AAA
Employment, Inc. v. Ahearn and Associates
Claim Number: FA0507000520670
Complainant,
AAA Employment, Inc. (“Complainant”), is represented by David R.
Ellis, 3233 East Bay Drive, Suite 101, Largo, FL 33771. Respondent, Ahearn and Associates (“Respondent”),
is represented by David J. Sockol of Sockol & Associates P.A., 111 Second Avenue Northeast, Suite
1401, St. Petersburg, FL 33701.
The
domain name at issue is <aaaemployment.com>, registered with Network
Solutions, Inc.
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.
The
Honorable Neil Anthony Brown QC as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on July
20, 2005; the National Arbitration Forum received a hard copy of the Complaint
on July 22, 2005.
On
July 22, 2005, Network Solutions, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <aaaemployment.com> is
registered with Network Solutions, Inc. and that Respondent is the current
registrant of the name. Network
Solutions, Inc. has verified that Respondent is bound by the Network Solutions,
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
July 26, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of August 15,
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@aaaemployment.com by e-mail.
A
timely Response was received and determined to be complete on August 15, 2005.
A
timely Additional Submission was received from Complainant on August 17, 2005
and has been accepted.
On August 19, 2005, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed the Honorable Neil
Anthony Brown QC as Panelist.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant
contends that the contentious domain name should be transferred to it because
it can make out each of the three criteria prescribed under
paragraphs 4(a)(i) and 4(a)(iii) of the Policy. It maintains, first, that
the domain name <aaaemployment.com> is identical or confusingly
similar to Complainant’s two service marks registered with the United States
Patent and Trademark Office (“USPTO”), namely AAA EMPLOYMENT and AAA EMPLOYMENT
and Design. It contends that this is so because the domain name consists of the
entirety of its mark and that the confusion comes about because Respondent is
using the domain name to promote identical services to those of Complainant and
is trading off Complainant’s goodwill.
Complainant
then contends that Respondent has no rights or legitimate interests in the
domain name, as it never had the right to register the domain name. It was only
permitted to use Complainant’s marks as a franchisee and the franchise
agreement has now come to an end.
Thirdly,
Complainant contends that the domain name was registered and is being used in
bad faith, for Respondent has been using it to attract customers by causing
confusion with Complainant as to its affiliation with Respondent’s site and the
services offered on it.
In
support of its application, Complainant has tendered extracts of the USPTO
registration of the two service marks, copies of the franchise agreement and
supporting documents, a letter purporting to terminate the franchise agreement,
and a cease and desist letter.
B. Respondent
Respondent
concedes that the domain name is very similar to Complainant’s service mark,
but maintains that it has rights and legitimate interests in the domain name,
as before notice of the dispute it registered the domain name in connection
with its business.
Respondent
also says that it is commonly known by the domain name and is making a
legitimate fair use of the name, because it is not trading off Complainant’s
goodwill, misleading anyone, or attempting to divert Complainant’s customers
its way. In any event, it argues, the terms “aaa” and “aaa employment” in the
domain name are generic terms, common terms, and widely-used expressions that
can legitimately be registered as domain names on a “first-come first-serve”
basis. Moreover, these are expressions that are not exclusively associated with
Complainant’s business.
Respondent
also denies that it has registered or used the domain name in bad faith because
the facts do not bring it within any of the criteria for determining bad faith
under the Policy. Finally, it contends it has operated as a business and used
the domain name well prior to the dispute, that it has not converted a famous
mark, and that Complainant’s claims are barred by waiver, estoppel and/or
laches.
C. Additional Submissions
Complainant
filed an Additional Submission in which it asserts again that Respondent did
not have right to register the domain name and has had no right to use the name
“AAA Employment” at all since the termination of the franchise agreement. It
also makes a new submission to the effect that it is not asserting an exclusive
right to use any generic or common terms; its claim is limited to names that
incorporate the name “AAA Employment,” which is its registered service mark,
the use of those names in connection with the services for which they were registered,
and the domain name incorporating Complainant’s marks.
Complainant, “AAA Employment Inc.,”
provides employment agency services and has done so under that name since 1957.
It operates, at least in part, by offering franchises. The company is owned by
John V. DeHaven, who does business under the name “AAA Employment.”
Mr. DeHaven is the owner of two Service
Marks registered with the USPTO, which are:
1. AAA EMPLOYMENT, Reg. No.1,563,711 issued
on October 31,1989; and
2. AAA EMPLOYMENT and Design, Reg. No.
1,564,986 issued on November 7,1989. The design incorporates three overlapping
capital letters “A,” together with the word “employment.”
The
first mark has been used since 1957 and the second mark has been used since
1971.
On February 10, 1991, Complainant, under
its former name “AAA Employment Franchise Inc.,” entered into a Franchise
Agreement with Michele Ahearn and/or Chele Corporation under which it
franchised its distinctive form of employment agency to them. The agreement was
for a term of ten years unless terminated or renewed. It was in fact renewed
and was then terminated by notice on April 9, 2003.
The agreement allowed the franchisees to
operate an AAA Employment business and to use certain trade and service marks
including “AAA Employment.” However, the agreement also provided in Clause 6.1
that the franchisees’ use of the marks and any goodwill established by their
use inured exclusively to Complainant and that the agreement did not confer on
the franchisees any goodwill or other interests in the marks.
The franchisees also agreed in Clause 6.2
not to use the marks in any manner that Complainant had not authorised in
writing.
The franchisees also agreed in Clause
16.2 that if the agreement were terminated they would not use the marks at all
and would not use any mark or symbol suggesting an association with
Complainant.
On July 25, 1997 Respondent registered
the domain name <aaaemployment.com> in the name “Ahearn And
Associates.” The Administrative contact under that registration is Ahearn And
Associates and the Billing Contact is Michele Ahern (sic). Having regard to the
totality of the evidence and submissions, the Panel finds that Respondent is an
associate of the franchisees, Michele Ahearn and Chele Corporation, and assumes
their rights and obligations under the franchise agreement.
The franchise agreement came to an end
pursuant to a notice in writing dated April 9, 2001, addressed to Michele
Ahearn, AAA Employment, headed “RE: AAA Employment Inc. Termination of
Franchise Agreement” and served by Complainant on Respondent.
On May 6, 2005 Complainant’s attorney
sent a letter to Respondent’s attorney calling on Respondent to cease and
desist its registration and operation of the website under the contentious
domain name and to transfer the name to Complainant. Respondent has failed to
comply with those demands and has maintained its rights to the name.
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 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;
(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.
The
Panel finds that the <aaaemployment.com> domain name is identical
to the first of the service marks referred to above, namely AAA Employment,
which is covered by Registration Number 1,563,711. This is so, for the domain
name incorporates the entirety of the service mark. It has been decided on many
occasions that for the purpose of making a determination of identicality or
confusing similarity, suffixes such as “.com” are to be disregarded. See
Foundation Le Corbusier v. Mercado M.,
D2004‑0723 (WIPO Nov. 11, 2004); see also Gerd Petrik v. Carpela,
D2004‑1043 (WIPO Mar. 4, 2005).
The
Panel also finds that the <aaaemployment.com> domain name is
virtually identical and is certainly confusingly similar to the second of the
service marks, namely AAA EMPLOYMENT and Design, which is covered by
Registration Number 1,564,986. This is so because the domain name incorporates
the entirety of the service mark and the design is of overlapping capital
letters “A” with the word “employment” under them. The test in such cases is
whether the substance of the domain name is similar to the substance of the
trade or service mark and in this case it clearly is.
The
Panel also accepts that the two service marks are marks in which Complainant,
in the words of the Policy, “has rights.” The evidence shows that the service
marks were registered by John V. Dehaven and that he, rather than Complainant,
is the owner of the marks. The Policy, however, does not require Complainant to
be the owner of the trade or service mark in question, but merely requires
Complainant to have rights in the mark. Such a right, sufficient to found a
claim under the Policy, may be the right of a licensee or indeed any other
right recognized by the law. Such rights are well recognized by trademarks law
and constitute “rights” within the meaning of paragraph 4(a)(i) of the Policy.
Nor need the right be exclusive, for it often happens that trademarks are owned
by a company that gives permission to subsidiaries or affiliates to use them
or, as in the present case, by an individual who allows associated companies
and individuals to use them. This is well established by DigiPoll Ltd v. Kumar, D2004-0939 (WIPO Feb. 3, 2005) and by American Civil Liberties Union of New Mexico
v. Vilma Morales/e:bOOm, S.A., D2004-0473 (WIPO Aug. 23, 2004).
The Panel notes that according to the registration, which is in evidence, Mr.
Dehaven does business as AAA Employment and also that Complainant and its
affiliates have been using the mark since 1957. In all the circumstances, it is
reasonable to conclude that Complainant has acquired a license to use the
service marks as an associate or affiliate of the owner of the marks and that
it has rights in them sufficient to bring the Complaint and satisfy the first
requirement.
Although the onus of proof is on
Complainant to prove its case on the balance of probabilities, it is now well
established that if Complainant makes out a prima
facie case under paragraph 4(a)(ii) of the Policy, the burden of proof
shifts to Respondent to show that it does have rights or legitimate interests
in the domain name. See Compagnie
Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May
14, 2001).
The Panel finds that Complainant has made
out a prima facie case on this issue.
It has done this by:
(a) submitting the franchise agreement which
provides in Clause 6.1 that the franchisees use of the marks and any goodwill
established by their use inures exclusively to Complainant and that the
agreement does not confer any goodwill or other interests in the marks on the
franchisees; in Clause 6.2, that the franchisees agree not to use the marks in
any manner that Complainant had not authorised in writing; and in Clause 16.2
that if the agreement were terminated the franchisees would not use the mark or
any symbol suggesting an association with Complainant ; and
(b) stating on four occasions in its
submissions that it, Complainant, had never given Respondent the right and
Respondent never had the right to register or use the domain name.
That evidence establishes a prima facie case that (i) the
franchisees and hence Respondent never had the right to register the service
mark as a domain name; (ii) Complainant always retained the exclusive benefit
of the service mark; (iii) the franchisees and Respondent could not use the
mark unless authorized in writing; (iv) it was not to use the mark to suggest
an association with Complainant when the agreement came to and that
consequently; and (v) Respondent could not have any rights or legitimate
interests in the domain name and that it never had such rights.
It is then necessary to see if Respondent
has rebutted this prima facie case
and shown that it does have rights or legitimate interests in the domain name.
By virtue of
paragraph 4(c) of the Policy, it is open to a respondent to establish its
rights or legitimate interests in the domain name by showing, inter alia, any of the following elements:
(i) before any notice to you [Respondent] of
the dispute, your use of, or 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;
or
(ii) you [Respondent] (as an individual,
business, or other organization) have been commonly known by the domain name,
even if you have acquired no trademark or service mark rights; or
(iii)you [Respondent] are making a legitimate
noncommercial or fair use of the domain name, without intent for commercial
gain to misleadingly divert consumers or to tarnish the trademark or service
mark at issue.
Respondent
relies on all three of these paragraphs.
A Bona Fide Offering of Services?
The first
allegation of Respondent to mount its rebuttal is that it registered and used
the domain name “in connection with its business.” Although Respondent is
alleging that it was using the domain name for a bona fide offering of services within the meaning of paragraph
4(c)(i), the Panel finds that Respondent has not brought itself within that
provision. It certainly used the domain name in connection with its business,
but its use was not bona fide. Complainant
said four times in its materials (three times in the Complaint and once in the
Additional Submission), that Respondent was “never” given the right to register
or use the domain name and “never” had the right to register or use it, but
Respondent did not reply to any of those allegations and did not adduce any
evidence to show that it had permission to register the domain name. The onus
was clearly on Respondent to reply to Complainant’s assertions and to prove
that it had some right that justified registering the domain name and it did
not attempt to do so or even allege that it had such permission from
Complainant.
Clearly, UDRP
proceedings are inappropriate proceedings for resolving disputes where there
are disputed questions of fact and interpretation which will determine
contractual liabilities and fiduciary responsibilities. See Latent Tech. Group, Inc. v. Fritchie, FA
95285 (Nat. Arb. Forum Sept. 1, 2000); see also Discover N. Eng. v. Avanti
Group, Inc., FA 123886
(Nat. Arb. Forum Nov. 6, 2002).
But in the
present case there is no dispute about the terms of the franchise agreement and
no challenge has been made to the effect of the notice of termination. More
importantly, Respondent has not responded to any of the four statements by
Complainant to the effect that it had never given permission to Respondent to
register the domain name. Respondent was obliged by Rule 5(b) of the Rules to
“respond specifically to the statements and allegations contained in the
complaint,” but on this issue it did not do so. It simply ignored them. The Panel is therefore entitled by Rule
14(b) to draw whatever inferences it considers appropriate from that silence.
The Panel draws the inference that there is in reality no evidence that
Respondent was given permission to register the domain name in its own name
for, if there were any such evidence, it would have been very easy to say what
that evidence was. Accordingly, Respondent had no rights or interests in the
domain name to justify its registration.
This view is
consistent with UDRP decisions which have held that where a respondent is an
authorized dealer in a complainant’s goods, that status gives it no right to
misappropriate a trademark into a domain name in the absence of an express
agreement permitting it to do so and that in the absence of such an agreement
the dealer has no right to impugn the trademark in this way and hence has no
“legitimate interest” in the domain name. See Allen-Edmonds Shoe Corp. v. Takin’Care of Bus.,
D2002-0799 (WIPO Oct. 10, 2002); see also Ullfrotte AB v. Bollnas Imps,
D2000-1176 (WIPO Oct. 23, 2000). That situation is directly analogous to
Respondent’s position in the present case and has been endorsed very recently
in Produits Berger v. Romana Go,
DPH 2005-0001 (WIPO July 7, 2005) and in Omyacolor S.A. v. Recep Tanisman-Emko Emaye A.S., D2005-0520
(WIPO Aug. 15, 2005).
There is no
evidence in the present case of any such express agreement. Nor is there any
evidence that the right to register and use the domain name came from any other
source.
Moreover, the
franchise agreement itself shows that Respondent only had the right to use
Complainant’s service mark in accordance with the terms of the agreement.
Whilst the franchise agreement was on foot, Respondent only had the right to
use the mark when authorized in writing and, in any event, whatever use it made
of the mark and the benefit of that use were exclusively for the benefit of
Complainant. There is no evidence that Respondent agreed in writing to the
service mark being used in a domain name and if there were any such writing it
could easily have been produced.
Even if there
was such evidence, that use was exclusively for the benefit of Complainant and
could confer no rights in the domain name on Respondent. Clause 6.1 expressly
provides that the agreement does not confer any interest in the marks on the
franchisee. Consequently, it cannot confer any interests in the domain name
that simply repeats the mark.
Furthermore,
Clause 16.2 is quite specific and provides that when the franchise agreement
came to an end, Respondent’s right to use the service mark also came to an end.
Accordingly,
neither the registration of the domain name or its use since registration has
created rights that Respondent may rely on. It follows that neither at the time
of registration nor at any time since then has Respondent had any right to
register or use a domain name incorporating Complainant’s service mark and
hence no bona fide right to use
Complainant’s service mark as a domain name.
It is also
clear from the evidence that since the termination of the agreement, Respondent
has in fact been using the mark as a domain name to attract customers and to
promote its own business. The practical effect of this process is to divert
Internet users away from Complainant’s business to the competing business
conducted by Respondent and it can only be assumed that this has been done
intentionally. Such conduct cannot be described as bona fide. Nor has it been accepted as bona fide by UDRP Panels. 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).”); see also Ameritrade Holdings Corp.
v. Polanski, FA 102715 (Nat. Arb.
Forum Jan. 11, 2002) (finding that the 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).
Accordingly,
Respondent has not been able to bring itself within the provisions of paragraph
4(c)(i) of the Policy to rebut the prima
facie case against it.
Known by the Domain Name?
Respondent then relies on Policy ¶
4(c)(ii) and says that it has been commonly known by the domain name.
Respondent’s case on this issue, however, is also seriously deficient. It
asserts that it has been commonly known by the domain name but gives no direct
evidence to this effect. Such evidence must be readily available from
documents, letters, invoices and other records. It was for that reason that it
was said by the Panel in Banco
Espírito Santo S.A. v. Bancovic, D2004-0890 (WIPO Dec. 16, 2004), “It is not sufficient for Respondent to merely assert that
he or she has been commonly known by the domain name in order to show a
legitimate interest. Respondent must produce evidence in order to show that he
or she has been ‘commonly known’ by the domain name.” See also Red Bull GmbH v. Gutch, D2000-0766
(WIPO Sept. 21, 2000); DIMC, Inc. &
The Sherwin-Williams Company v. Quang
Phan, D2000-1519 (WIPO Feb. 20, 2001).
Nor is it sufficient for Respondent merely to rely on the
registration of the domain name “in
connection with its business,” as it has done. It has been expressly held that “[T]he
registration and use of the disputed domain name, in connection with Respondent’s
website, does not by itself support a conclusion that Respondent was commonly
known by the domain name.” Yakka Pty Ltd v. Steinberg, D2004-0502 (WIPO Sept. 3, 2004).
No
doubt, at various times and even prior to the registration of the domain name,
Respondent would have been known to some people to be operating an AAA
Employment franchise. However, that is entirely different from being known by
that name and even further from being commonly known by that name. It must be
shown by evidence that Respondent was commonly known by the domain name at the
time of registration of the domain name. See RMO,
Inc. v Burbidge, FA 96949 (Nat. Arb. Forum May 16, 2001). There is no
evidence in this case to that effect.
Moreover,
it is inherently unlikely that Respondent was ever commonly known as
“aaaemployment.com” or “AAA Employment” when the evidence shows that the names
of the franchisees were Michele Ahearn and Chele Corporation and that their
interests have long been represented by Ahearn and Associates and are represented
as such today. The evidence tends to
show that Respondent is commonly known as “Ahearn And Associates.”
Accordingly, Respondent has not
established that it has been commonly known by the domain name within the
meaning of Policy ¶ 4(c)(ii).
Legitimate Fair Use?
Respondent
then alleges that it is making a legitimate fair use of the domain name without
intending to misleadingly divert consumers or to tarnish the service mark.
Respondent concedes that it is using the domain name for commercial gain.
Accordingly, to bring itself within Policy ¶ 4(c)(iii), it must show that, in
the course of making what it claims is a legitimate or fair use of the domain
name, it is not intending to misleadingly divert consumers. On the evidence,
the Panel draws the conclusion that Respondent’s intention has been, first, to
attract consumers who are using the Internet to find AAA Employment and,
secondly, to divert them to Ahearn And Associates Partners. That process is
clearly the process of diverting consumers from the company they wish to locate
to another company, namely Respondent. This process is also a misleading
one. In essence, the implication is
that by typing the domain name <aaaemployment.com> into their
computers, consumers will find their way to AAA Employment, which they will
not. This implication is reinforced by two facts. The first is that there is no
disclaimer on Respondent’s website that it has no connection with AAA
Employment. The second is that the structure of the website, with a heavy emphasis
on a series of three capital letters “A,” which are the only items displayed
when the site is first located and which are used as a theme throughout the
site, is a very clear representation to consumers that they have actually
arrived at the website of AAA Employment.
Other Matters.
In
addition to relying on the specific circumstances set out in paragraph 4(c) of
the Policy, Respondent has relied on other matters, as it is entitled to do, to
satisfy the requirement that it has rights or legitimate interests in the
domain name.
The first is the allegation that “aaa
employment” is a generic phrase that has been diluted, as it is no longer
associated with Complainant. It is clear that in an appropriate case, the use
of a generic term may show that the interest that a respondent has in using a
domain name is legitimate. See Rollerblade, Inc. v. CBNO, D2000-00427 (WIPO Aug. 24, 2000); see also Pet Warehouse v. Pets.Com, Inc., D2000-0105 (WIPO Apr. 13,
2000); Successful Money Mgmnt. Seminars,
Inc. v Direct Mail Express, FA 96457 (Nat. Arb. Forum Mar. 7, 2001). In an
appropriate case and subject to all the circumstances, a generic word may be
registered as a domain name even when the same word has been the subject of a
trademark registration. See Zero
Int’l Holding v. Beyonet Servs.,
D2000-0161 (WIPO May 12, 2000); see also Energy Source Inc. v. Your Energy Source, FA 96364 (Nat. Arb. Forum
Feb.19, 2001). So Respondent is right about the general principle involved.
That general principle, however, cannot
be applied in the present case as the phrase “aaa employment” is not a generic
phrase and is clearly identifiable as a business name and in particular as
Complainant’s business name.
Likewise, Respondent’s claim that the
term “aaa” is also generic must fail, for the term is not generic and in any
event Complainant is not asserting rights in the term “aaa,” but in the name
“AAA Employment” and the domain name embodying that name.
Complainant makes a similar argument with
respect to the notion that the two words “aaa” and “employment” are common
words and hence able to be registered as domain names on a “first- come first
-serve basis.” This is true of some common words, but the words in combination,
which is the only use in which Complainant asserts its rights, do not create a
common word, but Complainant’s business name and a name for which it has two
service mark registrations.
Respondent’s conclusion from these
propositions is that “[T]he phrase ‘aaaemployment’ is not exclusively
associated with Complainant’s business.” That submission also overlooks the
fact that the phrase is the subject of two service mark registrations, which do
in fact give Complainant the exclusive right to use the mark, although only
with respect to “employment agency services,” that being the ambit of the
registration. The Panel must confine itself to the evidence submitted and there
is no evidence showing that that the phrase “aaa employment” is not exclusively
associated with Complainant’s business.
Complainant
must prove on the balance of probabilities both that the domain name was
registered in bad faith and that it is being used in bad faith. See Telstra Corp. v. Nuclear Marshmallows,
D2000‑0003 (WIPO Feb. 18, 2000).
Further
guidance on how to implement this requirement is to be found in
paragraph 4(b) of the Policy, which sets out four circumstances, any one
of which shall be evidence of the registration and use of a domain name in bad
faith, although other circumstances may also be relied on. One of those
circumstances is set out in paragraph 4(b)(iv):
(iv) by using the domain name, respondent has
intentionally attempted to attract, for commercial gain, Internet users to
respondent’s website or other on‑line location, by creating a likelihood
of confusion with the complainant’s mark as to the source, sponsorship,
affiliation, or endorsement of the respondent’s website or location or of a
product or service on the site or location.”
The Panel
finds that Respondent’s actions constitute bad faith in both respects within
the meaning of Policy ¶ 4(b)(iv). That being so, one element of
paragraph 4(b) is made out, which is sufficient to meet the requirement of
bad faith. The reasons why that element has been made out are as follows.
First, Respondent is
undoubtedly attempting to attract Internet users to its website and for
commercial gain. Secondly, by using Complainant’s service marks in the domain
name it is creating a likelihood of confusion with those marks. That is so
because Respondent is attracting consumers drawn to the “AAA Employment” name
by using that name when Respondent’s business name is an entirely different
one. Thirdly, the confusion that is likely to be created is confusion about the
affiliation of the employment agency services on Respondent’s website, and as
to whether they are Complainant’s services or in some way associated with it.
Clearly, consumers who are using the domain name are there because they are
seeking the employment agency services of Complainant; when they see employment
agency services being promoted on Respondent’s website they will assume those
services are Complainant’s services when in fact they are not. That assumption
must be enhanced when the consumer finds the website’s theme is a triple A
illustration, that being the essence of Complainant’s service mark, the design
of its logo and its long and well- established business name. Indeed, when the
consumer sees nothing but “AAA” on the screen and then that words such as
“contAct” and “trAck record” are printed in that way, they must feel convinced
that the site is the site of AAA Employment. Clearly this is a deliberate
attempt to promote that notion in the mind of the consumer and hence to trade
off its goodwill.
The Panel
finds that these circumstances create confusion with Complainant’s service
marks as to the sponsorship, affiliation and endorsement of Respondent’s site
and the services on it and that Respondent must be taken to have intended this
confusion and to have been doing it for commercial gain. The facts therefore
come within paragraph 4(b)(iv) of the Policy and constitute bad faith
registration and use. Such a conclusion
has often been reached by UDRP Panels on analogous facts and even when a
respondent was formerly a licensee of a complainant. See Identigene, Inc. v. Genetest Laboritories, D2000-1100 (WIPO
Nov. 30, 2000); see also MathForum.co
v. Weiguang Huang, D2000-0743
(WIPO Aug. 17, 2000); IndyMac Bank v.
F.S.B., FA 190366 (Nat. Arb. Forum Oct. 6, 2003).
The
Panel therefore rejects the averments in paragraph 3(c)(iv) of the Response.
The
averment in paragraph 3(c)(v) of the Response is to the same effect. It is true
that Respondent “operated as a business and used the domain name well prior to
the dispute.” However, it operated the business in which it used the name “AAA
Employment” subject to the franchise agreement. The Panel has already ruled
that the franchise agreement did not give Respondent the right to register or
use the domain name.
In
paragraph 3(c)(vi) Respondent avers that it has not converted a famous mark.
The Panel has already ruled that although evidence on that subject may well
have been available, none of it was produced. The evidence is that
Complainant’s service mark is registered and been in use since 1957.
In
paragraph 3(c)(vii) of the Response, Respondent alleges that Complainant’s
claims are barred by doctrines of waiver, estoppel and/or laches. No evidence
has been adduced to support any of those claims even if such defences were
available under the Policy. The question in UDRP proceedings is whether the
facts come within the terms of the Policy so as to justify transfer or
cancellation of a domain name and the conclusion of the Panel in the present
case is that they do.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <aaaemployment.com>
domain name be TRANSFERRED from
Respondent to Complainant.
The Honorable Neil Anthony Brown QC,
Panelist
Dated: September 6, 2005
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