American Advisors Group v Domain Administrator / DVLPMNT MARKETING, INC.
Claim Number: FA1411001589664
Complainant is American Advisors Group (“Complainant”), represented by Kristin Kemp, California, USA. Respondent is Domain Administrator / DVLPMNT MARKETING, INC. (“Respondent”), St. Kitts.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <aagreversemortgage.com>, registered with DNC Holdings, Inc.
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.
Hon. Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 12, 2014; the National Arbitration Forum received payment on November 12, 2014.
On November 13, 2014, DNC Holdings, Inc. confirmed by e-mail to the National Arbitration Forum that the <aagreversemortgage.com> domain name is registered with DNC Holdings, Inc. and that Respondent is the current registrant of the name. DNC Holdings, Inc. has verified that Respondent is bound by the DNC Holdings, 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 November 18, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 8, 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@aagreversemortgage.com. Also on November 18, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 15, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (Ret.) as Panelist.
By Order dated December 16, 2014, the Panel directed Complainant to provide additional evidence and allegations.
On December 24, 2014, the Forum received from Complainant a supplemental Complaint with exhibits.
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.
Complainant
a. Complainant is solely in the business of reverse mortgage loans. Complainant’s trademarks are well established in commerce. Complainant spends a substantial amount of money on its reverse mortgage advertising campaigns, including a well-known television campaign featuring Senator Fred Thompson. Complainant has established considerable consumer name recognition, and Respondent is using this name recognition in bad faith.
b. The <aagreversemortgage.com> domain name uses American Advisor’s Group’s trademark (AAG). In the <aagreversemortgage.com> domain name, “AAG” is used in conjunction with “reverse mortgage.”
c. Respondent holds no trademark rights in AAG or American Advisors Group. Respondent is not in the business of reverse mortgage loans.
d. The <aagreversemortgage.com> domain name should be considered as having been registered and being used in bad faith. By using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s web site or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site and of a product or service (reverse mortgage loans) on Respondent’s web site or location.
Respondent
Respondent did not submit a Response in this proceeding.
Complainant’s Additional Submission
Since December 2005, Complainant has expended tremendous time, money and resources to build the goodwill in its AAG and AAG REVERSE marks (hereinafter “the AAG Marks”) including, but not limited to, its well-known television, print and web-based advertising campaign featuring famous actor and former Senator Fred Thompson. As a result, the AAG Marks have become famous in the reverse mortgage industry and, as such, are properties of incalculable value.
According to the WHOIS records, Respondent acquired ownership of the domain name registration for <aagreversemortgage.com> on May 3, 2011, long after Complainant established its rights in and to the AAG Marks. To the best of Complainant’s knowledge, since that date, Respondent has not developed any business relating to nor incorporating the terms “AAG Reverse Mortgage.” Moreover, the domain name bears no relationship to any legitimate business of Respondent, nor has Respondent shown any demonstrable preparations to use the domain name in connection with any bona fide offering of goods or services.
For the reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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 argues that it has rights in the AAG mark. While the Policy establishes trademark registration as a way to demonstrate rights in a mark, the Panel finds that registration of a mark is not necessary for Complainant to have rights in the mark. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant’s trademark or service mark be registered by a government authority or agency for such rights to exist).
Complainant states that it targets consumers with advertising related to, and provides these consumers with, reverse mortgages using the AAG mark. Complainant states that it has spent a substantial amount of money on its advertising campaign, and has been using the AAG mark continuously since 2005. In Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug 17, 2000), the panel found that a complainant had established secondary meaning in its mark by virtue of its continuous and ongoing use of the mark. The Panel finds that the Complainant’s uncontested allegations establish that Complainant has rights in the AAG mark under Policy ¶ 4(a)(i).
Complainant has several state registrations of the AAG mark and registrations of the mark with the USPTO. The Panel agrees that Complainant’s registrations of the AAG mark sufficiently demonstrate Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”).
Complainant argues that the <aagreversemortgage.com> domain name features the descriptive terms “reverse mortgage” in addition to the AAG mark. The Panel agrees that merely combining the purported mark with a term descriptive of the exact services furnished under that mark is indicative of Policy ¶ 4(a)(i) confusing similarity. See Best Western Int’l, Inc. v. Lost in Space, SA, FA 126834 (Nat. Arb. Forum Nov. 7, 2012) (finding that the deletion of spacing in a mark and the addition of a gTLD are irrelevant as they are dictated by the standardized nature of second- and top-level domain names, and further that the addition of generic and descriptive terms fails to negate confusing similarity).
Complainant has proven this element.
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.”).
The listed WHOIS registrant for this domain name is “Domain Administrator.” The Panel thus finds that Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
The domain name is being used to promote “price quotes” and hyperlinks related to reverse mortgages. The Panel finds such links to be neither a Policy ¶ 4(c)(i) bona fide offering of goods or services, or Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Complainant has proven this element.
Complainant argues that Respondent has registered the domain name in bad faith because it seeks to profit on a likelihood of confusion by Internet users as to the source or origin of the <aagreversemortgage.com> domain name’s content. The domain name includes many advertisements targeting reverse mortgage services. The Panel concludes that Respondent has acted in Policy ¶ 4(b)(iv) bad faith here. See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
Complainant has proven this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <aagreversemortgage.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: December 31, 2014
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page