DECISION

 

American Hospital Association v. Audrey Stephanie Mastroianni

Claim Number: FA2311002070206

 

PARTIES

Complainant is American Hospital Association ("Complainant"), represented by Anita B. Polott of Morgan, Lewis & Bockius LLP, District of Columbia, USA. Respondent is Audrey Stephanie Mastroianni ("Respondent"), represented by Randy Friedberg of Stradley Ronon Stevens & Young, LLP, New York, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <aha-pac.org> ("Domain Name"), registered with GoDaddy.com, LLC.

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Nicholas J.T. Smith as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on November 8, 2023; Forum received payment on November 8, 2023.

 

On November 8, 2023, GoDaddy.com, LLC confirmed by e-mail to Forum that the <aha-pac.org> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

 

On November 9, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 26, 2023 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@aha-pac.org.¹  Also on November 9, 2023, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts.

 

Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.

 

On December 27, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Nicholas J.T. Smith as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the Domain Name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant is a well-known organization whose mission since its founding in 1898 is to represent hospitals, health care associations and their patients.  Complainant operates a political action committee ("PAC") to provide representation and advocacy services. Complainant has rights in the AHA mark through its registration of the mark with the United States Patent and Trademark Office ("USPTO") (e.g. Reg. No. 4,281,839, registered January 9, 2013).   Respondent's <aha-pac.org> domain name is identical or confusingly similar to Complainant's AHA mark as it incorporates the mark in its entirety while adding the abbreviation "-pac" and the ".org" generic top-level domain ("gTLD").

 

Respondent has no rights or legitimate interests in the Domain Name. Respondent is not commonly known by the Domain Name, nor has Complainant authorized or licensed Respondent to use the AHA mark.  Respondent uses the Domain Name for a website ("Respondent's Website") to pass off as the Complainant by operating a fake political advocacy committee in the health care space, and soliciting donations from individuals who think they are donating to the Complainant or a related entity.

 

Respondent registered and uses the <aha-pac.org> domain name in bad faith.  Respondent uses the Domain Name to pass off as Complainant for financial gain.  Respondent has engaged in a pattern of conduct of similar fraudulent behaviour, registering other domain names to solicit donations by passing off as other reputable non-profits, despite there being no evidence of any donations being used in respect of any candidate. Finally, Respondent had actual or constructive knowledge of Complainant's rights in the mark given the longstanding fame and notoriety of the mark and Respondent's use of the Domain Name to pass off as Complainant.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant holds trademark rights for the AHA mark.  The Domain Name is confusingly similar to Complainant's AHA mark.  Complainant has established that Respondent lacks rights or legitimate interests in the use of the Domain Name and that Respondent registered and has used the Domain Name in bad faith.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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; 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.

 

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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments.  See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) ("Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint").

 

Identical and/or Confusingly Similar

Complainant has rights in the AHA mark based upon registration of the mark with the USPTO (e.g. Reg. No. 4,281,839, registered January 9, 2013).  Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, "Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.").

 

The Panel finds that the <aha-pac.org> domain name is confusingly similar to the AHA mark as it incorporates the mark while adding the abbreviation "-pac" (short for "political action committee") and the ".org" gTLD.   These changes are insufficient to distinguish the Domain Name from the AHA mark under Policy ¶ 4(a)(i).  See Health Devices Corp. v. Aspen S T C, FA 158254 (Forum July 1, 2003) ("[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i)."); MTD Products Inc v. J Randall Shank, FA 1783050 (Forum June 27, 2018) ("The disputed domain name is confusingly similar to Complainant's mark as it wholly incorporates the CUB CADET mark before appending the generic terms 'genuine' and 'parts' as well as the '.com' gTLD.");  see also Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) ("A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because the domain name syntax requires TLDs.").

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Name.  In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (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.").  The Panel holds that Complainant has made out a prima facie case.

 

Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name as Respondent is not commonly known by the Domain Name, nor has Complainant authorized Respondent to use the AHA mark.  Respondent has no relationship, affiliation, connection, endorsement or association with Complainant.  WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged.  See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA 1613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists "Dale Anderson" as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA 1621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where "Privacy Service" was listed as the registrant of the disputed domain name).  The WHOIS lists "Audrey Stephanie Mastroianni" as registrant of record.  Coupled with Complainant's unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).

 

The Domain Name is resolves to the Respondent's Website where the Respondent purports to provide advocacy services (and solicit donations) under the name "American Health Advocacy Political Action Committee".  There is no evidence before the Panel as to the existence of such a committee nor any evidence of any advocacy activities (such as donations to like-minded candidates). The Panel notes the uncontested evidence from the Complainant that this is one of a number of "scam PACs" operated by the Respondent that masquerade as a legitimate political action committee by passing off as a well-known organisation for the purpose of soliciting donations from individuals who think they are supporting a legitimate well-known organisation.   In the absence of any evidence from Respondent rebutting the allegations made in the Complaint or other evidence as to the legitimacy (or even the existence) of the "American Health Advocacy Political Action Committee", the Panel finds that Complainant has established, on the balance of probabilities, that Respondent has used the Domain Name to divert internet users to a website that purports to offer competing charitable or advocacy services but does not appear to be connected to a legitimate entity.  Using a domain name to divert internet users to a website that passes off as the Complaint but actually is a fraudulent website soliciting donations for commercial gain is not indicative of a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) and (iii).  See Summit Group, LLC v. LSO, Ltd., FA 758981 (Forum Sept. 14, 2006) (finding that the respondent's use of the complainant's LIFESTYLE LOUNGE mark to redirect Internet users to respondent's own website for commercial gain does not constitute either 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)).

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

The Panel finds on the balance of probabilities that, at the time of registration of the Domain Name, November 12, 2022, Respondent had actual knowledge of Complainant's AHA mark.  Given the reputation of Complainant as an advocacy body in the healthcare space and the fact that the Respondent's Website purports to offer competing advocacy services in the exact same industry under a similar name, it is highly unlikely that Respondent registered the Domain Name other than in awareness of Complainant's AHA mark.  In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).

 

The Panel finds that Respondent registered and uses the Domain Name in bad faith to create confusion with Complainant's AHA mark for commercial gain by using the confusingly similar Domain Name to resolve to a website purporting to provide competing advocacy services to that offered by Complainant and soliciting donations for those (likely fraudulent) advocacy services.  Use of a confusingly similar domain name to redirect Internet users to a website containing competing services for commercial gain is indicative of bad faith registration and use per Policy ¶ 4(b)(iv).  See Zoetis Inc. and Zoetis Services LLC v. Paul Adams / zoetismail, FA 1729095 (Forum June 5, 2017) (holding that the respondent registered and used the <zoetismail.com> domain name in bad faith by diverting Internet users seeking the complainant's website to its own website for commercial gain because the respondent likely profited from this diversion scheme): see also Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where "Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant's own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.").  Accordingly, the Panel finds that Respondent registered and uses the Domain Name in bad faith pursuant to Policy ¶ 4(b)(iv). 

  

 The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).

 

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 <aha-pac.org> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Nicholas J.T. Smith, Panelist

Dated:  December 28, 2023