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Alcoholics Anonymous World Services, Inc. v. Friends of Bill W and Jimmy K [2001] GENDND 1401 (28 December 2001)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Alcoholics Anonymous World Services, Inc. v. Friends of Bill W and Jimmy K

Case No. D2001-1124

1. The Parties

Complainant in this case is Alcoholics Anonymous World Services, Inc. According to its complaint, it is a not-for-profit corporation incorporated under the laws of the State of New York, U.S.A., with its principal place of business in the city of New York. It is represented in this proceeding by Attorney Cynthia Clarke Weber of the law firm Sughrue, Mion, Zinn, MacPeak & Seas, Washington, D.C., U.S.A.

The Respondent in this case is an entity called the Friends of Bill W and Jimmy K. Respondent’s representatives in this case call themselves the Admin Committee for <alcoholicsanonymous.org>, appearing to be based in Palmdale, California, U.S.A.

2. The Domain Name and Registrar

The dispute is with respect to the following domain name (hereafter "the domain name"), <alcoholicsanonymous.org>.

The registrar with which this domain name is registered is Network Solutions, Inc., U.S.A., (hereafter "the Registrar").

3. Procedural History

The procedures for resolving Complaints like this one are governed by the Uniform Domain Name Dispute Resolution Policy (hereafter "The Policy") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999, ICANN’s Rules for Uniform Domain Name Dispute Resolution Policy (hereafter "The Rules"), as well as the Supplemental Rules of the WIPO Arbitration and Mediation Center (hereafter "The Supplemental Rules").

The current dispute lies within the scope of the Policy, so that this Panel does have proper jurisdiction to hear and decide this dispute. The terms and conditions of the registration agreement between the Registrar and the Respondents clearly incorporate the Policy, so that Respondents were notified of the existence of the Policy’s provisions for domain name dispute resolution. The Policy contains in its Paragraph 4(a) the elements to be pleaded in order for a mandatory administrative proceeding such as this one to be held: Complainant must allege that (i) Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) Respondent has no rights or legitimate interests in the domain name; and (iii) Respondent’s domain name has been registered and is being used in bad faith. See the Policy, Paragraph 4 (a). In order to successfully make its case, the Complainant must prove each of these three elements.

An electronic copy of the Complaint was filed on September 14, 2001. A hardcopy of the Complaint was filed on September 17, 2001. A request for Registrar Verification was made to the Registrar on September 20, 2001, and such Verification was made on September 25, 2001. On October 1, 2001, the Center notified the Registrar of the filing of the Complaint with the Center. On October 1, 2001, notification of the Complaint was sent to Respondent. On October 23, 2001 a Notification was sent to Respondent of its default. On October 25, 2001, Respondent filed an informal Response by electronic mail, with copies to the Center and to Complainant’s legal representative in this proceeding. Thereafter, Complainant sent a communication to the Center requesting an additional opportunity to respond to certain allegations in the Response dated October 25, 2001.

According to the Center’s compliance checklist document, the Complaint has been filed in accordance with the formal requirements of the Rules and the Center’s Supplemental Rules.

The Panel consists of a single Panelist pursuant to Complainant’s request, with which the Respondent agreed in its Response, see Section IV of Response, paragraph 13. The Panelist was duly appointed by the Center. A "Statement of Acceptance and Impartiality and Independence" was submitted to the Center by the Panelist on November 5, 2001, and the Panelist was appointed by the Center on November 7, 2001. A decision on the Complaint is normally due within 14 days of the appointment of the Panel under Paragraph 15(b) of the Rules. However, this deadline was extended because of the issuance of Procedural Orders No. 1 and No. 2, described below.

Soon after being constituted, the Panel issued its Procedural Order No. 1 in this case, dated November 13, 2001, in which it requested Respondent to formalize its Response according to the UDRP Rules requirements. It also provided Complainant an opportunity to respond to Respondent’s allegations referred to earlier. Both parties had a deadline of the close of business, U.S. Eastern Standard time on November 20, 2001 to provide the requested information.

The Panel then decided to supersede its Procedural Order No. 1 with a more focused Procedural Order No. 2 dated November 29, 2001, in which the Panel specifically asked Respondent to sign and verify its Response in accordance with the Rules. Given the anonymous nature of the organizations involved in this dispute, the Panel allowed Respondent to use initials or an alias if it wished to do so. The deadline for receipt of the signed and Verified Response by the Center was extended to December 11, 2001 to allow for hard copy delivery of this Order with proof of receipt by Respondent.

The Center sent a copy of both Procedural Orders to the Respondent’s technical contact person, Michael Hughes of Hughes Electronic Commerce, Lancaster, California, U.S.A. by international courier. The shipment tracking record of the courier company indicates that the package was sent from the Center in Geneva, Switzerland on November 29, 2001, delivered to Mr. Hughes’ office and signed for on December 3, 2001. However the phone number listed for Mr. Hughes was not functioning and had no forwarding number. Likewise, the shipment tracking record of the courier company for a subsequent attempt to deliver hard copies of these Procedural Orders to Respondent’s administrative contact was also inconclusive as to actual receipt. Communication of the Procedural Orders to Respondent and its technical contact by electronic mail was unsuccessful because apparently, the mailbox for mailto:webmaster@alcoholicsanonymous.org was full and the mails sent to technical contact’s email address were returned to the Center as "user unknown".

Meanwhile, in response to Procedural Order No. 1, the Complainant submitted a formal Reply on or about November 22, 2001 (hereafter "the Reply"), which was accepted into evidence by the Panel.

4. Factual Background

Complainant states that since 1939, Complainant has continuously used the name "ALCOHOLICS ANONYMOUS as a service mark, trademark and trade name (Complaint, Paragraph 10). Paragraph 11 of the Complaint states that Complainant is the owner of a valid and existing U.S. trademark registration: ALCOHOLICS ANONYMOUS (U.S. Registration No. 1,329,499) for "book pamphlets and printed cards; association services, namely, promoting the interests of those concerned with alcoholism; wall plaques and wood signs." A copy of this registration is attached to the Complaint as Exhibit A.

According to Paragraph 15 of its Complaint, the Complainant maintains a website at <alcoholics-anonymous.org>

5. Parties’ Contentions

Because of the difficulties in communicating the Panel’s two Procedural Orders referred to in Section 3 of this decision to this particular Respondent which has seemed elusive, the Panel has focused primarily on the strength of the arguments presented by Complainant as verified by the Panel’s own independent visits to Respondent’s website containing the domain name, as well as discussions with people familiar with the organization of Alcoholics Anonymous worldwide.

Complainant alleges the elements of its case as follows:

1. It has legitimate intellectual property interests in the domain name, and

that Respondent has no such interests (see Complaint, paragraphs10 – 18);

2. The domain name as registered and used by Respondent is confusingly similar or nearly identical to the "ALCOHOLICS ANONYMOUS mark (see Complaint, paragraph 17); and

3. Respondent has registered and used the domain name in bad faith, as shown by:

- Respondent’s intent in registering the domain name is "to confuse the purchasing public into believing that Complainant maintains, or has approved, endorsed or is the sponsor of, or is otherwise associated with Respondent’s web site", without explanation for such registration (Complaint, paragraph 19);

- Respondent basically provided false information to the Registrar by registering the domain name in the name of "Friends of Bill W and Jimmy K" on one hand, but claiming that the true Respondent in this case is instead "The Admin Committee of Alcoholics Anonymous" (Reply, paragraphs 18 – 19)

- Complainant’s attempts to negotiate with the Respondent for the domain name were not accepted by Respondent (Complaint, paragraphs 21 – 24);

- On or about the week of September 3, 2001, Respondent linked the domain name to a website maintained at <hughes.net> which website contained a gambling element (Complaint, paragraphs 25 – 31) and other similarly addictive elements the publicity of which runs counter to Complainant’s primary mission and purpose, i.e to lessen the ties of alcoholism and other addictive behaviors (also see Reply, paragraphs 26 – 38, and 41).

- Respondent has tried to offer the domain name for sale through a third party, <www.greatdomains.com>

- An allegation of harassment by a third party (Complaint, Paragraph 32 and Exhibit H).

Finally, Complainant cites the decision in Alcoholics Anonymous World Services, Inc. v. Lauren Raymond, WIPO Case No. D2000-0007, in support of its case (Complaint, Paragraph 36).

As a result, Complainant asks this Panel to issue a decision to the effect that the domain name be transferred to Complainant, in accordance with Paragraph 4(i) of the Policy.

6. Discussion and Findings

The Panel realizes that this is a difficult case with somewhat unique circumstances. One of these is the fact that this is a dispute involving non-profit organizations where the domain name is not being contested for its commercial value.

Based on the considerations referenced above the Panel finds as follows:

First, the correct Respondent in this case is indeed the Friends of Bill W and Jimmy K, because this is the entity listed by the Registrar as the registrant of the domain name. Bill W is one of the founders of Alcoholics Anonymous, upon information and belief of the Panel.

I. As regards proof of element (1) above, intellectual property rights, the Panel finds:

a. Complainant has adequately demonstrated its own intellectual property rights in the mark "ALCOHOLICS ANONYMOUS".

b. As regards the lack of legitimate interest or rights in the domain name, Respondent has, by virtue of its claim to be one of the local groups representing the Alcoholics Anonymous organization in its area, raised this issue for resolution.

Upon information and belief of this Panel, Alcoholics Anonymous is a highly decentralized fellowship of local organizations around the world, and Complainant acts primarily as a publishing house in a very decentralized organizational structure of Alcoholics Anonymous.

Accordingly, the Panel finds that Respondent does have some legitimate right to use the domain name as well. It has buttressed its case by sending a brochure published by the General Service Office of Alcoholics Anonymous in New York (The Complainant) entitled "Ten Frequently Asked Questions About A.A. Web Sites." The existence and contents of this brochure were not challenged by Complainant in its Reply to Respondent’s Response. Nor does Complainant dispute Respondent’s status as a locally-based Alcoholics Anonymous organization. The answers to questions 1, 5 and 7 clearly indicate authority of local organizations to set up local alcoholics anonymous websites, and that Alcoholics Anonymous is a decentralized organization – see for example:

Question 1: "How do we start to set up a local A.A. web site?" (A: can be done upon forming a local committee).

Question 5: "What about linking to other sites?" (A: linking to other bona fide A.A. websites is ok…each A.A. entity is autonomous and has its own group conscience.").

Question 7: "Will the General Service Office of A.A. act as a ‘clearinghouse’ for local web sites? (A: "There is no central authority in Alcoholics Anonymous, hence the General Service Office is not a clearinghouse for local web sites.").

II. As regards proof of element (2) above, the confusion between Complainant’s trademark and the domain name as registered and used by Respondent, the Panel finds that the domain name is confusingly similar to Complainant’s registered trademark.

III. As regards proof of element (3) above, the bad faith registration and use elements, the Panel notes that it is a settled principle of UDRP decisions that a Complainant must prove both bad faith registration and bad faith use of the domain name.

a. On Complainant’s claims of bad faith registration of the domain name, the Panel finds:

- Regarding the claim that Respondent provided misleading information to the Registrar, the Panel is not convinced that this is in fact the reason there is a difference between the official registrant and the so-called Administrative Committee for Alcoholics Anonymous, since anonymity is an important element in Respondent’s organization and process.

- Regarding the claim that Respondent registered the domain name with an "intent to confuse the purchasing public", Complainant cites WIPO Case No. D2000-0007, Alcoholics Anonymous World Services, Inc. v. Lauren Raymond on this point. However in that case, the Respondent did not answer or challenge the complaint, and the Panel drew a negative inference and therefore accepted all Complainant’s allegations as true. This is not our situation in the present case, where Respondent challenges vigorously, albeit in an informal, unverified Response.

b. On Complainant’s claims of bad faith use of the domain name, the Panel finds:

- On the claim that Respondent has shown bad faith by not completing negotiations between the parties for transfer of the domain name, in general this Panel has not accepted in its prior UDRP decisions, and does not accept in this case, evidence of success or failure in negotiations between the parties as evidence of good or bad faith on the part of any party. Admitting into this proceeding evidence taken from settlement negotiations runs contrary to public policy adopted by all courts in the U.S. at least, to encourage parties to settle their disputes amicably by keeping confidential between them all evidence of their settlement negotiations.

- On links to gambling and/or advertising site allegedly located on Respondent’s website, the Panel finds that Complainant has not provided sufficient evidence to make its claim. The Exhibits to the Complaint and Reply allegedly illustrating these gambling and advertising sites illustrate some but not conclusive connections with Respondent’s website. And the Declarations of Michelle White and Leigh Ann Lindquist, who clicked onto Respondent’s website and followed various links there, only indicate an indirect connection between Respondent’s website and the alleged gambling sites. It is quite possible that these gambling sites were inserted by the web host company, not necessarily at Respondent’s request.

- On the third-party harassment claim, the Panel finds this to be only marginal on the merits.

- However, on the offer to sell the domain name via the third-party <www.greatdomains.com> website, the Panel visited this site independently on November 29, 2001 and did find that the domain name was listed for sale, without limiting the sale price to registration fees and costs. This constitutes bad faith use of the domain name, according to examples given in the UDRP and a myriad of cases thereunder.

- Regarding disclaimers by Respondent on its webpage to which the domain name resolves, at times disclaimers can, depending upon their wording and prominence, mitigate claims of bad faith use by a Respondent. In this case, the Panel observed in its own visit to Respondent’s website, a number of disclaimers that were prominently posted so that the element of bad faith use was highly mitigated. For example, on December 11, 2001, the Panel visited Respondent’s website and found the following prominently posted at the very top of Respondent’s home page, replicated below in an approximately similar type style and size:

"AlcoholicsAnonymous.org

The Unofficial Web Site for AA Related Information

alcoholicsanonymous.org is not affiliated with Alcoholics Anonymous World Services, Inc."

The Panel also viewed the following explanatory posting at the very bottom of Respondent’s home page, which goes much further than an ordinary disclaimer:

" Click here to go to the official web site for Alcoholics Anonymous

World Services, Inc. ("The General Service Office of U.S./Canada").

The General Services Office is the national office servicing A.A. in the U.S./Canada.

CLICK HERE TO FIND LINKS FOR OTHER OFFICIAL WEB SITES

INCLUDING NATIONAL OFFICES SERVING OTHER COUNTRIES!

An independent check by the Panel on December 19, 2001 indicated that the hyperlink to Complainant’s website as quoted above was functioning well.

IV. Finally, a legitimate defense by a Respondent, even if bad faith were to be proven, is legitimate business activity where the domain name plays an integral part and which is not in competition with Complainant. This was the situation in the aoltrader.com case, America Online, Inc. v. Frank Albanese, WIPO Case D2000-1604, January 25, 2001, where the Panel declined to transfer the <aoltrader.com> domain name to Complainant AOL, Inc. because the Respondent was engaging in a legitimate, non-competing business in which this domain name was an essential part – the brokerage of AOL shares of stock.

A comparable situation exists here, where Respondent is part of the worldwide, decentralized Alcoholics Anonymous organization, although not necessarily always in agreement with Complainant’s group within that organization. Its website is designed for similar, common purposes to that of Complainant – to provide information and assistance to those seeking help for alcoholism. Again, the Panel recognizes that this is not a commercial situation, rather a dispute involving non-profit groups with similar social goals.

7. Decision

Based upon the Panel’s Findings in Section 6 above, and under its authority vested by Paragraph 4(i) of the Policy, the Panel hereby finds that Complainant does have rights in the "Alcoholics Anonymous" trademark, but that Respondent also has rights to use the domain name based on the decentralized organizational structure of Alcoholics Anonymous and Complainant’s own published website guidelines; that the domain name is confusingly similar to Complainant’s trademarks; that the case for bad faith registration of the domain name is not clear; that Complainant has proven its case for bad faith use of the domain name based on attempted sale of the domain name, although this element is mitigated by strong disclaimers on Respondent’s website; and that even if bad faith were to be proven, that Respondent is engaging in a legitimate, non-competitive activity with common social goals to those of Complainant.

For each of these reasons, the Panel concludes that Complainant has not met its full burden of proof under the UDRP. However, this Panel’s decision should not be interpreted as a substantive decision on the merits of any trademark infringement claim that Complainant may ultimately choose to bring in court under applicable U.S. federal or state law. Under the complex, unique circumstances and history of this case, it has not been easy for this Panel to reach a decision and so this Panel would be reluctant to have this decision stand as precedent for others unless the unique circumstances were almost precisely duplicated.

Accordingly, the Panel must find for the Respondent and decline Complainant’s request for transfer of the domain name.

Paul E. Mason
Sole Panelist

Dated: December 28, 2001