name was therefore acquired quite legitimately when it became available and when it was used in Respondent’s advertising business.
Respondent also claims that AAHA is a very commonly used acronym for corporate and non-profit organizations and, annexed to the Response was a printout listing 20 such acronyms. Respondent contends that none of these names spring to mind upon hearing the acronym AAHA, and Respondent alleges that neither Complainant nor any of the other 19 users of the term have any rights in this popular and entirely commonplace term. It is therefore hard to imagine a mark which is weaker than that of Complainant.
C. Additional Submissions
As noted above, Complainant filed an Additional Submission.
In it, Complainant does not dispute that it initiated negotiations for the transfer of the disputed domain name but alleges that this is immaterial.
There has been no delay on the part of Complainant because it contacted Respondent very shortly after first learning of the existence of the disputed domain name. Also it has been held that laches is no defence in proceedings under the Policy. However even if it was, there is none in this case as Complainant sent its cease-and-desist letter immediately upon learning of Respondent’s infringing use of its trademark.
Also, upon learning of Mr. Meyer’s stroke, Complainant waited for several months before re-opening the matter with an increased offer of $3,000 for the disputed domain name, in the hope that Mr. Meyer had recovered sufficiently to resume the negotiations. However as Respondent was apparently not interested in selling the domain name at a reasonable price, the Complaint was filed.
Complainant refutes the claim that AAHA is a spontaneous expression of surprise and filed extracts from three different dictionaries which showed that it is AHA and not AAHA that is defined as a spontaneous expression of surprise.
As for Respondent’s evidence of third party uses of the acronym AAHA, this is irrelevant as the true test under the Policy is whether or not a disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. In this case, Complainant has produced evidence of its three incontestable trademarks which are either identical or confusingly similar to the disputed domain name.
Furthermore, as Complainant is a non-profit organization, the disputed domain name <aaha.org> would be a much more appropriate for Complainant to use than Respondent.
Complainant has been active for 80 years. Its mission statement is to: Enhance the abilities of veterinarians to provide quality care to companion animals; to enable veterinarians to conduct their practices and maintain their facilities with high standards of excellence; and to meet the public’s needs as they relate to the delivery of small animal medicine. It has used the acronym AAHA since at least 1963.
There is no information about which services Respondent offers, but from its name, and from the evidence, it would appear to be in the advertising business. It was founded by Mr. Hal Meyer but is now run by his wife, Mrs. Linda Meyer, following the former’s severe stroke.
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.
(5) active use of the disputed domain name has permitted a Respondent to build a reputation in it;
(6) the parties are in the same business and so could be aware of each other;
For a finding of laches, it is not necessary that all of the above elements need to be present. However in this case, the Panel finds itself in a difficult position as there is no clear evidence as to when Respondent acquired and/or first started to use the disputed domain name. Mrs. Meyer states, in her Declaration, that her husband registered it in January 2000, but according to the copy of the record for the name which she annexed to her Declaration, that was actually the date when the domain name was created. She also states in her Declaration that “records of the transaction by which Mr. Meyer acquired AAHA.ORG … cannot be located” and that “No information is available regarding the use of AAHA.ORG”. However it would seem from the records for the disputed domain name which were filed by Complainant, that it was owned by Respondent at least in 2004.
The Complaint was not filed until thirteen years after the disputed domain name was registered, and about seven years after it appears to have been acquired by Respondent. However Complainants state that they did not discover that Respondent was using the disputed domain name until “the fall of 2012” and that a cease and desist letter was written to Respondents “on November 29, 2012”. A few weeks later they were informed that Mr. Meyer had had a stroke. A copy of letter from his physician which was filed by Respondent states that this occurred on May 17, 2012.
So, some time between 2004 and May 2012 Mr. Meyer was well enough to acquire the disputed domain name, to create its website, and to post various items on this. Since some of these items were related to both Complainant and the veterinary world (e.g., “Ask an AAHA vet online”), it is reasonable to assume that he was aware that the letters AAHA referred, not to any of the other 19 organisations who, Respondent alleges, are using them, but to Complainant.
Reverting now to the elements required for a claim of laches to succeed, there certainly has been a delay in bringing a claim but in the opinion of the Panel it is excusable. The parties are not in the same business and Complainant is a non-profit organisation with, possibly, limited administrative resources and so not on the lookout for infringing websites or domain names. The Panel is prepared to believe that it objected to the name as soon as, or very soon after, it was alerted to it. The name is no longer in use, so it has not been possible for Respondent to build a reputation in it.
In all these circumstances, the Panel has concluded that, although there has been a delay in this case, it is excusable, so that laches is not a valid defence in this case. It will therefore proceed to examine the matter according to the rules and practice of the Policy.
Complainant is the owner of the following trademarks, all of them registered at the USPTO and the first three of them being incontestable, having been registered for more than five years and in continuous use:
AAHA No. 964,836 registered July 24, 1973 for a variety of goods in Class 42 and claiming first use in May 1964;
AAHA No. 1,450,663 registered August 4, 1987 for a variety of goods in Class 16 and claiming first use in 1963;
AAHA No. 1,467,760 registered December 1, 1987 for a variety of services and claiming first use in 1963;
AAHA & Design No. 1,207,568 registered September 7, 1982 for a variety of services in Classes 41 and 42 and claiming first use in September 1963;
AAHA & Design No. 3,725,036 registered December 15, 2009 in Class 16 for a variety of goods and services in Classes 16, 35, 36, 41 and 44 and claiming first use of March 2009;
AAHA MARKETLINK No. 2,142,088 registered March 10, 2008 in Class 35 and claiming first use of September 10, 1996; and
AAHA HELPING PETS FUND No. 3,053,994 registered January 31, 2006 in Class 36 for a variety of services claiming first use of January 31 2005.
It is by now well established that, when comparing a disputed domain name with a trademark, a gTLD such as – in this case – “.org” should be disregarded. See, for example, Rollerblade, Inc, v. Chris McCrady, D2000-0429 (WIPO June 25, 2000), in which the panel found that a top level of the domain name such as “net” or “com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar to the Complainant’s trademark. See also Bank of America Corporation v. Bill McCall, FA 135012 (Nat. Arb. Forum December 31, 2002) (holding that attaching a gTLD to a domain name is “unable to create a distinction capable of overcoming a finding of confusing similarity”).
Consequently, it is just the letters ‘aaha’ which have to be compared with Complainant’s trademarks. This is identical to three of them, two others consist of just these letters as part of simple devices, and the other two begin with this name. Respondent argues that the trademark AAHA is a weak mark because other companies or organisations use the same set of initials, but for Paragraph 4(a)(i) of the Policy it is only necessary for a Complainant to prove that it has rights in a name that is either identical or confusingly similar to a disputed domain name. What happens in the wider world is irrelevant.
In this case, Complainant clearly has such rights as three of its AAHA trademarks are identical to the disputed domain name whilst two of them consist of just these letters in simple designs. Furthermore several of them are incontestable and four of them were actually registered before the disputed domain name.
Consequently the Panel finds that paragraph 4(a)(i) is proved.
Rights or Legitimate Interests
It is well established that the burden for proving that a respondent has no rights or legitimate interests in a disputed domain name rests with a complainant. However this puts him in the almost impossible position of proving a negative. So it is customary, when a complainant has made out a prima facie case that a respondent lacks rights and legitimate interests in a disputed domain name, for the burden to shift to the respondent to show that it does have rights or legitimate interests. See, for example, both Hanna-Barbera Productions., Inc. v. Entertainment Commentaries, FA 741828 (Nat. Arb. Forum August 18, 2006), and AOL LLC v. Jordan Gerberg, FA 780200 (Nat. Arb. Forum September 25, 2006).
In this case, the Panel believes that Complainant has made out a prima facie case and so the burden to prove that it does have rights and a legitimate interest in the disputed domain name falls upon Respondent.
According to paragraph 4(c) the Policy, a Respondent can demonstrate that he has rights or a legitimate interest in a disputed domain name in one of three ways:
(i) That before any notice of the dispute, he has used, or made demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.
(ii) That he has been commonly known by the trademark even if he has acquired no trademark or service mark rights in it;
(iii) That he is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s trademark.
In the opinion of the Panel, Respondent has not been able to prove any of the above requirements. Complainant first contacted Respondent about the disputed domain name in November 2012 and the history of the registration and use of the disputed domain name is rehearsed above when discussing the question of laches.
According to Complainant, the original website at the disputed domain name is no longer available, and the Panel can confirm this. However it certainly was once available because Complainant filed copies of two screen shots from the site. These give every indication of the site being a parked or pay-per-click site and so not legitimate. Furthermore these pictures make several references to a number of topics related to the veterinary world in which Complainant operates exclusively, and where it has operated under the abbreviated name AAHA for 50 years. Two of the entries contain a clear reference to Complainant – “Find a AAHA vet near you” and “Ask an AAHA vet online”.
It was said in Vance International, Inc. v. Abend, FA 970871 (NAF June 8, 2007), that, “It has long been held that when a domain name is confusingly similar to a complainant’s trademark, to use it in this manner” (i.e., with links to competing sites) “is neither a bona fide offering of goods and services nor a legitimate noncommercial or fair use pursuant to paragraph 4(c) of the Policy, whether or not respondent directly receives click-through referral revenue” and this Decision also referred to similar findings in the cases of State Farm Mutual Automobile Insurance co. v. Haan FA 948470 (Nat. Arb. Forum May 9, 2007); see also Charles Letts & Co Limited v. Citipublications FA692150 (Nat. Arb. Forum July 17, 2006); see alsoAuralog s.a. v. Innovedo FA 945049 (Nat. Arb. Forum May 14, 2007).
According to the WIPO Overview on Selected UDRP Questions, parking or landing pages MAY be permissible in some circumstances. However they do not in themselves confer rights or legitimate interests arising from a bona fide offering of goods or services, or a legitimate or fair use of the domain name “especially where resulting in a connection to goods or services competitive with those of the right holder”. These quoted words are significant in the present case because that is precisely what the site at the disputed domain name does.
Given the appearance of the site at the disputed domain name, and its several references to Complainant and to veterinary related goods and services, the Panel is of the opinion that Respondent has failed to prove that it has any rights or a legitimate interest in a domain name that is identical to a name in which the Complainant has such long-standing rights. Consequently, the Panel finds that paragraph 4(a)(ii) is also proved.
The Panel has also concluded that, in this case, Respondent has acted in bad faith. As noted above, the site at the disputed domain name is no longer accessible and passive holding of a domain name can be evidence of bad faith. For example, it was said in DCI S.A. v. Link Commercial Corporation WIPO D2000-1232 (December 7, 2000) “The Administrative Panel follows the rulings set out in the decision case No. D2000-0003 Telstra Corporation Limited v. Nuclear Marshmallows in finding that the passive holding of the domain name by the Respondent amounts to the Respondent acting in bad faith.”
There are, of course perfectly valid reasons in this case (i.e. Mr. Meyer’s incapacity) why the disputed domain name is no longer in use. However there is another example of bad faith.
Paragraph 4(b)(i) of the Policy states, in part, as follows:
(i) Circumstances indicating that you have registered or you have acquired the domain name … for the purpose of selling … the domain name registration to the Complainant who is the owner of the trademark … for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name.
In this case, there is no available record of what Mr. Meyer actually paid for the disputed domain name when he acquired it. So it is possible that the cost could have been in the region of the $18,000 which is the price he put upon it. However this seems unlikely given that in a communication to Complainant’s attorney, Respondent’s attorney, after mentioning the price of $18,000 for the disputed domain name, wrote that he was sure his client “would take considerably less”. Nevertheless, Respondent still turned down a generous offer of $3000. This exchange is in stark contrast to Mrs. Meyer’s allegation that her husband never offered to sell the disputed domain name. If not him, then who did?
It is the Panel’s conclusion therefore that Respondent, having acquired the disputed domain name, was interested in selling it for a considerable sum. Mrs. Meyer is apparently outraged by the fact that because the negotiations for the sale of the disputed domain name were started by Complainant then this could amount to bad faith. But it is not the negotiations which amount to bad faith, but the offer to sell the name for as much as $18,000.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <aaha.org> domain name be TRANSFERRED from Respondent to Complainant.
David H Tatham, Panelist
Dated: October 21, 2013
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