DECISION

 

Alpha Xi Delta, Inc. v. Befriend Internet Services

Claim Number: FA0110000100681

 

PARTIES

The Complainant is Alpha Xi Delta, Inc., Indianapolis, IN (“Complainant”) represented by Robert S. Meitus, of Baker & Daniels.  The Respondent is Befriend Internet Services, Richmond, VA (“Respondent”).

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <alphaxidelta.com>, registered with Domain Bank.

 

PANEL

The undersigned certifies that she has acted independently and impartially and to the best of her knowledge, has no known conflict in serving as Panelist in this proceeding:

 

Estella S. Gold, Esq.  as Sole Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on October 17, 2001; the Forum received a hard copy of the Complaint on October 18, 2001.

 

On October 23, 2001, Domain Bank confirmed by e-mail to the Forum that the domain name <alphaxidelta.com> is registered with Domain Bank and that the Respondent is the current registrant of the name.  Domain Bank has verified that Respondent is bound by the Domain Bank registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On October 23, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 12, 2001 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@alphaxidelta.com by e-mail.

 

A timely response was received and determined to be complete on November 12, 2001.

 

On November 21, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Estella S. Gold, Esq. as Panelist.

 

RELIEF SOUGHT

The Complainant requests that the domain name be transferred from the Respondent to the Complainant.

 

PARTIES’ CONTENTIONS

A.     Complainant

a.                The Trademark

The Complaint is based upon six (6) United States Federal Registrations for the mark ALPHA XI DELTA.  The first Registration, issued in 1991, in International Class 14 is for jewelry.  The second Registration, issued in 1991, in International Class 21 for drinking glasses and dishes.  The third Registration, issued in 1991, in International Class 20 is for picture frames, ornamental novelty buttons, and non-metallic auto license plate frames.  The fourth Registration, issued in 1991, in International Class 25, is for various clothing.  The fifth Registration, issued in 1991, in International Class 16, is for paper goods and printed matter.  The sixth Registration, issued in 1964, in International Class 200,  indicates membership in the named fraternity. 

 

b.               The Complaint

The Complainant avers as follows:

Respondent owns the domain name registration <alphaxidelta.com>.  Complainant  alleges that Respondent’s domain name is identical to its trademark ALPHAXIDELTAÒ, because Complainant’s mark has been incorporated, in its entirety, into the second level of the domain name.

 

Complainant alleges that Respondent has no rights or legitimate interest in

the mark which is incorporated into Respondent’s registered domain name <alphaxidelta.com>.

 

Complainant alleges that Respondent has not and is not now using

the domain name in connection with a  bona fide offering of any goods and services. 

 

Complainant alleges that Respondent is using Complainant’s mark to divert users

to its own site and/or for commercial benefit in bad faith.  Complainant has notified Respondent of its objection to unauthorized use.

 

B.                 Respondent

Respondent alleges that placement of a disclaimer on its website ensures that

visitors are aware that the site is not affiliated with the Complainant.  Further, Respondent alleges that a link to the Complainant’s website illustrates the good faith of the Respondent.

 

Respondent alleges there is no direct or indirect economic or goodwill benefit derived from the use of Complainant’s mark.

 

Respondent alleges that it is not profiting and does not intend to profit from any of the linkages on its website.

 

Respondent alleges that it has never attempted to sell any domain name associated with a fraternal organization, and that there is no pattern of hoarding domain names for the purpose of cybersquatting. 

 

Respondent alleges that its use is non-commercial, fair use of the domain name,

without intent for commercial gain or for diversion of consumers.

 

C.                 Undisputed Facts

1.      It is undisputed that Complainant is the registered owner of the mark ALPHA XI DELTA. 

 

2.      It is undisputed that Respondent is the registered owner of the domain name <alphaxidelta.com>.

 

3.      It is undisputed that Respondent does business as “Befriend Internet Services,” an Internet consulting, server administration and software development company, which is a commercial enterprise.

 

4.      It is undisputed that Befriend Internet Services is named at the section of each web page allowing linkage to <befriend.com>where Respondent advertises its business.

 

DISCUSSION and FINDINGS

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution

Policy (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 the 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 the Complainant has rights;

(2)        the Respondent has no rights or legitimate interests with respect to the domain name; and

(3)               the domain name has been registered and is being used in bad faith.

 

Identical and/or Confusingly Similar

Respondent's <alphaxidelta.com> domain name is identical to Complainant's

registered ALPHA XI DELTA mark.  Respondent  incorporates the entirety of  Complainant's mark in the disputed domain name and merely adds the top-level code ".com".  It has been found that the addition of a top-level code such as "com" or "org" is not enough to create a distinct mark or defeat a claim of identical or confusing similarity.  See The Fed’n of Gay Games, Inc. v. Hodgson & Scanlon, D2000-0432 (WIPO June 28, 2000) (finding that the domain name <gaygames.com> is identical to Complainant's registered trademark GAY GAMES); see also World Wrestling Fed'n Entm't., Inc. v. Rapuano, DTV2001-0010 (WIPO May 23, 2001) (finding that “[t]he addition of the country code top level domain (ccTLD) designation <.tv> does not serve to distinguish those names from Complainant’s marks since ‘.tv’ is a common Internet address identifier that is not specifically associated with Respondent”).

 

The Administrative Panel is satisfied that the Complainant has met the

requirements of Paragraph 4(a)(i). 

 

Respondent’s Legitimate Interest

Complainant contends that Respondent has no rights or legitimate interests in the domain name under Policy ¶ 4(c).  See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under certain circumstances the mere assertion by the Complainant that the Respondent has no right or legitimate interest is sufficient to shift the burden of proof to the Respondent to demonstrate that such a right or legitimate interest does exist).

 

Complainant contends that Respondent is not using the <alphaxidelta.com> disputed domain name in connection with a legitimate and bona fide offering of goods or services because Respondent is diverting Internet users to Respondent's website which offers similar information to Complainant's official website.  See State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000) (finding that “unauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services”); see also Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was diverting consumers to its own website by using Complainant’s trademarks).  Respondent’s website does, in fact, offer similar information as Complainant’s site while using Complainant’s mark.

 

Complainant asserts that Respondent is not commonly known as <alphaxidelta.com> and therefore Respondent has no rights or legitimate interests in the domain name.  See See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in domain name when Respondent is not known by the mark).  Respondent has presented no arguments nor evidence whatsoever that  Respondent is known by the mark ALPHI XI DELTA.  

 

Complainant alleges that Respondent is not using the <alphaxidelta.com> domain name in a legitimate noncommercial manner, and therefore has no rights or legitimate interests in the disputed domain.  Respondent has provided links from its website at the disputed domain name to <apartments.com>, <springstreet.com>, <befriend.com>, and <travelocity.com>.  It can be inferred from these links that Respondent benefits financially when Internet users link to these commercial domains from Respondent's website.  See Ticketmaster Corp. v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9, 2001) (finding no rights or legitimate interests where Respondent generated commercial gain by intentionally and misleadingly diverting users away from the Complainant's site to a competing website); see also AltaVista v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding that use of the domain name to direct users to other, unconnected websites does not constitute a legitimate interest in the domain name).

 

Respondent has placed at the bottom of each web page a link to <befriend.com>.  The visitor to the website can view the name “Befriend” by which Respondent is known, and can directly link to <befriend.com> which describes Respondent’s commercial services.  It can be readily inferred from this linkage that Respondent benefits financially when internet users see its name and link to its commercial website from Respondent’s website using Complainant’s registered name. 

 

The Respondent argues that the presence of the disclaimer at the bottom of its website ensures that visitors to the disputed domain are not confused about the sponsorship, affiliation, or content of the <alphaxidelta.com> site.  However, the presence of a disclaimer on a website does not remedy improper registration of the domain name.  Initial interest confusion occurs when a domain name has the potential to misdirect consumers as they look for websites associated with the owner of a trademark.  “A disclaimer that proports to disavow association with the trademark owner after the consumer has reach the site comes too late; the consumer has already been misdirected.”  Paccar, Inc. v. Telescan Technologies LLC, 115 F.Supp.2d 772 (E.D.Michigan 2000). 

 

Registration and Use in Bad Faith

Finally, Complainant asserts that Respondent's use of Complainant's mark is a misappropriation of Complainant's goodwill.  Furthermore, that the association of the ALPHA XI DELTA mark with a for-profit enterprise or a ".com" domain will tarnish Complainant's mark, and therefore demonstrates Respondent's bad faith.  See Anne of Green Gable Licensing Auth., Inc. v. Internetworks, AF-0109 (eResolution June 12, 2000) (finding bad faith where Respondent used the domain name <anneofgreengables.com> to link users to a website that contains information about the Anne of Green Gables literary works, motion pictures and the author, L. M. Montgomery, where a visitor to the website may believe that the owner of the mark ANNE OF GREEN GABLES is affiliated with or has sponsored or endorsed Respondent's web site); see also National Rifle Ass'n. v. fredg.com, FA 95837 (Nat. Arb. Forum Nov. 30, 2000) (finding bad faith where Respondent registered the domain names “friendsofnra.com”, “friendsofnra.net”, and “friendsofnra.org” with the intention of using the domain names in connection with individual NRA fundraising, but without permission from Complainant to use the registered marks); see also Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding bad faith where the Respondent attracted users to a website sponsored by the Respondent and created confusion with the Complainant’s mark as to the source, sponsorship, or affiliation of that website). There is no dispute that Respondent’s use of the mark was unauthorized.

 

All the elements of Paragraph 4(b)(iv) have been satisfied.  Accordingly, Respondent has both registered and used the domain name in issue in bad faith under Paragraph 4(a)(iii). 

 

DECISION

In light of the findings by the Panel, the Panel decides that Complainant, Alpha Xi Delta, has met its burden of proving (1) the domain name in issue is identical to the ALPHA XI DELTA mark, (2)  Respondent, Befriend Internet Services, has no rights, nor legitimate interest with respect to the domain name in issue, and (3) the domain name in issue has been registered and is being used by Befriend Internet Services in bad faith.

 

Accordingly, the Panel requires that the registration of the <alphaxidelta.com> domain name be transferred to Alpha Xi Delta, Inc.

 

 

Estella S. Gold, Esq., Sole Panelist

 

Dated:  November 28, 2001