AARP v. LaPorte Holdings, Inc.
Claim
Number: FA0501000409880
Complainant is AARP (“Complainant”), represented by Melise R. Blakeslee, of McDermott, Will and Emery LLP, 600 13th Street, N.W., Washington, DC 20005. Respondent is LaPorte Holdings, Inc. (“Respondent”), ATTN: aarpvisa.com, c/o
NameKing, Inc., 2202 S. Figueroa St., Suite 721, Los Angeles, CA 90023.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <aarpvisa.com>, registered with Nameking.com,
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.
James
A. Carmody, Esq., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on January
26, 2005; the National Arbitration Forum received a hard copy of the Complaint
on January 31, 2005.
On
January 28, 2005, Nameking.com, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <aarpvisa.com> is
registered with Nameking.com, Inc. and that Respondent is the current
registrant of the name. Nameking.com, Inc. has verified that Respondent is
bound by the Nameking.com, Inc. 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
February 3, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
February 23, 2005 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@aarpvisa.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
March 4, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed James A. Carmody,
Esq., 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." 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.
A. Complainant makes the following assertions:
1. Respondent’s <aarpvisa.com>
domain name is confusingly similar to Complainant’s AARP mark.
2. Respondent does not have any rights or
legitimate interests in the <aarpvisa.com> domain name.
3. Respondent registered and used the <aarpvisa.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
AARP, is a nonprofit organization that addresses the needs and interests of persons
who are 50 years of age and older. With
over 35 million members in the United States organized into over 2,000
chapters, Complainant is the leading membership organization of its kind.
For years,
Complainant has made available a wide range of products and services to its
members, including investment and financial advising services, health care
products and services, and insurance services.
Complainant, in conjunction with Bank One, offers its members an “AARP
Visa” credit card.
Complainant has registered
the AARP mark with the United States Patent and Trademark Office (“USPTO”)
(Reg. Nos. 1,047,005 issued August 24, 1976; 1,335,496 issued May 14, 1985).
Respondent
registered the <aarpvisa.com> domain name on May 10, 2004. Respondent’s domain name resolves to a
website featuring links to competing credit card websites.
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."
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.
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 has
established rights in the AARP mark through registration of the mark with the
USPTO. See Men’s Wearhouse, Inc. v.
Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark
law, registered marks hold a presumption that they are inherently distinctive
and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5,
2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this
assumption).
Complainant
asserts that Respondent’s <aarpvisa.com> domain name is
confusingly similar to Complainant’s AARP mark because the domain name
incorporates Complainant’s mark in its entirety and adds the term “visa.” The Panel finds that such minor addition is
not enough to negate a finding of confusing similarity between Respondent’s
domain name and Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH,
D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain
name in dispute contains the identical mark of Complainant combined with a
generic word or term); see also Space Imaging LLC
v. Brownell, AF-0298 (eResolution Sept.
22, 2000) (finding confusing similarity where Respondent’s domain name combines
Complainant’s mark with a generic term that has an obvious relationship to
Complainant’s business).
Furthermore, the
addition of the generic top-level domain “.com” does not negate the confusing
similarity between Respondent’s domain name and Complainant’s mark pursuant to
Policy ¶ 4(a)(i). See Kioti
Tractor Div. 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).”); see also Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA
204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that
the addition of a generic top-level domain is irrelevant when considering
whether a domain name is identical or confusingly similar under the Policy.”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent has
failed to respond to the Complaint.
Therefore, the Panel may accept all reasonable assertions and
allegations set forth by Complainant as true and accurate. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000)
(finding that failing to respond allows a presumption that Complainant’s allegations
are true unless clearly contradicted by the evidence); see also Bayerische
Motoren Werke AG v. Bavarian AG, FA 110830 (Nat. Arb. Forum June 17,
2002) (finding that in the absence of a Response the Panel is free to make
inferences from the very failure to respond and assign greater weight to
certain circumstances than it might otherwise do).
Complainant has
asserted that Respondent has no rights or legitimate interests in the disputed
domain name, and Respondent, in not submitting a response, has failed to rebut
this assertion. Thus, the Panel may
interpret Respondent’s failure to respond as evidence that Respondent lacks
rights and legitimate interests in the <aarpvisa.com> domain name
pursuant to Policy ¶ 4(a)(ii). See Parfums Christian Dior v. QTR Corp.,
D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response,
Respondent has failed to invoke any circumstance which could demonstrate any
rights or legitimate interests in the domain name); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec.
31, 2002) (“Respondent's failure to respond not only results in its failure to
meet its burden, but also will be viewed as evidence itself that Respondent
lacks rights and legitimate interests in the disputed domain name.”).
Complainant is
using the <aarpvisa.com> domain name, which is confusingly similar
to Complainant’s AARP mark, to operate a website that features links to
competing credit cards. Such use is not
a use in connection with 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). See DLJ Long
Term Inv. Corp. v. BargainDomainNames.com, FA
104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent
is not using the disputed domain name in connection with a bona fide offering
of goods and services because Respondent is using the domain name to divert
Internet users to <visual.com>, where services that compete with
Complainant are advertised.”); see also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11,
2002) (finding that Respondent’s use of the disputed domain name to redirect
Internet users to a financial services website, which competed with
Complainant, was not a bona fide offering of goods or services).
Furthermore,
nothing in the record indicates that Complainant is either commonly known by
the disputed domain name or is authorized or licensed to register domain names
featuring Complainant’s AARP mark.
Thus, the Panel finds that Respondent lacks rights and legitimate
interests in the <aarpvisa.com> domain name pursuant to Policy ¶
4(a)(ii). See Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where
Respondent was not commonly known by the mark and never applied for a license
or permission from Complainant to use the trademarked name); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no
rights or legitimate interests where (1) Respondent is not a licensee of
Complainant; (2) Complainant’s rights in the mark precede Respondent’s
registration; (3) Respondent is not commonly known by the domain name in
question).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is
using the <aarpvisa.com> domain name, which contains a confusingly
similar version of Complainant’s AARP mark, to operate a website that features
links to competing credit cards. Such
use constitutes disruption and is evidence that Respondent registered and used
the domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See Six
Continents Hotels, Inc. v. Asia Ventures,
D2003-0659 (WIPO Oct. 14, 2003) (finding that Respondent registered a domain
name primarily to disrupt the business of its competitor because it directed “its
web site to travel-related services in competition with the Complainant and is
deriving a financial benefit from such direction and redirection of users to
such sites, particularly, through banner advertisements, pop-up windows and its
affiliate relationships”); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18,
2000) (finding Respondent acted in bad faith by attracting Internet users to a
website that competes with Complainant’s business).
Additionally,
the Panel infers that Respondent receives click-through fees for diverting
Internet users to competing credit cards.
Since Respondent is using a domain name that is confusingly similar to
Complainant’s mark, consumers searching for Complainant online who access
Respondent’s domain name may become confused as to Complainant’s affiliation
with the resulting website. Thus, the
Panel finds that Respondent’s commercial use of the <aarpvisa.com> constitutes
bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Kmart v. Khan, FA 127708 (Nat.
Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its
diversionary use of Complainant's mark when the domain name resolves to
commercial websites and Respondent fails to contest the Complaint, it may be
concluded that Respondent is using the domain name in bad faith pursuant to
Policy ¶ 4(b)(iv)); see also eBay,
Inc v. Progressive Life Awareness Network, D2000-0068 (WIPO Mar. 16, 2001)
(finding bad faith where Respondent is taking advantage of the recognition that
eBay has created for its mark and therefore profiting by diverting users
seeking the eBay website to Respondent’s site).
Furthermore,
Respondent registered the <aarpvisa.com> domain name with actual
or constructive knowledge of Complainant’s rights in the AARP mark due to
Complainant’s registration of the mark with the USPTO. Thus, Respondent registered and used the <aarpvisa.com>
domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr.
17, 2000) (finding that evidence of bad faith includes actual or constructive
knowledge of a commonly known mark at the time of registration); see also
Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s
OXICLEAN mark is listed on the Principal Register of the USPTO, a status that
confers constructive notice on those seeking to register or use the mark or any
confusingly similar variation thereof.”).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <aarpvisa.com> domain name be TRANSFERRED
from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated:
March 18, 2005
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