WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The American Kennel Club Inc. v. Aaron Clayton
Case No. D2007-0543
1. The Parties
Complainant is The American Kennel Club Inc., New York, New York, United States of America, represented by McCarter & English, LLP, United States of America.
Respondent is Aaron Clayton, c/o Network Solutions LLC, Herndon, Virginia, United States of America, and Lexington, Massachusetts, United States of America.
2. The Domain Name and Registrar
The disputed domain name (the Domain Name”) is registered with Network Solutions, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 11, 2007. On April 12, 2007, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On April 12, 2007, Network Solutions, LLC 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 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 May 3, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was May 23, 2007. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 25, 2007.
The Center appointed John R. Keys, Jr. as the sole panelist in this matter on June 14, 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
Complainant owns a service mark registration on the Principal Register of the United States of America for AKC in several international classes in conjunction with services related to the breeding and registration of purebred dogs. The United States Patent and Trademark Office (USPTO) registered this mark on December 7, 2004.
Complainant also owns the service mark A.K.C. AMERICAN KENNEL CLUB, INC., No. 882,266, registered December 9, 1969, for association services related to purebred dogs, and the trademark A-K-C AMERICAN KENNEL CLUB, INC., No. 881,308, registered November 25, 1969, in connection with publications related to dogs.
5. Parties’ Contentions
A. Complainant
Complainant contends that the American Kennel Club (AKC) operates the world’s largest registry of purebred dogs and is the leading organization devoted to the study, breeding, care and exhibition of purebred dogs. The AKC was founded in 1884 and has used the service mark AKC in relation to its dog-related services continuously since 1909.
Complainant contends that its AKC mark is incontestable and that its registration serves as conclusive evidence of the validity of the mark in connection with the study, breeding, care and exhibition of purebred dogs.
Complainant contends also that it owns a number of domain names incorporating its AKC mark, including the following: , , , , , , , , , and .
Complainant contends that Respondent’s domain name is confusingly similar to Complainant’s AKC mark, incorporating Complainant’s mark in its entirety and adding to it a common word, “dogs”, which relates to the services Complainant provides.
Complainant further contends that Respondent has no rights or legitimate interests in respect of the Domain Name. There is no evidence of Respondent’s use of, or demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods or services. Respondent has never been known by the name “AKC” or the Domain Name. Complainant never licensed or otherwise permitted Respondent to use its mark in the Domain Name. Respondent, moreover, is not making a legitimate non-commercial or fair use of the Domain name. Rather, Respondent has attempted to profit from his unauthorized registration and use of the domain name.
Finally, Complainant contends that Respondent registered and is using the Domain Name in bad faith. Respondent has attempted to use the Domain Name for his own financial gain. The Domain Name resolves to a website the only purpose of which is to offer the Domain Name for sale, and Complainant contends that Respondent registered the Domain Name for the sole purpose of selling it. Complainant asserts that that it can be inferred from the circumstances that Respondent intended to sell the Domain Name to Complainant or one of its competitors at a price exceeding Respondent’s registration costs.
Complainant contends that Respondent has created actual confusion among professionals in the dog industry as to the affiliation between the Domain Name and Complainant, as evidenced by a number of websites that mistakenly link Complainant with respondent’s Domain Name.
Complainant contends that the Domain Name is calculated to suggest falsely to Internet users that Complainant is affiliated with the Domain Name website. Respondent’s use of a Domain Name so obviously connected with Complainant where the registrant in fact has no connection to Complainant suggests “opportunistic bad faith”.
B. Respondent
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Because Respondent did not respond to the Complaint, the Panel first considers whether Respondent has been given adequate notice of the proceeding. The evidence indicates that the Center sent the Complaint in electronic form to the e-mail addresses required under paragraph 2(a)(ii) of the Rules and in hard copy by courier service to the addresses provided in Respondent’s registration information. The Panel concludes that the Center discharged its responsibility under the Rules to notify Respondent of the Complaint and the administrative proceeding.
Where respondent does not respond to the complaint, the panel must decide the dispute based upon the complaint. Rules, paragraphs 5(e) and 14(a). The panel is to decide the complaint on the basis of the statements and documents submitted, in accordance with the Policy, the Rules and any principles of law the panel deems applicable. Rules, paragraph 15(a). Under paragraph 14(b) of the Rules, Respondent’s failure to answer entitles the Panel to “draw such inferences therefrom as it considers appropriate”.
Under paragraph 4(a) of the Policy, Complainant must prove each of the following three elements of its case in order to obtain the requested relief:
(i) Respondent’s 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) Respondent’s Domain Name has been registered and is being used in bad faith.
The Panel considers each element in order.
A. Identical or Confusingly Similar
Complainant must first establish that the Domain Name is identical or confusingly similar to Complainant’s service mark.
The Panel finds that Complainant possesses well-established rights in the service mark AKC, owning a registration on the Principal Register of the United States of America since December 2004 with claimed first use in commerce in 1909. Complainant also owns two marks registered in 1969 which feature prominently the widely-known AKC acronym and mark.
The Panel finds that the Domain Name, , is confusingly similar to the AKC mark in which the Complainant has rights. “The intentional registration of a domain name knowing that the second level domain is another company’s valuable trademark weighs in favor of likelihood of confusion.” Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036, 1059 (9th Cir. 1999). The Domain Name incorporates Complainant’s AKC mark in its entirety. See SENSIS Pty Ltd., Research Resources Pty Ltd. v. Kevin Goodall, WIPO Case No. D2006-0793. There is a strong inference that Respondent’s use of Complainant’s AKC mark in the Domain Name was in fact intentional. See Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Respondent may be attributed with knowledge of Complainant’s 90 plus years of established and continuous use of the AKC marks and trade and service mark registrations using the AKC acronym.
The Domain Name adds the word “dogs” to Complainant’s AKC service mark. This addition does not negate confusion between the Domain Name and Complainant’s service mark. See Verio, Inc. v. Sunshinehh, WIPO Case No. D2003-0255. “Generally, a user of a mark may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or non-distinctive matter to it.” 3 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition � 23:50 (4th ed. 2005). See General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087; Eastman Chemical Co. v. Manila Industries, Inc., NAF Case No. FA 450806 (2005); Pioneer Hi-Bred International, Inc. v. Manila Industries., Inc., NAF Case No. FA 444468 (2005). The principle that likelihood of confusing similarity cannot be avoided by the addition of descriptive content has been found to include the addition of entire words to a famous trademark. See The Coca-Cola Company v. Gamlebyen Invest AS, WIPO Case No. D2000-1677 (“Coca Cola” and “cocacoladrinks” held confusingly similar); America Online, Inc. v. Anson Chan,WIPO Case No. D2001-0004, citing Sporty’s Farm LLC. v. Sportsman’s Market. Inc., 202 F. 3d 489, 497-98 (2d. Cir. 2000); Yahoo! Inc. v. CPIC NET and Syed Hussain, WIPO Case No. D2001-0195; America Online, Inc., v. Yeteck Communication, Inc., WIPO Case No. D2001-0055.
In this case, the addition of the word “dogs” to Complainant’s AKC mark, where there exists such a strong connection between the word and the services AKC provides, tends to increase rather than diminish the confusing similarity between the Domain Name and Complainant’s service mark. See Media West-GSI, Inc. v. Cupcake City, WIPO Case No. D2001-0235 (addition of “sports” and “weather” to name of newspaper caused confusion); Capital Broadcasting Company, Inc. v. Private, WIPO Case No. D2000-1609 (addition of “weather” heightened confusion with television call letter mark).
In addition, an Internet user searching for Complainant’s website or services would likely be confused by Respondent’s Domain Name to think that he/she had reached a website sponsored by or affiliated with Complainant when that is in fact untrue. The Panel concludes that Respondent’s Domain Name is confusingly similar to a service mark in which Complainant possesses legal rights.
B. Rights or Legitimate Interests
Complainant must establish that Respondent has no rights or legitimate interests in the Domain Name. See paragraph 4(a)(ii) of the Policy. Once a complainant has made a prima facie case that a respondent lacks rights or legitimate interests, the burden shifts to Respondent to come forward with evidence demonstrating its rights and legitimate interests.
The evidence of record is sufficient for the Panel to infer that Respondent is not using the Domain Name in connection with a bona fide offering of goods or services. See paragraph 4(c)(i) of the Policy. It does not appear that Respondent has in fact used the Domain Name in connection with any offering of goods or service whatsoever. Respondent’s website contains only the offer to sell the Domain Name. Under the circumstances, this is not a bona fide offering of a service. Given Complainant’s long continuous usage and several registrations of the AKC mark, the Panel considers that Respondent in all likelihood knew of Complainant’s service mark before registering the Domain Name and consciously chose to use the mark in the Domain Name in order to create or enhance its sale value. See Pfizer Inc. v. NA, WIPO Case No. D2005-0072. The unlawful use of another’s trademark cannot be considered bona fide, i.e. in good faith, with respect to an offering of goods or services. AltaVista Company v. Mr. James A. Maggs, NAF Case No. FA 0095545 (2000).
There is no evidence that Respondent is commonly known by the Domain Name, that Complainant authorized or licensed Respondent to use Complainant’s service mark in the Domain Name or that Respondent is making a legitimate noncommercial or fair use of the Domain Name. See paragraphs 4(c)(ii) and (iii) of the Policy.
Complainant has established a prima facie case that Respondent possesses no rights or legitimate interests in the Domain Name, and Respondent, in default, has not come forward with evidence to demonstrate that he does. The Panel therefore concludes that Respondent does not have rights to or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
Finally, Complainant must show that Respondent both registered and is using the Domain Name in bad faith. See paragraph 4(a)(iii) of the Policy.
There is substantial authority that registration of a domain name that is confusingly similar to a famous trademark by any entity that has no relationship to that mark is itself sufficient evidence of bad faith registration and use. Sporty’s Farm LLC v. Sportsman’s Market, Inc., 202 F.3d 489, 498 (2d Cir. 2000); Pfizer Inc. v. NA, WIPO Case No. D2005-0072; AT&T Corp. v. John Zuccarini d/b/a Music Wave and the Domain Name RaveClub Berlin, WIPO Case No. D2002-0440; America Online, Inc. v. Anson Chan, WIPO Case No. D2001-0004; Veuve Clicquot Ponsardin, Maison Fond�e en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (use of a name connected with such a well-known product by someone with no connection with the product suggests opportunistic bad faith); Research in Motion Limited v. Dustin Picov, WIPO Case No. D2001-0492. Based upon Complainant’s long use of its service mark (over 90 years), the fact that the service mark is a well known acronym for Complainant’s full name and is used in at least two earlier registered trade and service marks, and Respondent’s use in the Domain Name of an additional term, “dogs”, clearly related to Complainant’s services, there is a reasonable inference that Respondent (or whoever first registered the Domain Name), knew of Complainant’s service mark when he used it in registering the Domain Name. See KPMG International v. Manila Industries, Inc., WIPO Case No. D2006-0597.
There are potentially complicating factors appearing on the record that require discussion. The evidence indicates that the Domain Name was first registered in 1997, prior to the 2004 registration of Complainant’s AKC service mark, by an entity other than Respondent and that Respondent purchased the Domain Name sometime after the original registration, possibly prior to 2001.
The Panel concludes that these facts, even if true, do not negate the inference of bad faith registration of the Domain Name. Whoever first registered the domain name in 1997, would almost certainly have had to have done so with constructive, if not actual, knowledge of Complainant’s long-term, widely-known use of the AKC acronym, its 1969 registrations of two service marks featuring the AKC acronym, and the strong connection between the AKC mark and services related to breeding, registering and exhibiting dogs. Some prior panels have in certain limited cases imputed original bad faith at the time of registration to a subsequent transferee (for example, where there is an agency relationship between the two), while others have in different cases found a later acquisition of a domain name to be equivalent to registration for purposes of the Policy. DHL Operations B.V. v. Karel Salovsky, WIPO Case No. D2006-0520; Societe Air France v. Vladimir Federov, WIPO Case No. D2003-0639; Dixons Group PLC v. Mr. Abu Abdullah, WIPO Case No. D2000-1406. Under either approach, the issue is one of whether Respondent’s subsequent acquisition of the Domain Name was in bad faith. Here, at the time of acquisition, Respondent would have had the same knowledge of Complainant’s rights in the AKC mark that would have given rise to the inference of bad faith at the time of original registration. There is a reasonable inference of bad faith by the Respondent at the time he acquired the Domain Name. Respondent has not come forward with contrary evidence that his purchase was in fact in good faith, nor does it appear from the record that he would have any basis to do so.
Finally, the Policy provides that one of the bases for finding bad faith registration and use of a domain name is “Circumstances indicating that the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the owner of the trademark or service mark (normally the Complainant) or to a competitor of that Complainant, for valuable consideration in excess of Respondent’s out-of-pocket costs directly related to the domain name”. See paragraph 4(b)(i) of the Policy. Here, Respondent’s only purpose in acquiring the Domain Name appears to have been to sell it. On the evidence, the only thing the Domain Name does or appears to have ever done is resolve to a website offering the Domain Name for sale. See Bayerische Motoren Werke AG v. (This Domain id For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787. Inasmuch as the Domain Name is so clearly connected to Complainant and its services related to purebred dogs, it is difficult to conceive of a legitimate purchaser other than Complainant, and a reasonable inference is that Respondent intended to sell the Domain Name to Complainant See Bayerische Motoren Werke AG v. (This Domain id For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787. There is also a reasonable inference that Respondent would not intend to go to the trouble of purchasing the Domain Name, maintaining the registration, and offering it for sale unless he intended to do so for a price in excess of his costs. See Bayerische Motoren Werke AG v. (This Domain id For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787.
The Panel thus concludes that Respondent both registered and is using the Domain Name in bad faith and that Complainant therefore has established the third and final element of its case.
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.
John R. Keys, Jr.
Sole Panelist
Dated: June 28, 2007
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