American Institute of Certified Public Accountants v. Digi Real Estate Foundation
Claim Number: FA0705000993132
Complainant is American Institute of Certified Public Accountants (“Complainant”), represented by Rachel
Dooley, of Willkie Farr & Gallagher LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <journalofaccountancy.com>, registered with Unpower, 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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On June 4, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 25, 2007 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@journalofaccountancy.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 <journalofaccountancy.com> domain name is confusingly similar to Complainant’s THE JOURNAL OF ACCOUNTANCY mark.
2. Respondent does not have any rights or legitimate interests in the <journalofaccountancy.com> domain name.
3. Respondent registered and used the <journalofaccountancy.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, American Institute of Certified Public Accountants, is a not-for-profit national organization providing members resources and other related information in the accounting field. In conjunction with the provision of these services, Complainant has registered the THE JOURNAL OF ACCOUNTANCY mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 235,493 issued November 22, 1927).
Respondent registered the disputed domain name on December
28, 2006. The disputed domain name
resolves to a website offering links to commercial, third-party websites, some
of which directly compete with Complainant’s business. Respondent has also been the respondent in
several other UDRP proceedings in which the disputed domain names in those
cases were transferred from Respondent to the respective complainants in those
cases. See Morgan Stanley v. Digi Real Estate Foundation, FA 604974 (Nat.
Arb. Forum Jan. 23, 2006); Delta Corporate Identity, Inc. and Delta Air Lines, Inc. v. Digi Real
Estate Foundation, FA 590680 (Nat. Arb. Forum Dec. 27, 2005); and Adidas-Saloman AG v. Digi Real Estate
Foundation, D2004-1079 (WIPO Feb. 11, 2005).
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 asserts rights in the THE JOURNAL OF ACCOUNTANCY mark through registration of the mark with the USPTO. The Panel finds that Complainant’s timely registration and subsequent extensive use of the THE JOURNAL OF ACCOUNTANCY mark for nearly eighty years sufficiently establishes its rights in the mark pursuant to Policy ¶ 4(a)(i). See Mothers Against Drunk Driving v. phix, FA 174052 (Nat. Arb. Forum Sept. 25, 2003) (finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office established the complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i)); see also 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.”).
Respondent’s disputed domain name eliminates the article “the” from Complainant’s mark and adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that the elimination of the article “the” and the addition of a gTLD fails to avoid a finding of confusing similarity of the disputed domain name to the mark pursuant to Policy ¶ 4(a)(i). See Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) ("[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants . . . ."); see also Maple Leaf Sports & Entm’t Ltd. v. Toronto Maple Leafs!, D2000-1510 (Jan. 24, 2001) (finding that the domain name <leafs.org> is confusingly similar to the complainant’s marks, where the complainant holds many trademarks that contain the term “LEAFS”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
In instances where Complainant has made
a prima facie case in support of its
allegations, the burden shifts to Respondent to set forth concrete evidence
indicating that it has rights or legitimate interests in accordance with Policy
¶ 4(a)(ii). See SEMCO Prods.,
LLC v. dmg world media (
Respondent’s disputed domain name resolves to a website offering links to various third-party websites, some of which directly compete with Complainant’s business. The Panel finds that Respondent’s use is neither a bona fide offering of goods or services in accordance with Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); see also Hale Prods., Inc. v. Hart Int’l Inc., FA 198031 (Nat. Arb. Forum Dec. 2, 2003) (finding that the respondent had no rights or legitimate interests in the <jawsoflife.com> domain name because the respondent was diverting Internet users to the website of one of the complainant’s competitors).
Complainant avers that Respondent is not commonly known by the disputed domain name. Respondent’s WHOIS registration information indicates the registrant of the <journalofaccountancy.com> domain name is “Digi Real Estate Foundation.” In lieu of countervailing evidence, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See 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.”); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent has been the respondent in no fewer that
seventeen proceedings for misuse of domain names. In each proceeding, the domain name
registered by Respondent was transferred to the complainant. These cases include the following: Morgan Stanley v. Digi Real Estate
Foundation, FA 604974 (Nat. Arb. Forum Jan. 23, 2006); Delta Corporate Identity, Inc. and Delta Air
Lines, Inc. v. Digi Real Estate Foundation, FA 590680 (Nat. Arb.
Forum Dec. 27, 2005); and Adidas-Saloman
AG v. Digi Real Estate Foundation, D2004-1079 (WIPO Feb. 11, 2005). The Panel finds that Respondent’s prior
attempts to register domain names that incorporate registered, protected marks
evinces a pattern of such behavior, thereby suggesting registration and use in
bad faith pursuant to Policy ¶ 4(b)(ii). See Philip Morris Inc. v. r9.net,
D2003-0004 (WIPO Feb. 28, 2003) (finding that the respondent’s previous
registration of domain names such as <pillsbury.net>,
<schlitz.net>, <biltmore.net> and <honeywell.net> and
subsequent registration of the disputed <marlboro.com> domain name
evidenced bad faith registration and use pursuant to Policy ¶ 4(b)(ii)); see also EPA European Pressphoto Agency B.V. v.
Respondent’s disputed domain name resolves to a website featuring links to competing websites. The Panel finds such use amounts to a disruption of Complainant’s business, which constitutes bad faith regulation and use pursuant to Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Services, FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a website containing commercial links to the websites of the complainant’s competitors represented bad faith registration and use under Policy ¶ 4(b)(iii)); see also EthnicGrocer.com, Inc. v. Latingrocer.com, FA 94384 (Nat. Arb. Forum July 7, 2000) (finding bad faith where the respondent’s sites pass users through to the respondent’s competing business).
Presumably, Respondent enjoys financial benefit from its
diversionary use of the disputed domain name in the form of “click-through”
fees. Further, unsuspecting Internet
users are likely to become confused as to the source and affiliation of the resulting
websites. The Panel finds that
Respondent’s use amounts to an attraction for commercial gain, thereby evincing
registration and use in bad faith pursuant to Policy ¶ 4(b)(iv).
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 <journalofaccountancy.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: July 9, 2007
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