AARP v. AARP Canada Inc.
Claim Number: FA0611000831367
Complainant is AARP (“Complainant”), represented by Melise R.
Blakeslee, of McDermott Will & Emery LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <aarpcanada.com>, registered with Namescout.com.
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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 2, 2006; the National Arbitration Forum received a hard copy of the Complaint on November 3, 2006.
On November 7, 2006, Namescout.com confirmed by e-mail to the National Arbitration Forum that the <aarpcanada.com> domain name is registered with Namescout.com and that Respondent is the current registrant of the name. Namescout.com has verified that Respondent is bound by the Namescout.Com 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 November 8, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 28, 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@aarpcanada.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 4, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. condon 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 <aarpcanada.com> domain name is confusingly similar to Complainant’s AARP mark.
2. Respondent does not have any rights or legitimate interests in the <aarpcanada.com> domain name.
3. Respondent registered and used the <aarpcanada.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, AARP, is a nonprofit organization catering to
people over the age of fifty. Over
thirty-five million people are members of Complainant’s organization, including
over half of
Under the AARP mark, Complainant provides its members with various products and services, including insurance, health care, and travel discounts. Complainant has registered the AARP mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,461,155 issued June 19, 2001; Reg. No. 1,046,998 issued August 24, 1976; Reg. No. 1,047,005 issued August 24, 1976) and with the Canada Intellectual Property Office (“CIPO”) (Reg. No. TMA621,395 issued October 1, 2004, filed July 29, 2003).
Respondent registered the <aarpcanada.com>
domain name on May 4, 2004. Respondent
is promoting competing services at the disputed domain name and states that its
mission is to “provide valuable information to MATURE, ACTIVE CANADIANS who
travel the roads of
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. 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.”).
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 owns trademark registrations for the AARP mark
in both the
The Panel holds that Complainant has sufficiently satisfied Policy ¶ 4(a)(i).
Complainant maintains that Respondent does not have rights
to or legitimate interests in the disputed domain name. Complainant has the initial burden of proof
in establishing that Respondent has no rights or legitimate interests in the
domain name. Once Complainant makes a prima
facie case in support of its allegations, the burden then shifts to
Respondent to show it does have rights or legitimate interests pursuant to
Policy ¶ 4(a)(ii). See 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.”); see also 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 Policy ¶ 4(a)(ii) before
the burden shifts to the respondent to show that it does have rights or
legitimate interests in a domain name).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the <aarpcanada.com>
domain name. See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9,
2000) (finding that by not submitting a response, the respondent has failed to
invoke any circumstance which could demonstrate any rights or legitimate
interests in the domain name); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO
Dec. 4, 2000) (finding that the respondents’ failure to respond can be
construed as an admission that they have no legitimate interest in the domain
names). However,
the Panel will now examine the record to determine if Respondent has rights or
legitimate interests under Policy ¶ 4(c).
While the WHOIS information lists the registrant of the <aarpcanada.com>
domain name as “AARP Canada Inc.,” Complainant provides evidence that
Respondent’s Canadian corporation under this name dissolved on February 9, 2006
and is inactive. As a result, the Panel
finds that Respondent is not commonly known by the <aarpcanada.com>
domain name pursuant to Policy ¶ 4(c)(ii).
See Ultimate Elecs., Inc. v. Nichols, FA 195683 (Nat. Arb. Forum
Oct. 27, 2003) (“[O]ther than Respondent’s infringing use of the ULTIMATE
ELECTRONICS mark on its web page and in its domain name . . . , there is no
evidence that Respondent is commonly known by the <ultimateelectronics.net>
domain name pursuant to Policy ¶ 4(c)(ii), or that there is any other entity
besides Complainant authorized to trade as ULTIMATE ELECTRONICS.”); see also
Target Brands, Inc. v. Hosting Provider Serv., FA 187396 (Nat. Arb. Forum
Sept. 30, 2003) (“While Respondent may
have held itself out as TARGETPILLS.COM on its website at
<targetpills.com>, there is no evidence that Respondent was actually or
commonly known by the disputed domain name.
Both the fact that Respondent declined to respond to Complainant’s
charge and the fact that Respondent’s operations suddenly ceased suggest that
Respondent was not legitimately known as <targetpills.com>.”).
Furthermore, Respondent’s <aarpcanada.com>
domain name, which is confusingly similar to Complainant’s AARP mark, resolves
to a website directly competing with Complainant in providing various services
to retired people. In Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003), respondent
registered the <wwwzyban.com> domain name and was redirecting Internet
users to a pharmaceutical site offering products that competed with
Complainant. The panel held that the
respondent was not using the domain name within the parameters of Policy ¶
4(c)(i) or (iii).
The Panel holds that Complainant has sufficiently satisfied Policy ¶ 4(a)(ii).
In exchange for transferring the <aarpcanada.com>
domain name to Complainant, Respondent allegedly requested that Complainant
provide Respondent’s mother with travel services and also reimburse Respondent
for its registration and maintenance costs.
As Respondent’s request for compensation goes beyond merely asking for
its out-of-pocket registration costs, the Panel finds the request to suggest
bad faith registration and use pursuant to Policy ¶ 4(b)(i). See Am. Online, Inc. v. Prijic, FA
112639 (Nat. Arb. Forum June 27, 2002) (“[I]n determining whether Respondent
has sought consideration in excess of its out-of-pocket costs, the Policy makes
clear that only costs related to the domain name are to be considered, and not
those related to the creation or maintenance of the connected website”); see
also Gutterbolt, Inc. v. NYI Bldg.
Prods. Inc., FA 96076 (Nat. Arb. Forum Dec. 29, 2000) (finding that the
consideration demanded in exchange for a domain name registration does not have
to be monetary in nature to run afoul of Policy ¶ 4(b)(i), but can be anything
of value that exceeds the amount spent in registering and maintaining the
domain name).
Because Respondent is using the <aarpcanada.com>
domain name to redirect Internet users to its own competing website, the Panel
finds that Respondent has registered and is using the disputed domain name in
order to disrupt Complainant’s business under the AARP mark, which constitutes
bad faith according to Policy ¶ 4(b)(iii).
See Marriott Int’l, Inc. v. MCM Tours, Inc., FA 444510 (Nat. Arb.
Forum May 6, 2005) (“The Respondent is a travel agency and thus operates in the
same business as the Complainant. The parties can therefore be considered as
competitors. The Panel thus finds that the Respondent registered the domain
name primarily for the purpose of disrupting the business of a competitor,
which constitutes evidence of registration and use in bad faith under Policy
4(b)(iii).”); see also Disney Enters., Inc. v.
Noel, FA 198805 (Nat. Arb. Forum Nov. 11,
2003) (“Respondent registered a domain name confusingly similar to Complainant's
mark to divert Internet users to a competitor's website. It is a reasonable
inference that Respondent's purpose of registration and use was to either
disrupt or create confusion for Complainant's business in bad faith pursuant to
Policy ¶¶ 4(b)(iii) [and] (iv).”).
Furthermore, Respondent has registered and is using the <aarpcanada.com>
domain name in bad faith pursuant to Policy ¶ 4(b)(iv), because Respondent is
attempting to attract, for commercial gain, Internet users to its own website
where it sells products that compete with Complainant. In Busy Body, Inc. v. Fitness Outlet, Inc.,
D2000-0127 (WIPO Apr. 22, 2000), the panel found that the respondent registered
and was using the <efitnesswarehouse.com> domain name in bad faith
because it was in the same line of business as the complainant, which had
registered the FITNESS WAREHOUSE mark with the USPTO, and was attempting to
attract complainant’s customers to its own website for commercial gain. Likewise,
Respondent, who is in the same line of business as Complainant, is taking
advantage of the confusing similarity between the domain name and Complainant’s
AARP mark in order to profit from the goodwill associated with the mark in
violation of Policy ¶ 4(b)(iv). See Dell
Inc. v. Innervision Web Solutions, FA 445601 (Nat. Arb. Forum May
23, 2005) (finding evidence of bad faith under Policy ¶ 4(b)(iv) where the
respondent was using the <dellcomputerssuck.com> domain name to divert
Internet users to respondent’s website offering competing computer products and
services).
The Panel holds that Complainant has sufficiently satisfied Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <aarpcanada.com> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: December 18, 2006
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