WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
American Management Association International v. Mode L
Case No. D2007-0418
1. The Parties
The Complainant is American Management Association International, New York, New York, United States of America, represented by King & Spalding, United States of America.
The Respondent is Mode L, Geneva, Switzerland.
2. The Domain Name and Registrar
The disputed domain name is registered with eNom, Inc (eNom).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March�16, 2007. On March�20,�2007, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On March�20,�2007, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing contact details. 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 the Respondent of the Complaint, and the proceedings commenced on April�2,�2007. In accordance with the Rules, paragraph 5(a), the due date for Response was April�22,�2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April�25,�2007.
The Center appointed Hariram Jayaram as the sole panelist in this matter on May�4,�2007. 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 Complainant is a corporation existing under the laws of the State of New York and has a principal place of business in New York, United States of America. It operates the website “”. The Complainant has United States of America and Community Trade Mark registrations for the mark AMERICAN MANAGEMENT ASSOCIATION.
The Respondent is the registrant of the disputed domain name .
5. Parties’ Contentions
A. Complainant
The Complainant made the following allegations:
The Complainant has rights in the trademark AMERICAN MANAGEMENT ASSOCIATION and the disputed domain name of the Respondent is identical or confusingly similar to it.
The Complainant is the owner of a trademark and a service mark registration for the mark AMERICAN MANAGEMENT ASSOCIATION in the United States of America. The following are the registrations for the mark AMERICAN MANAGEMENT ASSOCIATION owned by the Complainant in the United States of America:
Mark
Reg. No
Issued
Goods/Services
AMERICAN MANAGEMENT ASSOCIATION
2,069,326
June�10,�1997
Educational services, namely, providing courses and seminars in the field of management education.
AMA AMERICAN MANAGEMENT ASSOCIATION
2,948,665
May�10,�2005
Educational books, printed informational materials in the form of brochures, pamphlets and catalogs, seminar programme materials: namely course outlines and notebooks containing instructional programmes, question and answer sheets and teaching and training materials, all for use in the field of business management.
The Complainant’s right to use the AMERICAN MANAGEMENT ASSOCIATION mark registered with the United States Patent and Trademark Office under Reg. No. 2,069,326 has become incontestable by operation of law pursuant to 15 U.S.C �� 1065 and 1115, and the certificate of registration constitutes “conclusive evidence” of “the validity of the registered mark and of the registration of the mark, of the registrant’s ownership of the mark, and of the registrant’s exclusive right to use the registered mark in commerce on or in connection with the goods or services specified in the registration”. The Complainant also owns registrations for the AMERICAN MANAGEMENT ASSOCIATION mark in several countries around the world, including Community Trademark Reg. No. 2969111 for AMA AMERICAN MANAGEMENT ASSOCIATION and Design.
The Complainant has accrued trademark rights by virtue of its long and continuous use of the AMERICAN MANAGEMENT ASSOCIATION mark. It was founded in 1923, and first began using the mark AMERICAN MANAGEMENT ASSOCIATION as early as 1923. It is a leading provider of educational services and printed materials in the field of business management, offering seminars worldwide. It offers a range of unique seminars, workshops, conferences, customized corporate programmes, online learning, newsletters, journals and books. There are over 700,000 members and customers in the Americas, Europe and Asia.
As a result of the care and skill exercised by the Complainant in offering and furnishing its goods and services, the supervision and control exercised by Complainant over the nature and quality of the goods and services provided under its mark, and the advertising, sale, and public acceptance thereof, the AMERICAN MANAGEMENT ASSOCIATION mark has acquired outstanding fame and celebrity symbolizing substantial and material goodwill that exists throughout the world, including the United States of America. By virtue of Complainant’s long use, advertising, and significant sales, the AMERICAN MANAGEMENT ASSOCIATION mark has become well recognized and famous and represents goodwill of extraordinary value.
The Respondent has no rights or legitimate interest in the domain name. There is no evidence that the Respondent has used the domain name or was preparing to use it or a corresponding name in connection with the bona fide offering of goods or services. The Respondent has used the domain name to mislead and confuse the public. The Respondent’s utilization of the domain name is to divert the Complainant’s customers to competing commercial websites. This is not a bona fide offering of services. The Respondent is not known and has never been known by the domain name, nor has the registrant conducted business under the domain name. The fact that the domain name links to competitors’ and pornographic websites suggests that there is no reason for the registrant to use the domain name other than to divert and mislead consumers. The Respondent is seeking a “free ride” off the considerable goodwill associated with the Complainant’s mark. The use of a domain name incorporating a trademark of a third party, with the intention to defraud or divert consumers, tarnishes the trademark and constitutes a commercial use. Long after the adoption and use of the mark AMERICAN MANAGEMENT ASSOCIATION by the Complainant, the Respondent registered the domain name. Such registration was effected purely for commercial gain by leveraging the Complainant’s trademark to deceive the public.
The use of the AMERICAN MANAGEMENT ASSOCIATION mark without the authorization or consent of the Complainant causes confusion and deceives the public and constitutes trademark infringement under the federal laws of the United States of America and other jurisdictions worldwide. The only intention of the Respondent in registering the domain name is to confuse and deceive the public into believing that the domain name is associated with the Complainant’s goods and services so as to divert potential consumers to websites offering competitive services and to pornographic websites. The domain name has been used to divert Internet users seeking the Complainant’s website to the Respondent’s website offering links to business educational services which compete with the Complainant’s educational services and is likely generating click-through revenue by intentionally misleading consumers. The domain name links to competitors such as Leadership IQ and the Wharton Schools’s Executive Education, both of which offer courses in business management, which directly compete with the services of the Complainant. The use of a domain name which is confusingly similar or identical to a trademark or service mark, where the domain name resolves on links to sexually explicit websites constitutes bad faith registration and use, by attracting for commercial gain users to a website by creating a likelihood of confusion as to sponsorship or affiliation. The strength of the Complainant’s AMERICAN MANAGEMENT ASSOCIATION mark coupled with the absence of any plausible actual or contemplated active use of the domain name that would be legitimate further support the conclusion that the Respondent is acting in bad faith. The Respondent’s registration of the domain name is just one example of the Respondent’s pattern of such infringing registrations. Respondent has registered more than 4,000 domain names and many of these domain names registrations include well known trademarks or third parties, such as , , , , , , , , and . The apparent stockpiling of 4,000 domain names is evidence of bad faith.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements to obtain an order that a domain name should be 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; and
(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.
A. Identical or Confusingly Similar
AMERICAN MANAGEMENT ASSOCIATION is the trademark of the Complainant acquired by registration. There is long and continued use of the trademark by the Complainant. The domain name in dispute is . The second level domain name (SLD) is an exact copy of the Complainant’s trademark. The addition of the generic top level domain (gTLD) .com may well be disregarded, making the disputed domain name identical or confusingly similar to the trademark of the Complainant.
Therefore, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The registrant of the domain name is Mode L. It cannot be said to be commonly known by the domain name. There is no use or preparation to use the domain name for a bona fide offering of goods and services. The domain name links to the websites of competitors as well as to pornographic websites. The intention is clear – to confuse, mislead and divert the Complainant’s customers to sites not those of the Complainant. There is no iota of evidence to show that the Respondent has rights or legitimate interest in the domain name.
The Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
What is evident is that there is bad faith on the part of the Respondent in registering the domain name. The domain name links to the websites of the competitors of the Complainant. It also links to pornographic sites. The Respondent in utilizing the domain name in such a manner cannot be said to be acting in good faith. The Respondent has a long list of domain names registered in its name. Its stockpile of 4,000 domain names with well-known trademarks as the essential feature merely goes to confirm the bad faith of the registrant.
The Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Hariram Jayaram
Sole Panelist
Date: May�18,�2007
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