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Sharman License Holdings, Limited v. Kazagold [2005] GENDND 348 (3 April 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Alberta Motor Association, the Alberta Motor Association Insurance Company, A.M.A. Insurance Agency Ltd., Alberta Motor Association Travel Agency Ltd., AMA Financial Services Ltd., AMA Services Ltd. v. Anthony Peppler

Case No. D2005-0018

1. The Parties

The Complainants are the Alberta Motor Association, the Alberta Motor Association Insurance Company, A.M.A. Insurance Agency Ltd., Alberta Motor Association Travel Agency Ltd., AMA Financial Services Ltd., and AMA Services Ltd., all of Edmonton, Canada represented by Gregory P. Nakonechny, United States of America.

The Respondent is Anthony Pepper, Fort Wayne, Indiana, United States of America.

2. The Domain Name and Registrar

The disputed domain name <albertamotorassociation.com> (the “Domain Name”) is registered with EnCirca, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 6, 2005. On that day, the Center transmitted by email to EnCirca, Inc. a request for registrar verification in connection with the Domain Name. On January 7, 2005, EnCirca, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on January 11, 2005. In accordance with the Rules, paragraph 5(a), the due date for filing a response was January 31, 2005. Respondent did not submit any response. Accordingly, the Center notified Respondent of his default on February 1, 2005.

The Center appointed Robert A. Badgley as the sole panelist in this matter on February 9, 2005. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The first Complainant, the Alberta Motor Association, owns the five other Complainants, and owns the trademark rights in each such subsidiary. Accordingly, the Panel regards the other five affiliated Complainants as essentially superfluous for purposes of this proceeding, and will disregard them qua Complainants.

Complainant is a Canadian Society incorporated under the Societies Act, 1924 (Alberta) on November 30, 1926, and continued under the Alberta Motor Association Act, passed by the Legislative Assembly of the Province of Alberta and assented to on March 31, 1938. Complainant is headquartered in Edmonton.

Complainant is the exclusive affiliated club of the Canadian Automobile Association (“CAA”) for the Province of Alberta and the District of Mackenzie (the Northwest Territories). The CAA is alleged to be the Canadian counterpart of the American Automobile Association (“AAA”).

It is alleged in the Complaint, and unrebutted by the defaulting Respondent, that, as of November 30, 2004, the Alberta Motor Association has 711,211 members in the Province of Alberta.

Complainant owns the Canadian registered trademark “AMA,” registered as TMA409509 since March 12, 1993. This registered mark is an acronym of the unregistered trademark in which Complainant also asserts rights, “Alberta Motor Association.”

It is evident from the home page of Complainant’s main website, located at <ama.ab.ca> and first operated in 1996, that Complainant and/or its subsidiaries offer a wide variety of services to members of the Alberta Motor Association, including driver education, insurance, travel services, financial services, automotive services, and other services. Complainant uses both the “AMA” registered mark and the “Alberta Motor Association” unregistered mark throughout the site.

Annexes to the Complaint also establish that Complainant prominently displays the “Alberta Motor Association” unregistered mark in various contexts, such as signs outside its retail centers, on its membership cards, and so forth.

Since 1995, Complainant has established and maintained a relationship with a number of retailers in Alberta to provide discounts, reward programs and other benefits to members of the Alberta Motor Association. Each participating retailer displays at its retail location(s) signage that indicates its relationship with the Alberta Motor Association. It is alleged, and unrebutted, that, as of December 1, 2004, the program is offered in 1,350 retail locations in Alberta. Participating retailers include providers of gasoline, cellular phones, hotel accommodation, rental cars, entertainment and leisure activities, and automotive services.

Respondent registered the Domain Name on May 19, 2004. As of February 9, 2005, the Domain Name resolved to a website featuring the following legend:

“albertamotorassociation.com
What you need, when you need it”

Various product or service categories are displayed on this website, several of which categories obviously overlap with the services offered by Complainant to its members. The category listings on Respondent’s site link to commercial websites.

Respondent has been found in bad faith in prior proceedings under the Policy, including the following cases: Xerox Federal Credit Union v. Anthony Peppler d/b/a/ RealTimeInternet.com, Inc., NAF Case No. FA104583 (March 25, 2002); LM&B Catalogs, Inc. v. Anthony Peppler d/b/a DNPro.com, NAF Case No. FA123894 (October 29, 2002); and Linens ‘n Things, Inc. & Bloomington, MN., L.T., Inc. v. P4, WIPO Case No. D2002-0668 (October 8, 2002) (respondent’s administrative contact for disputed domain name was Anthony Peppler of Fort Wayne, Indiana).

5. Parties’ Contentions

A. Complainant

Complainant contends that the Domain Name is confusingly similar to both its registered mark “AMA” and its unregistered mark “ALBERTA MOTOR ASSOCIATION.” Complainant further contends that Respondent lacks any rights or legitimate interests in respect of the Domain Name, and that Respondent registered and is using the Domain Name in bad faith.

Complainant requests that the Domain Name be transferred to it.

B. Respondent

As noted above, Respondent did not respond to the Complaint.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy in order to succeed:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that Complainant has registered trademark rights in “AMA” and common law rights in the unregistered mark “ALBERTA MOTOR ASSOCIATION.” For both marks, Complainant’s rights easily predate Respondent’s registration of the Domain Name.

Complainant first argues that the Domain Name <albertamotorassociation.com> is confusingly similar to the registered mark “AMA,” since that mark is an acronym for Alberta Motor Association. The Panel rejects this argument outright. The visual, aural, and conceptual differences between this three-letter mark and the 23-letter second-level domain in the Domain Name are too vast to take this argument seriously.

Fortunately, Complainant also has common law rights in the unregistered mark “ALBERTA MOTOR ASSOCIATION,” to which, the Panel finds, the Domain Name is identical.

Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:

(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Complainant bears the burden of proof on the “rights or legitimate interests” issue (as it does for all three elements of the Policy). Louis de Bernieres v. Old Barn Studios Limited, WIPO Case No. D2001-0122 (March 26, 2001).

Respondent, who filed no response in this proceeding, has not invoked any of the circumstances of Policy, paragraph 4(c) to suggest any “rights or legitimate interests” in respect of the Domain Name.

Respondent’s use of the Domain Name, which resolves to a directory of services overlapping those provided by Complainant and linking to various commercial websites offering such services, is plainly not a bona fide offering of goods or services under Policy paragraph 4(c)(i). Based on the evidence of record, the Panel finds that the other express grounds for a legitimate interest under paragraph 4(c) are equally lacking here.

The Panel rules that Respondent lacks any “rights or legitimate interests” in respect of the Domain Name for purposes of Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:

(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or

(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.

With respect to the element of “bad faith” registration of the Domain Name, the Panel finds it more likely than not that Respondent had Complainant’s mark “Alberta Motor Association” in mind when registering the Domain Name, which corresponds identically to that mark. There is no apparent alternative explanation for his decision to register this particular Domain Name.

Complainant argues, evidently under Policy paragraph 4(b)(iii), that “Respondent registered the Domain Name primarily for the purpose of disrupting the business of Complainant.” Even if this unproven assertion were accepted as true, there is no evidence that Complainant and Respondent are “competitors” -- as is required by paragraph 4(b)(iii) -- under any responsible definition of that term. (Indeed, Complainant’s other argument, discussed below, that Respondent has a history of cybersquatting, suggests that Respondent is not in the same line of business as Complainant.)

The Panel recognizes a body of decisions under the Policy that appear to hold (deliberately or unwittingly) that a respondent who links his domain name to the site of the complainant’s competitor is thereby a “competitor” of the complainant. The Panel disagrees with that concept as formulated, because that concept takes liberties with the text of paragraph 4(b)(iii). Moreover, such conduct almost invariably runs afoul of other “bad faith” indicia, namely, 4(b)(i) or, more often, 4(b)(iv).

Complainant also argues that Respondent has violated Policy paragraph 4(b)(iv). The Panel agrees, finding it more likely than not that Respondent derives some type of direct or indirect pecuniary gain for the hyperlinks to various commercial websites.

The Panel would also agree with Complainant’s contention that, since Respondent was found in “bad faith” in a number of prior decisions under the Policy, Respondent’s registration of the Domain Name, which is identical to Complainant’s unregistered mark, is a preclusive registration under paragraph 4(b)(ii), and that preclusive registration is the latest manifestation of a pattern of such conduct by Respondent.

In sum, the Panel concludes that Respondent’s registration and use of the Domain Name constitutes “bad faith” within the meaning of Policy, paragraph 4(a)(iii).

7. Decision

For all the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the Domain Name <albertamotorassociation.com> be transferred to the first Complainant, Alberta Motor Association.

Robert A. Badgley
Sole Panelist

Dated: February 11, 2005