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Generic Top Level Domain Name (gTLD) Decisions |
DECISION
American Anti-Vivisection Society v. "Infa dot Net" Web Services
Claim Number: FA0009000095685
PARTIES
The Complainant is The American Anit-Visisection Society, Jenkintown, PA, USA ("Complainant") represented by Christina D Frangiosa, Montgomery, McCracken, Walker & Rhodes, LLP. The Respondent is James M Van Johns Infa Dot Net W eb Services, Johnstown , PA, USA ("Respondent").
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is AAVS.ORG registered with BulkRegister.
PANELIST
The Panelist 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 the panelist in this proceeding.
Judge Harold Kalina (Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on September 25, 2000; The Forum received a hard copy of the Complaint on September 22, 2000.
On 9-27-00, BulkRegister confirmed by e-mail to the Forum that the domain name AAVS.ORG is registered with BulkRegister and that the Respondent is the current registrant of the name. BulkRegister has verified that Respondent is bound by the Bulk Register registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.
On October 3, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 23, 2000 by which Respondent could file a Response to the Complaint, was transmitted to Respo ndent 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@AAVS.ORG by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On October 31, 2000, pursuant to Complainant’s request to have the dispute decided by a One Member panel, the Forum appointed Judge Harold Kalina (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Uniform Rules "to employ reasonably available means calculated to achieve actual notic e to Respondent." Therefore, the Panel may issue its Decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the panel deems applicable, withou t the benefit of any Response from the Respondent.
RELIEF SOUGHT
The Complainant requests that the domain name be transferred from the Respondent to the Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The Complainant contends that the three elements of ICANN UDRP Policy are present in this case: 1) Respondent’s domain name is "identical or confusingly similar to a trademark or service mark in which the complainant has rights;" 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." Policy ¶ 4(a)(i) – (iii).
B. Respondent
The Respondent failed to provide any response. In accordance with Rule 5 (e) as the Respondent has not submitted a response and as there are no exceptional circumstances, the Panel will decide the dispute based on the complaint.
FINDINGS
The Complainant is a charitable organization created in 1883 to educate the public about various issues related to using animals in scientific experimentation. Since 1893, it has been publishing materials on this subject and distributing them to it s members across the country. Its applications for registration of its trademarks "American Anti-Vivisection Society" and "AAVS" are currently pending with the U.S. Patent and Trademark Office.
In 1996, Complainant hired Integrated Media Concepts ("IMC"), a web site designer, to create a web site to promote its educational services, inform the public about its activities, provide resources for other activists in this area, recruit new mem bers and raise money by selling AAVS merchandise. In connection with this activity, IMC registered, on March 26, 1996, "AAVS.ORG" as the domain name for this site. Complainant’s web site was continuously updated with new infor mation and had been operational since it was first posted in the spring of 1996.
Between 1996 and 2000, Complainant entered into numerous linking arrangements with other non-profit and educational organizations as well as other companies that sought to provide links on their own web sites to the information that Complainant pro vided on its "AAVS.ORG" web site. IMC also extensively promoted the AAVS.ORG web site as connected to the American Vivisection Society through various search engines and other advertising services. On its own, Complainant invested a great deal of its reso urces publicizing the launching of its web site, including adding the address to its letterhead, brochures and advertisements as well as announcing it during seminars and other events as a way for current members, potential members, and other interested p arties to find out more information about the Complainant’s work. Complainant also entered into advertising agreements to promote its web site and generate revenues. Throughout this time, Complainant maintained a fairly active web site presence and obtain ed a large percentage of its new members through the "AAVS.ORG" web site. It also made significant investments in developing the web site and keeping its members informed of its activities.
In late 1999, Complainant experienced infrequent shut-downs of its web site, which it later learned were the result of non-payment of invoices for the renewal of the domain name. Upon investigation, Complainant discovered that it had never received any invoices because the administrative and technical contact information for the domain name registration only included IMC, and not the Complainant. Despite repeated attempts between the end of 1999 and May 2000 to have the contact information correcte d, Complainant was unable to reach IMC and eventually concluded that the web site designer had gone out of business.
In May 2000, Complainant’s outreach director, Dean Smith, contacted representatives from Network Solutions, Inc. ("NSI"), the registrar of the site, to identify a course of action. Upon NSI’s recommendation, he sent a certified letter to IMC asking it to correct the contact information. The letter was returned as undeliverable, and following NSI’s instructions, Mr. Smith forwarded a copy of the certified letter to NSI with the understanding that it would be able to correct the situation.
In response, NSI representatives informed Mr. Smith that the only option available to the Complainant to correct the situation was to request that NSI cancel the domain name and, once it became available, register the name for itself again. Mr. Smi th asked if there was any way that Complainant could pay the outstanding invoices that IMC had failed to pay and thus take over the responsibility of the account to keep it current. NSI indicated that its current policies would not permit that type of tra nsfer.
NSI began the process of canceling the registration and making it available again for registration. After his discussions with NSI, in which it informed him that the cancellation process would take approximately five days, Mr. Smith checked several times a day for the next ten days to see if the name was yet available for re-registration. After numerous unsuccessful attempts, he contacted NSI again to find out if it could specify when the name would become available. The only advice Mr. Smith recei ved was to "keep trying," which he continued to do.
Finally, sometime between the afternoon hours and midnight on July 10, 2000, the site became available and was immediately registered by Respondent James M. van Johns using the BulkRegister.com registration service.
After it realized that the Respondent had usurped its domain name AAVS.ORG, Complainant registered an alternate domain name for its web site content (now at "AAVSONLINE.ORG") while attempting to negotiate a resolution with Respondent, and has tried with minimal success to publicize the new address in a way to reach the broadest possible audience. While it has made a significant investment in this campaign, it is unable to recreate the breadth of coverage it had enjoyed since 1996. Complainant’s new member rolls have dwindled since Respondent usurped the AAVS.ORG domain name. Further, Complainant faces tens of thousands of dollars in replacement costs to re-advertise the new site and re-publish its letterhead and brochures, and has experienced addit ional lost revenues on current advertisements that promote the original web site address and lost contributions and membership subscriptions that were generated through the original address.
Since July 10, 2000, the Respondent has failed to post anything on the web site except a solicitation for bids to purchase the domain name. The web site admonishes visitors to "use this e-mail address ONLY for dollar offers on the ‘AAVS.ORG’ domain name, and for no other purpose. Dollar offers you make via e-mail may be legally binding, so offer only what your organization fully intends to pay." It appears that the Respondent is aware that his activities could be criticized and seeks to dissuade an yone who is not willing to buy the domain name from him from using the e-mail address linked to the site because he added the following cautions to the e-mail instructions: "You agree that you have come here with a sincere, honest, and legitimate i nterest in purchasing the ‘AAVS.ORG’ domain name" and "Use of this e-mail address for any other purpose than an honest domain name inquiry (i.e. harassment, abuse, etc.) may be processed as an illegality."
On August 16, 2000, Complainant sent a letter by certified mail and by facsimile to Respondent informing him of its rights to the trademarked name AAVS and asking him to cease and desist from the infringing use of the name in his domain name. Despi te repeated attempts to send the letter by facsimile, Complainant was unsuccessful in transmitting the letter to the Respondent by that method. On August 28, 2000, the letter was returned, unopened, and marked "Refused." The letter was then sent by e-mail to the address listed in the WHOIS databases available through both his registrar (BulkRegister.com) and by NSI. To date, Complainant has received no response to any attempts at communication with the Respondent.
DISCUSSION
Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("Policy") requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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.
Identical and/or Confusingly Similar
The Complainant has a pending trademark application for the mark AAVS. UDRP Panels have held that pending trademark applications are evidence of rights in a mark. See Phone-N-Phone Services (Bermuda) Ltd. v. Shlomi (Salomon) Levi, D20 00-00400 (WIPO Mar. 23, 2000) (finding that the domain name was identical or confusingly similar to the complainant’s pending service mark application); MatchNet PLC. V. MAC Trading, D2000-0205 (WIPO May 11, 2000) (citing Th e British Broadcasting Corp. v. Jaime Renteria, D2000-0050 (WIPO Mar. 23, 2000)) (noting that the UDRP "does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names " and applying the UDRP to "unregistered trademarks and service marks"). In addition, the fact that the Complainant held the domain name prior to the Respondent’s registration evidences rights in the domain name and the mark therein contained. Thus, the P anel concludes that the Complainant has rights in the mark.
With the Complainant’s rights in the mark established, the Panel holds that the domain name in question is identical to the Complainant’s mark because it contains a complete and exact reproduction of the Complainant’s mark. See Internet Secur ity Systems, Inc. v HLC Enterprises, FA 95493 (Nat. Arb. Forum Oct. 11, 2000) (finding that the domain names internetsecuritysystems.com and internetsecuritysystems.net are identical to the Complainant’s mark).
Rights or Legitimate Interests
The Panel finds that the Respondent has no rights or legitimate interests in the domain name, based on Policy ¶ 4.a.(ii). The Respondent has not submitted any documents to the Panel, and thus the Panel concludes that the R espondent does not deny the Complaint’s assertions.
The Respondent registered the site immediately after it became re-available due to IMC’s failure to update its registration on the Complainant’s behalf. There is no evidence that the Respondent is commonly known by the Complainant’s mark contained in t he domain name. Policy ¶ 4.c.(ii). There is also no evidence that the Respondent registered the domain name for any other purpose than to offer it for sale. This is revealed by the fact that the Respondent expressly requests that no one contacts him for any other purpose than to purchase the domain name. Registering a domain name that infringes upon the Complainant’s mark and offering it for sale is not a bona fide offering of goods and services under Policy ¶ 4.c.(i). See SS8 Networks, Inc. v Qiu Shengjie, FA 95507 (Nat. Arb. Forum Oct. 4, 2000) (finding no rights in the domain name where the Respondent was holding the domain name for sale).
Registration and Use in Bad Faith
In this case, the Respondent’s website contains a mere offer to sell the domain name. While the Respondent has not directly contacted the Complainant regarding sale of the domain name, UDRP Panels have held that general offers to sell the domain na me, even if no certain price is demanded, are evidence of bad faith. See VARTEC TELECOM, INC. v. Jim Olenbush, D2000-1092 (WIPO Sept. 28, 2000) (finding bad faith registration where the Respondent registered the domain in order to sell it "f or far more than he paid for it" by sending a general email to the Complainant offering the domain name for sale for no express price); Educational Testing Service v. TOEFL, D2000-0044 (WIPO Mar. 16, 2000) (finding that a general offer of sale comb ined with no legitimate use of the domain name constitutes registration and use in bad faith). The Panel concludes that the Respondent registered the domain name in bad faith based on Policy ¶ 4.b.(i) because (1) the Respondent m ade a general offer of sale on his website and (2) registered the domain name with the intent to create a profit.
In addition, the Respondent’s conduct evidences bad faith based on Policy ¶ 4.b.(iv). The Respondent is using the domain name in question in order to attract Internet users to his website, which offers the domain name for sale . By using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorsh ip, affiliation, or endorsement of its web site or location. Policy ¶ 4.b.(iv).
DECISION
Having established all three elements required by the ICANN Policy Rule 4(a), it is the decision of the panel that the requested relief be granted.
Accordingly, for all of the foregoing reasons, it is ordered that the domain name, "AAVS.ORG", be transferred from the Respondent to the Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: November 6, 2000
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URL: http://www.worldlii.org/int/other/GENDND/2000/1463.html