The American Heart Association, Inc. v.
Whois Privacy Protection Service, Inc. c/o Whois Agent
Claim
Number: FA0504000463122
Complainant The American Heart Association, Inc. (“Complainant”),
is represented by Nicole B. Emmons of Baker & McKenzie LLP,
2001 Ross Avenue, Suite 2300, Dallas, TX, 75201. Respondent is Whois
Privacy Protection Service, Inc. c/o Whois Agent (“Respondent”), PMB 368,
14150 NE 20th St. – F1, c/o Americanheartassociation.com, Bellevue,
WA, 98007.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <americanheartassociation.com>, registered
with Enom, Inc.
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks
Johnson sits as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically April
14, 2005; the National Arbitration Forum received a hard copy of the Complaint April
18, 2005.
On
April 19, 2005, Enom, Inc. confirmed by e-mail to the National Arbitration
Forum that the domain name <americanheartassociation.com> is
registered with Enom, Inc. and that Respondent is the current registrant of the
name. Enom, Inc. verified that
Respondent is bound by the Enom, Inc. registration agreement and thereby has
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 22, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 12, 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@americanheartassociation.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
May 17, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn
Marks Johnson as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration Forum 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. The domain name that Respondent
registered <americanheartassociation.com>
is identical to Complainant’s AMERICAN HEART ASSOCIATION mark.
2. Respondent has no rights to or legitimate
interests in the <americanheartassociation.com> domain name.
3. Respondent registered and used the <americanheartassociation.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, The
American Heart Association, Inc., is a non-profit organization in the field of
cardio-vascular health and is known throughout the Unites States as well as
internationally. Complainant uses the
mark in connection with a variety of products and services related to
cardio-vascular health. Complainant was
established in 1924 and has used the AMERICAN HEART ASSOCIATION mark since as
early as May 1924. In the course of its
business, Complainant registered the AMERICAN HEART ASSOCIATION mark with the
United States Patent and Trademark Office (Reg. No. 1,091,140, issued May 9,
1978).
Respondent
registered the <americanheartassociation.com> domain name September
12, 2003. Respondent is using the
disputed domain name to redirect Internet users to a search engine website
where links offering health related products and services are displayed. Some of the third party websites are for
competitors of Complainant.
Complainant
submitted evidence of actual consumer confusion among Internet users who have
identified Complainant in reference to the domain name.
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 as the Panel considers appropriate pursuant to paragraph
14(b) of the Rules.
Paragraph 4(a)
of the Policy requires Complainant to 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
established using extrinsic evidence in this proceeding that it has rights in
the AMERICAN HEART ASSOCIATION mark through registration with the United States
Patent and Trademark Office. See
Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002)
(“Under U.S. trademark law, registered marks hold a presumption that they are
inherently distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that
registration of a mark is prima facie evidence
of validity, which creates a rebuttable presumption that the mark is inherently
distinctive. Respondent has the burden
of refuting this assumption).
The <americanheartassociation.com>
domain name registered by Respondent is identical to Complainant’s AMERICAN
HEART ASSOCIATION mark because the only difference between the two is the
addition of the generic top-level domain “.com.” The addition of the generic top-level domains “.com,” “.net,”
“.org” or “.info” is irrelevant in determining whether the disputed domain name
is confusingly similar to Complainant’s AMERICAN HEART ASSOCIATION mark. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding
<pomellato.com> identical to Complainant’s mark because the generic
top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); 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” and thus Policy ¶ 4(a)(i) is satisfied); see
also Rollerblade, Inc. v. McCrady,
D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name
such as “.net” or “.com” does not affect the domain name for the purpose of
determining whether it is identical or confusingly similar); see also Koninklijke Philips Elecs. NV v. Goktas,
D2000-1638 (WIPO Feb. 8, 2001) (finding that the domain name
<philips.org> is identical to Complainant’s PHILIPS mark).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant
established its rights and interest and alleges that Respondent has no such
rights or legitimate interests in the disputed domain name. The burden shifts to Respondent to show that
it does have rights or legitimate interests once Complainant establishes a prima
facie case pursuant to Policy ¶ 4(a)(ii).
Due to Respondent’s failure to respond to the Complaint, the Panel
assumes that Respondent lacks rights and legitimate interests in the disputed
domain name. See G.D. Searle v.
Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that
where Complainant has asserted that Respondent has no rights or legitimate
interests with respect to the domain name it is incumbent on Respondent to come
forward with concrete evidence rebutting this assertion because this
information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com,
D2000-1228 (WIPO Nov. 28, 2000) (finding that under certain circumstances the
mere assertion by Complainant that Respondent has no rights or legitimate
interests is sufficient to shift the burden of proof to Respondent to
demonstrate that such rights or legitimate interests do exist); see also Pavillion Agency, Inc. v.
Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that
Respondents’ failure to respond can be construed as an admission that they have
no legitimate interests in the domain names).
The Panel also
accepts all reasonable allegations and inferences in the Complaint as true
because Respondent has not submitted a response. See 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.”); see also Vertical Solutions Mgmt., Inc. v.
webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000)
(holding that Respondent’s failure to respond allows all reasonable inferences
of fact in the allegations of the Complaint to be deemed true); see also Desotec N.V. v. Jacobi
Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to
respond allows a presumption that Complainant’s allegations are true unless
clearly contradicted by the evidence).
Respondent is
using the <americanheartassociation.com> domain name, which is
identical to Complainant’s AMERICAN HEART ASSOCIATION mark, to operate a search
engine website that features links to competing health-related websites. Such competing use is not a use in
connection with a bona fide offering of goods or services pursuant to Policy ¶
4(c)(i) and it is not a legitimate noncommercial or fair use pursuant to Policy
¶(c)(iii). See N. Coast Med., Inc. v. Allegro Med., FA
95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no rights or legitimate interests
in a domain name that diverted Internet users to Respondent’s competing website
through the use of Complainant’s mark); see also Computerized Sec. Sys.,
Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (holding that
Respondent’s appropriation of Complainant’s mark to market products that
compete with Complainant’s goods does not constitute a bona fide offering of
goods and services).
Complainant
asserts as well that Respondent is not commonly known by the <americanheartassociation.com> domain
name pursuant to paragraph 4(c)(ii) of the Policy. Nothing in the record clearly contradicts this assertion. Thus the Panel finds Respondent did not
establish rights or legitimate interests in the disputed domain name. See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan.
23, 2001) (finding that Respondent does not have rights in a domain name when
Respondent is not known by the mark); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting
Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known
by the domain name prior to registration of the domain name to prevail").
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is
using the <americanheartassociation.com> domain name, which is
identical to Complainant’s AMERICAN HEART ASSOCIATION mark, to operate a
website that features links to competing health-related websites. The Panel finds that such competing use
constitutes disruption and is evidence that Respondent registered and used the
domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See Puckett v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that
Respondent has diverted business from Complainant to a competitor’s website in
violation of Policy ¶ 4(b)(iii)); see also S. Exposure v. S. Exposure, Inc., FA
94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by
attracting Internet users to a website that competes with Complainant’s
business).
The Panel infers
that Respondent receives click-through fees for diverting Internet users to
competing health-related websites.
Since Respondent’s <americanheartassociation.com> domain
name is identical to Complainant’s AMERICAN HEART ASSOCIATION mark, consumers
accessing Respondent’s domain name may become confused as to Complainant’s
affiliation with the resulting website.
Thus, the Panel finds that Respondent’s commercial use of the disputed
domain name constitutes bad faith registration and use pursuant to Policy ¶
4(b)(iv). See Kmart v. Khan, FA
127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from
its diversionary use of Complainant's mark when the domain name resolves to
commercial websites and Respondent fails to contest the Complaint, it may be
concluded that Respondent is using the domain name in bad faith pursuant to
Policy ¶ 4(b)(iv)); see also Qwest Communications Int’l Inc. v. Ling Shun
Shing, FA 187431 (Nat. Arb. Forum Oct. 6, 2003) (“Respondent's attempt to
commercially benefit from the misleading domain name is evidence of bad faith
pursuant to Policy ¶ 4(b)(iv).”).
Furthermore, Respondent registered the <americanheartassociation.com>
domain name with actual or constructive knowledge of Complainant’s rights in
the AMERICAN HEART ASSOCIATION mark due to Complainant’s registration of the
mark with the USPTO. Moreover, the
Panel infers that Respondent had actual knowledge of Complainant’s mark due to
the obvious connection between the content advertised on Respondent’s website
and Complainant’s business. Registration of a domain name that is
confusingly similar to a mark, despite actual or constructive knowledge of
another’s rights in the mark, is evidence of bad faith registration and use
pursuant to Policy ¶ 4(a)(iii). See
Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002)
(“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO,
a status that confers constructive notice on those seeking to register or use
the mark or any confusingly similar variation thereof.”); see also Pfizer,
Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the
link between Complainant’s mark and the content advertised on Respondent’s
website was obvious, Respondent “must have known about the Complainant’s mark
when it registered the subject domain name”).
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 <americanheartassociation.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
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