Association of Social Work Boards d/b/a ASWB v. Domain Administrator
Claim Number: FA0607000746922
Complainant is Association of Social Work Boards d/b/a ASWB (“Complainant”), represented by Richard S. Stockton, of Banner & Witcoff Ltd., Ten S. Wacker Dr., Ste. 3000, Chicago, IL 60606. Respondent is Domain Administrator (“Respondent”), P.O. Box 533 WB, West Bay 000000 KY.
REGISTRAR
AND DISPUTED DOMAIN NAME
The domain name at issue is <aswb.com>, registered with Parava Networks, 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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 11, 2006; the National Arbitration Forum received a hard copy of the Complaint on July 12, 2006.
On July 15, 2006, Parava Networks, Inc. confirmed by e-mail to the National Arbitration Forum that the <aswb.com> domain name is registered with Parava Networks, Inc. and that Respondent is the current registrant of the name. Parava Networks, Inc. has verified that Respondent is bound by the Parava Networks, 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 July 18, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 7, 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@aswb.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 10, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) 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 <aswb.com> domain name is identical to Complainant’s ASWB mark.
2. Respondent does not have any rights or legitimate interests in the <aswb.com> domain name.
3. Respondent registered and used the <aswb.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Association of Social Work Boards d/b/a ASWB, is a non-profit umbrella organization for social work regulatory bodies. Complainant has continuously used the ASWB mark in connection with social work services since 2000. Complainant is responsible for administering a social work licensing exam in fifty-eight jurisdictions in the United States. Complainant also operates a website at the <aswb.org> domain name.
Complainant has registered the ASWB mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,655,366 issued December 3, 2002) and the Canadian Intellectual Property Office (“CIPO”) (Reg. No. TMA617,710 issued August 26, 2004).
Respondent registered the <aswb.com> domain name on June 1, 2006. Respondent’s website at the disputed domain name features links such as “Social Work,” “Study Guide,” and “Job Search, which resolve to third-party websites and subject Internet users to pop-up advertisements.
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.
By registering the ASWB mark with the USPTO and CIPO,
Complainant has demonstrated its rights in the mark pursuant to Policy ¶
4(a)(i). See Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May
23, 2005) (“Complainant’s numerous registrations for its HONEYWELL mark
throughout the world are sufficient to establish Complainant’s rights in the
HONEYWELL mark under the Policy ¶ 4(a)(i).”); see also Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum
Aug. 4, 2004) (finding that the complainant had established rights in the
GOOGLE mark through its holding of numerous trademark registrations around the
world).
Moreover, Respondent’s <aswb.com> is identical to Complainant’s ASWB mark because the disputed domain name contains the entire registered mark and merely adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that the mere addition of a gTLD fails to differentiate the disputed domain name from Complainant’s mark and consequently, Respondent’s <aswb.com> domain name is identical to the ASWB mark under Policy ¶ 4(a)(i). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (concluding that the <redhat.org> domain name is identical to the complainant’s RED HAT mark because the mere addition of gTLD was insufficient to differentiate the disputed domain name from the mark); see also Reichert, Inc. v. Patrick Leonard and Pat Leonard Surgical, Inc., FA 672010 (Nat. Arb. Forum May 24, 2006) (“The disputed domain names are identical to Complainant’s mark, but for the addition of a generic top-level domain suffix (“.com” or “.net”).”).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights and legitimate interests in the <aswb.com> domain name. Complainant must first make a prima facie case in support of its allegations, and then the burden shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). 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.”).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the <aswb.com> domain name. See
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); see also Geocities v. Geocities.com,
D2000-0326 (WIPO June 19, 2000) (finding that the respondent has no rights or
legitimate interests in the domain name because the respondent never submitted
a response or provided the panel with evidence to suggest otherwise). However, the Panel
will now examine the record to determine if Respondent has rights or legitimate
interests under Policy ¶ 4(c).
Respondent has registered the domain name under the name “Domain
Administrator,” and there is no other evidence in the record suggesting that
Respondent is commonly known by the <aswb.com>
domain name. Accordingly, the Panel
finds that Respondent has not established rights or legitimate interests in the
<aswb.com> domain name
pursuant to Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store,
FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not
have rights in a domain name when the respondent is not known by the mark); see also Coppertown Drive-Thru Systems, LLC
v. Snowden, FA 715089 (Nat. Arb. Forum Jul. 17, 2006) (concluding that the respondent was not commonly known by the
<coppertown.com> domain name where there was no evidence in the record,
including the WHOIS information, suggesting that the respondent was commonly
known by the disputed domain name).
Respondent’s <aswb.com>
domain name resolves to a commercial web page featuring links to various
third-party websites unaffiliated with Complainant. In Golden
Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17,
2003), the respondent registered the <nicklausgolf.com> domain name,
which included the complainant’s NICKLAUS mark, and used it to operate a search
engine displaying links to third-party websites. The panel held that the respondent’s diversion of Internet users
to websites unrelated to the complainant’s mark did not represent a bona fide offering of goods or services
under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶
4(c)(iii). Likewise, Respondent is
likely receiving click-through fees for each consumer it diverts to third-party
websites and therefore its diversionary use of the disputed domain name for
commercial gain also does not represent a bona
fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii). See Computer Doctor Franchise Sys., Inc. v.
Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) (finding that the
respondent’s website, which is blank but for links to other websites, is not a
legitimate use of the domain names).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent is using the <aswb.com> domain name to redirect Internet users to third-party
websites via misleading links such as “Social Work” and “Job Search.” In Bank
of Am. Corp. v. Out Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3,
2003), the panel found that respondent’s registration and use of several domain
names confusingly similar to the complainant’s BANK OF AMERICA mark to operate
search engine websites was in bad faith.
Specifically, the panel stated that “[s]ince the disputed domain names
contain entire versions of Complainant’s marks and are used for something
completely unrelated to their descriptive quality, a consumer searching for
Complainant would become confused as to Complainant’s affiliation with the
resulting search engine website.” Id. Likewise,
Respondent is taking advantage of consumer confusion over the source,
affiliation, sponsorship or endorsement of the disputed domain name and
profiting from the goodwill associated with the ASWB mark. The Panel finds such registration and use to
constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Drs. Foster & Smith, Inc. v. Lalli,
FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the
respondent directed Internet users seeking the complainant’s site to its own
website for commercial gain).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <aswb.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: August 22, 2006
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