Accion International and Accion East, Inc. v. Olivier Nimeskern
Claim Number: FA1406001563836
Complainant is Accion International and Accion East, Inc. (“Complainant”), represented by Randi W. Singer of Weil, Gotshal & Manges LLP, New York, USA. Respondent is Olivier Nimeskern (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <accionnewyork.org>, registered with GoDaddy.com, LLC (R91-LROR).
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 June 10, 2014; the National Arbitration Forum received payment on June 11, 2014.
On June 11, 2014, GoDaddy.com, LLC (R91-LROR) confirmed by e-mail to the National Arbitration Forum that the <accionnewyork.org> domain name is registered with GoDaddy.com, LLC (R91-LROR) and that Respondent is the current registrant of the name. GoDaddy.com, LLC (R91-LROR) has verified that Respondent is bound by the GoDaddy.com, LLC (R91-LROR) 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 June 16, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 7, 2014 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@accionnewyork.org. Also on June 16, 2014, 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 July 7, 2014.
A timely Additional Submission was received on July 14, 2014.
On July 15, 2014, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant’s Contentions
Complainant uses the ACCION mark in connection with its business management, loan financing, and insurance services. Complainant has protected its interest in the ACCION mark through United States Patent and Trademark Office ("USPTO") registrations (e.g., Reg. No. 3,006,595, registered Oct. 11, 2005). Respondent’s domain name is confusingly similar to the ACCION mar because it merely adds the location “newyork” and a generic top-level domain ("gTLD").
Respondent has not been known by this domain name. Indeed, Respondent identifies only as “Olivier Nimeskern.” Respondent uses the <accionnewyork.org> domain name to fraudulently advertise services under the ACCION mark to consumers in the New York market. See Compl., at Attached Ex. Q.
Respondent has registered the domain name in bad faith. First, Respondent has sought to sell off this domain name for roughly seven times the out-of-pocket expenses associated with domain name ownership. Second, Respondent seeks to profit from a likelihood that Internet users will confuse Complainant as the ACCION mark as being associated with this domain name. Third, Respondent is attempting to create the false impression that it is affiliated with, or endorsed by, Complainant. Finally, Respondent’s actions here suggest it had actual notice of Complainant’s rights in the mark prior to domain name registration.
Respondent cannot benefit from the doctrine of laches here because his intentional bad faith precludes this equitable doctrine.
Respondent’s Contentions
Respondent does not believe that the confusing similarity between the domain name and the mark is important here.
Respondent bought the domain name to capitalize on its search engine optimization parameters and market various businesses. Respondent has not yet deployed its plan.
The term “accion” means “action” in the Spanish language. Thus the domain name is intended to mean “Action New York.” It is not intended to trade upon this trademark.
Respondent acquired the domain name on November 7, 2010 for $263.68.
There is no bad faith here. Respondent’s offer to sell arose only through a series of deliberations between the parties about settling this dispute. There was no boldfaced unprovoked solicitation made to Complainant. Further, there is no likelihood of confusion because Respondent is using the domain name to capitalize on search engine optimization tools—not to generate advertising revenue from Internet users. Respondent is not in the financial services business and thus has no competitive services to offer.
Complainant’s Additional Submission
None of Respondent’s responses are relevant to a Policy ¶ 4(a)(i) confusing similarity analysis, which “considers only whether Complainant has rights in the marks and whether the disputed domain names are identical or confusingly similar to Complainant’s mark.
Complainants demonstrated incontestable rights in the ACCION Marks (the “Marks”) due to continuous use of the Marks in commerce for over 50 years and registration of the Marks with the USPTO.
While Respondent argues that ACCION® is not well-known and that Respondent places no value on the word “accion”, Response ¶¶ 19-24, it is irrefutable that ACCION® is a federally registered trademark and Respondent’s domain name is confusingly similar to it.
Respondent fails to refute Complainants’ claim that Respondent has no rights or legitimate interests in the Domain Name.
Respondent’s use of the Domain Name is not protected as a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent uses the Domain Name to display a website that offers financial information and services in competition with those offered by Complainants.
Using a Domain Name and a website title that both wholly incorporate the Marks, Respondent provides links to commercial websites and content, some of which directly relates to Complainants’ services.
Respondent knowingly and intentionally used the Marks in violation of Complainants’ rights in its Domain Name, which wholly incorporates Complainants’ Marks, and website that features directly competing financial information and links to commercial third-party websites.
Respondent appears to have registered the Domain Name for the purpose of selling it for an amount in excess of his out-of-pocket costs, demonstrating bad faith use under Policy ¶ 4(b)(i).
1. Respondent’s <accionnewyork.org> domain name is confusingly similar to Complainant’s ACCION mark.
2. Respondent does not have any rights or legitimate interests in the <accionnewyork.org> domain name.
3. Respondent registered or used the <accionnewyork.org> domain name in bad faith.
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.
Complainant uses the ACCION mark in connection with its business management, loan financing, and insurance services. Complainant has protected its interest in the ACCION mark through USPTO registrations (Reg. No. 3,006,595, registered Oct. 11, 2005). The Panel agrees here that regardless of where Respondent dwells, proof of registration with the USPTO is sufficient evidence under Policy ¶ 4(a)(i). See Amusement Art, LLC v. zarathustra james / bomit, FA 1536201 (Nat. Arb. Forum Jan. 29, 2014) (“The Panel observes that Respondent appears to reside and operate within the United States. Therefore, the Panel holds that Complainant’s registration of the MR BRAINWASH mark with the USPTO sufficiently establishes its rights in the mark pursuant to Policy ¶ 4(a)(i).”).
Complainant further claims Respondent’s domain name is confusingly similar to the ACCION mark because it merely adds the location “newyork” and a gTLD. The Panel agrees that Respondent’s allegations are meritless here because the domain name merely combines a registered mark, a common geographic term, and the gTLD “.org.” See, e.g., Alticor Inc v. Cao Mai, FA1521565 (Nat. Arb. Forum Nov. 5, 2013) (stating that, “the domain name buy-artistry.com is unquestionably confusingly similar to [c]omplainant’s famous ARTISTRY mark” as a result of the domain name differing from the complainant’s mark by no more than the generic term “buy” and a hyphen).
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 claims Respondent has not been known by this domain name. Indeed, Respondent identifies only as “Olivier Nimeskern.” Thus this Panel agrees that Respondent has never been known by the domain name under Policy ¶ 4(c)(ii). See Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected).
Complainant further alleges that Respondent uses the <accionnewyork.org> domain name to fraudulently advertise services under the ACCION mark to consumers in the New York market. See Compl., at Attached Ex. Q. The Panel agrees that despite Respondent’s allegations that the website has no meaningful use, it is clear that Internet users who visit this website are offered an array of content that relates to the financial services sector. See id. The Panel agrees that whether there are advertisements or not is irrelevant. There is no bona fide offering or legitimate noncommercial or fair use here because the domain name effectively contains the same type of information a curious Internet user might expect to be found on an ACCION-branded website. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). Thus the Panel finds Respondent is without rights or legitimate interests under the parameters of Policy ¶¶ 4(c)(i) or (iii).
Registration and Use in Bad Faith
Complainant claims Respondent has sought to sell off this domain name for roughly seven times the out-of-pocket expenses associated with domain name ownership. The Panel notes that Respondent appeared to be engaged in negotiations with Complainant resulting in an offer to sell for $2,055. The Panel believes this offer to constitute a bad faith attempt to profit from the registration of a domain name for resale, and the Panel finds Policy ¶ 4(b)(i) bad faith. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”).
Complainant also claims Respondent seeks to profit from a likelihood that Internet users will confuse Complainant as the ACCION mark as being associated with this domain name. The Panel believes, based on the domain name’s content evidenced in Exhibit Q, that there is a likelihood that Internet users may grow confused as to an association between Respondent and Complainant, and the Panel finds Policy ¶ 4(b)(iv) bad faith. See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
Complainant claims Respondent is attempting to create the false impression that it is affiliated with, or endorsed by, Complainant. The Panel agrees that Respondent’s decision to host content referencing the financial services industry is suggestive of an association with Complainant so as to provide a basis for determining Policy ¶ 4(a)(iii) bad faith passing off. See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith).
Complainant further claims Respondent’s actions here suggest it had actual notice of Complainant’s rights in the mark prior to the <accionnewyork.org> domain name’s registration. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <accionnewyork.org> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: July 28, 2014
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