Ameridream, Incorporated v. The Owners
Alliance c/o Scott Nash
Claim Number: FA0604000676671
PARTIES
Complainant is Ameridream, Incorporated (“Complainant”), 200 Professional Drive, Suite 400, Gaithersburg, MD 20879. Respondent is The Owners Alliance c/o Scott Nash (“Respondent”), 18403 Woodfield Rd, Suite E, Gaithersburg, MD 20879.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <ameridreamprogram.net>,
<ameridreamprogram.org>,
<fuckameridream.net>, <fuckameridream.org>, and <fuckameridream.com>; all registered with Tucows Inc.
PANEL
The undersigned, Nelson A Diaz, 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.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on April 10, 2006; the National Arbitration Forum received a
hard copy of the Complaint on April 13, 2006.
On April 11, 2006, Tucows Inc. confirmed by e-mail to the National
Arbitration Forum that the <ameridreamprogram.net>,
<ameridreamprogram.org>, <fuckameridream.net>, <fuckameridream.org>, and <fuckameridream.com> domain names are registered with Tucows
Inc. and that the Respondent is the current registrant of the name. Tucows Inc. has verified that Respondent is
bound by the Tucows 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 April 19, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of May 9, 2006 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@fuckameridream.net, postmaster@fuckameridream.org,
postmaster@fuckameridream.com, postmaster@ameridreamprogram.net and
postmaster@ameridreamprogram.org by e-mail.
A timely Response was received and determined to be complete on May 5,
2006.
A timely Additional Submission from Complainant was received on May 9,
2006 and determined to be complete pursuant to Supplemental Rule #7.
On May 12, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Nelson A. Diaz as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
· Complainant asserts that it has established rights in the AMERIDREAM mark and has used the mark to advertise and promote its “down payment gift assistance program” which seeks to encourage home ownership. The AMERIDREAM mark is registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,578,724 issued June 11, 2002).
·
Complainant maintains that the disputed domain names
are confusingly similar to Complainant’s AMERIDREAM mark because each contains
the entire registered mark and merely adds a generic term (“fuck” or
“program”).
·
Complainant asserts that there is no evidence in the
record indicating that Respondent is commonly known by the disputed domain
names and, specifically, the relevant WHOIS information lists the registrant of
the domain names as “The Owners Alliance.”
Complainant also asserts that it has not authorized or licensed Respondent
to register or use domain names incorporating Complainant’s mark or any
variation thereof. To the contrary, Complainant alleges that Respondent,
a founder of Complainant’s down payment gift assistance business, registered the domain names in violation of
a Non-Competition Agreement with Complainant (Respondent registered the
disputed domain names on March 29, 2006, two days before the Non-Competition Agreement expired).
·
Complainant
alleges that Respondent is not using the disputed domain names 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), because the disputed domain names resolved to Respondent’s website
at the <dpfunder.com> domain name where Respondent offers competing down
payment assistance services.
·
Complainant alleges that by directing homebuyers and
lenders to a web site offering membership in an alliance intended to generate
funds for a down payment, Respondent is attempting to increase its sales by
diverting Internet users seeking Complainant’s services to its own website
through a false association with Complainant’s AMERIDREAM mark.
·
Finally, Complainant contends that Respondent is
offering the disputed domain name for sale for an amount that exceeds
Respondent’s out of pocket costs.
B. Respondent
·
Respondent contends that its domain names are made up entirely of generic
terms.
·
Respondent claims that its addition of the term “fuck”
in three of the disputed domain names is similar to the addition of the term
“sucks” to a domain name, which panels have held does not render a domain name
confusingly similar to a mark under Policy ¶ 4(a)(i).
·
Respondent
asserts that its use of the domain names to resolve to a competing web site was
only temporary, and that the domain names now resolve to a website protesting
Complainant’s business practices.
Respondent claims that it always intended to use the disputed
domain names to operate a protest website, but that Complainant filed the
Complaint before Respondent had an opportunity to set up the site. Respondent alleges that the website was put
up on April 29, 2006, thirty days after it registered the disputed domain names
and twenty days after the filing of the Complaint.
·
Respondent asserts that its protest website at the
disputed domain names seeks merely to inform Internet users of Complainant’s
mismanagement of public benefit funds.
C. Complainant’s Additional
Submission
·
Complainant
alleges that Respondent merely changed the content of the web site after the
initiation of this proceeding, and that Respondent intended to use the domain
names to operate a competing web site.
·
Complainant alleges that Respondent is setting up a
protest site merely as a tactic to maintain ownership of the disputed domain
names. Complainant provides evidence of
an e-mail in which Respondent stated, “Our
new $99 dpa program will be at www.ameridreamprogram.com starting this
week….Did you buy your rain ponchos yet?”
FINDINGS
The Panel finds that Complainant has established rights in the
AMERIDREAM mark in the United States, and that Complainant uses the mark in
connection with “down payment gift assistance” services. The Panel has no difficulty in finding that
two of Respondent’s domain names, <ameridreamprogram.net>
and
<ameridreamprogram.org>,
are confusingly similar to Complainant’s mark. It is a closer question whether
<fuckameridream.net>, <fuckameridream.org>, and
<fuckameridream.com>
domain names are confusingly similar to Complainant’s mark. However, the Panel finds that, based on the
nature of Respondent’s use of the domain names, the domain names are confusingly
similar to Complainant’s mark.
The Panel further finds that Respondent
is not commonly known by the any of the domain
name for purposes of Policy ¶ 4(c)(ii) and has no rights or legitimate interests in respect of the domain name.
The Panel finds that the Respondent’s use of the domain names to operate a website featuring
competing services is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor a
legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). Although Respondent presented
some evidence of intent to use the domain
names in connection with protest site, this putative evidence of fair use is
more than outweighed by the initial commercial use of the domain names in
violation of Complainant’s rights.
DISCUSSION
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 in respect of the domain name; and
(3)
the domain name
has been registered and is being used in bad faith.
Identical
and/or Confusingly Similar
Registration of the AMERIDREAM mark
with the USPTO, Reg. No. 2,578,724, establishes Complainant’s rights in the
mark pursuant to Policy ¶ 4(a)(i). See Vivendi
Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11,
2003) (“Complainant's federal trademark registrations establish Complainant's
rights in the BLIZZARD mark.”); see also U.S.
Office of Pers. Mgmt. v. MS Tech. Inc., FA
198898 (Nat. Arb. Forum Dec. 9, 2003) (“[O]nce the USPTO has made a
determination that a mark is registrable, by so issuing a registration, as
indeed was the case here, an ICANN panel is not empowered to nor should it
disturb that determination.”).
The disputed domain names are confusingly similar to Complainant’s AMERIDREAM mark. It is well-established that the addition of a generic term, such as “program”, is insufficient to distinguish Respondent’s domain names from 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 the complainant combined with a generic word or term); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY”).
While incorporation of the slang term, “fuck”, into Respondent’s domain names is arguably distinguishable from use of the generic term, “program,” it is no magic talisman. Trademark protection goes beyond merely banning another’s use of the identical term, it also prohibits another’s commercial use of any confusingly similar term. Some cases have held that the addition of the term “fuck” is insufficient to avoid a likelihood of confusion. See Yahoo! Inc. v. Fato, FA 286410 (Nat. Arb. Forum Jul. 26, 2004) (finding the <fuckyahoo.com> domain name confusingly similar to the complainant’s YAHOO! mark); see also Cabela’s Inc. v. Cupcake Patrol, FA 95080 (Nat. Arb. Forum Aug. 29, 2000) (finding that the complainant, owner of the Federally registered trademark CABELA’S and user of the domain name <cabelas.com> was entitled to relief for the bad faith registration and use of the domain name <cabelassucks.com> because “by using Complainant’s marks in its domain names, Respondent makes it likely that Internet users entering ‘Cabela’s’ into a search engine will find [<cabelassucks.com>] in addition to Complainant’s site <cabelas.com>.”). On the other hand, there have been situations where the addition of the term “fuck” has been held to sufficiently distinguish a domain name from a federally registered trademark. See Am. Online, Inc. v. Johuathan Investments, Inc., D2001-0918 (WIPO Sept. 14, 2001).
Although the Panel agrees with the Am. Online decision that, typically, “it is inconceivable that anyone looking at this [<fucknetscape.com>] Domain Name will believe that it has anything to do with a company of such high repute as [Netscape],” in this case the fact that all of Respondent’s domain names resolve to the same web page, that prominently displays the tag line “BROUGHT TO YOU BY THE FOUNDERS OF AMERIDREAM,” demonstrates that, not only were these domain names registered in bad faith, but that a likelihood of confusion persists despite the addition of the term “fuck” to Complainant’s mark. Complainant thus has met its burden of proving that the domain names registered by the Respondent are confusingly similar to a mark in which Complainant has rights.
Rights
or Legitimate Interests
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question”).
There is no evidence in the record indicating that Respondent is or has ever been commonly known by the disputed domain names. Based on the WHOIS information provided in registering the domain names, Respondent appears to be known as “The Owners Alliance.” See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because the respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use); see also Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”). On this basis alone, the Panel finds that Respondent does not have rights or legitimate interests in the domain names pursuant to Policy ¶ 4(c)(ii).
Further, Complainant states that it never authorized or licensed Respondent to register or use domain names incorporating Complainant’s mark or any variation. Indeed, Respondent was a founder of Complainant’s down payment gift assistance business and, as such, signed a Non-Competition Agreement in which he agreed not compete with Complainant. The panel credits this information and finds that it lends further support to the conclusion that Respondent does not have rights or legitimate interests in the domain names.
Because the disputed domain names initially resolved to Respondent’s commercial website at the URL <dpfunder.com> where Respondent offered competing down payment assistance services, the Panel finds that Respondent was not making a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See 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 the complainant, was not a bona fide offering of goods or services); see also Clear Channel Commc’ns, Inc. v. Beaty Enters., FA 135008 (Nat. Arb. Forum Jan. 2, 2003) (finding that the respondent, as a competitor of the complainant, had no rights or legitimate interests in a domain name that utilized the complainant’s mark for its competing website).
While it is true that the domain names now resolve to a website protesting Complainant’s business practices, the initial commercial use of the domain names all but obliterates Respondent’s fair use argument. The Panel thus finds that Respondent’s use of the disputed domain names to operate a website containing criticism does not give it rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii). See Weekley Homes, L.P. v. Fix My House Or Else?, FA 96609 (Nat. Arb. Forum Apr. 18, 2001) (finding that establishment of a website containing criticism is not a legitimate use of the <davidweekleyhome.com> domain name because the disputed domain name is confusingly similar to the complainant's DAVID WEEKLEY HOMES mark); see also Name.Space Inc. v. Network Solutions, Inc., 202 F.3d 573, 585 (2d Cir. 2000) (finding that although the content of the respondent’s site may be entitled to First Amendment protection, the respondent’s use of the complainant’s trademark in the domain name of its site is not protected.); see also Direct Line Group Ltd. v. Purge I.T., D2000-0583, (WIPO Aug. 13, 2000) (finding that use of the complainant’s name and adoption of it in a domain name is inherently likely to lead some people to believe that the complainant’s are connected with it).
Finally, the Panel
finds that Respondent’s willingness to sell the disputed domain names at a
price in excess of the cost of the transfer (as discussed in detail below) is
further evidence of a lack of rights or legitimate interests pursuant to Policy
¶ 4(a)(ii). See Mothers Against
Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003)
(holding that under the circumstances, the respondent’s apparent willingness to
dispose of its rights in the disputed domain name suggested that it
lacked rights or legitimate interests in the domain name); see also Wal-Mart Stores, Inc. v. Stork,
D2000-0628 (WIPO Aug. 11, 2000) (finding the respondent’s conduct purporting to
sell the domain name suggests it has no legitimate use).
Registration
and Use in Bad Faith
The uncontroverted
evidence shows that Respondent registered the disputed domain names on March
29, 2006, two days before the Non-Competition Agreement expired. When coupled with Respondent’s use of these domain
names to sell services in competition with Complainant (albeit briefly), the
Panel finds bad faith registration and use under Policy ¶ 4(b)(iii) and
(iv). See Gen. Media Commc’ns, Inc. v. Vine Ent., FA 96554 (Nat. Arb. Forum
Mar. 26, 2001) (finding bad faith where a competitor of the complainant
registered and used a domain name confusingly similar to the complainant’s
PENTHOUSE mark to host a pornographic web site); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb.
Forum July 18, 2000) (finding the respondent acted in bad faith by attracting
Internet users to a website that competes with the complainant’s business); see also State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept.
12, 2000) (finding bad faith where the respondent registered the domain name
<bigtex.net> to infringe on the complainant’s goodwill and to attract
Internet users to the respondent’s website);
see also CMG Worldwide, Inc. v. Lombardi, FA 95966 (Nat.
Arb. Forum Jan. 12, 2001) (finding that the respondent’s use of the
complainant’s VINCE LOMBARDI mark to divert Internet users to its commercial
website located at the <vincelombardi.com> domain name constituted bad
faith use and registration of the disputed domain name).
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <fuckameridream.net>, <fuckameridream.org>, <fuckameridream.com>, <ameridreamprogram.net> and <ameridreamprogram.org> domain names be TRANSFERRED
from Respondent to Complainant.
___________________________________________________
Hon. Nelson A. Diaz, Panelist
Dated: May 26, 2006
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