WIPO Domain Name Decision D2007-1890 for aabb.net

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

American Association of Blood Banks v. AABB.NET, Boston Paternity

Case No. D2007-1890

 

1. The Parties

The Complainant is American Association of Blood Banks, Bethesda Maryland, United States of America, represented by Arnold & Porter, United States of America.

The Respondent is AABB.NET, Boston Paternity, United States of America, represented by Lambert & Associates, United States of America.

 

2. The Domain Name and Registrar

The disputed 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 December 18, 2007. On December 19, 2007, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On December 21, 2007, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on December 28, 2007. The Center verified that the Complaint together with the amendment to 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 January 3, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was January 23, 2008. The Response was filed with the Center on January 23, 2008.

The Center appointed Dennis A. Foster as the sole panelist in this matter on February 7, 2008. 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.

Supplemental Complaints were received by the Center on February 4 and February 15, 2008. There is no provision under the Rules for such a filing except when requested by the Panel (paragraph 12 of the Rules), and the Panel finds it unnecessary to consider these supplements to the Complaint in reaching its decision.

 

4. Factual Background

The Complainant, the American Association of Blood Banks, is a United States of America organization that was founded in 1947 and has been known as AABB for many years. The Complainant offers services and sets standards relating to the medical profession, emphasizing procedures relating to blood, including the testing of blood for DNA identification. The Complainant holds a United States Patent and Trademark Office (the “USPTO”) registration for the trademark, AABB (Registration No. 3,203,260; January 30, 2007).

The Respondent registered the disputed domain name, , on February 4, 2007, after acquiring it from the Arizona Association of Business Brokers. The Respondent is a United States of America company that offers immigration DNA testing services through its website located at the disputed domain name. The Respondent became an affiliate member of the Complainant’s organization before registering the disputed domain name.

 

5. Parties’ Contentions

A. Complainant

The Complainant, the American Association of Blood Banks, was founded in 1947 and has been known as AABB from nearly its inception. Since September 2004, the Complainant has formally done business as AABB. The Complainant’s membership is composed of almost 2,000 institutions, including hospital and community blood centers, transfusion and transplantation centers and laboratories, and 8,000 individuals in medical professions in the United States of America.

The Complainant develops standards, produces publications and offers products, services and technical assistance on a worldwide basis. It is well known for standards connected with relationships and DNA blood testing.

The Complainant owns USPTO registrations for the trademark, AABB, in both standard and stylized forms. The Complainant has spent considerable sums of money in promoting and developing the marks, creating significant goodwill with respect to them.

The Complainant also owns the domain names, and , which provide the public with information about the goods and services offered by the Complainant.

The Respondent is using the disputed domain name, , for a website that promotes DNA testing services for immigration purposes. Those services appear to be related to the United States of America company, Boston Paternity (included as the Respondent), and are not endorsed or sponsored by the Complainant.

Boston Paternity became an affiliate member of the Complainant on January 24, 2005. The Complainant wrote a letter to Boston Paternity on August 7, 2006, requesting that it discontinue the use of the AABB logo on the website found at the domain name, .

From July 2007 through November 2007, the Complainant contacted Boston Paternity several times, asking that it discontinue the use of the aforementioned logo and that it transfer or discontinue use of the disputed domain name. Boston Paternity responded that it might alter the offending website, but would not transfer or stop using the disputed domain name. The disclaimer found on the Respondent’s website serves only to establish the Respondent’s knowledge of the Complainant’s trademark rights in AABB.

The disputed domain name, , is identical to the Complainant’s trademark, AABB.

The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent cannot satisfy any of the requirements of Policy paragraph 4(c) to demonstrate such rights or interests. The Respondent is not known by the name. The Respondent chose the disputed domain name to draw Internet users to its website by capitalizing illegitimately on the association between the Complainant’s trademark and DNA testing.

The domain name in dispute was registered and is being used in bad faith. The Respondent knew of the Complainant’s mark prior to registration of the name. The Respondent obtained ownership of the disputed domain name in September 2005 from the Arizona Association of Business Brokers even though the Complainant had used its mark in connection with DNA testing for many years and had applied to the USPTO for trademark registration of that mark.

The Respondent’s attempt to lure consumers to its website for commercial gain by use of the Complainant’s exact trademark is evidence of bad faith. Moreover, the Respondent’s deliberate concealment of its identity in registering the disputed domain name is further evidence of bad faith.

B. Respondent

As admitted by the Complainant, the Respondent owns the domain name, , at which the Respondent hosts a website offering various paternity and parentage testing services, including DNA testing. The Respondent legitimately obtained the disputed domain name for use in offering one of these services, namely immigration parentage DNA testing. The Complainant condoned such registration when it granted the Respondent accreditation as an associate member to perform such services.

Nothing in the Complainant’s USPTO trademark registration refers to immigration parentage DNA testing, so the Complainant cannot claim an exclusive right to those services with respect to its mark.

Since the services offered by the Complainant and Respondent differ, there is no – and an Examining Attorney should not find – confusing similarity between the Complainant’s trademark and the disputed domain name.

The Complainant has failed to meet its burden in showing that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant made no assertions relating to Policy paragraphs 4(c)(i) or (iii), contending only that paragraph 4(c)(ii) is inapplicable because the Respondent is not commonly known by a name corresponding to the domain name at issue.

The Respondent presently performs services in connection with the disputed domain name, demonstrating its legitimate interests in the name. Prior Policy decisions have recognized that two parties having similar domain names may co-exist if they offer differing goods or services. Furthermore, the letters, “aabb,” have clear connotations relating to blood types.

The Complainant has apparently renounced its claim to the name, American Association of Blood Banks, since that name does not appear on its website found at . As further evidence of this renouncement, the Complainant admits that as of September 2004 it has been doing business as “AABB.”

The Respondent purchased the disputed domain name in January 2007 for the purpose of blood testing, as compared with the Complainant, a quasi-governmental agency, that merely proposes standards, instructions and procedures. A similar situation exists where the USPTO, a governmental agency, owns the domain name, , and a private company owns the domain name, .

The Respondent is making fair use of the disputed domain name. By affixing a disclaimer to that effect on its website, the Respondent has taken pains not to mislead Internet users regarding its lack of affiliation with the Complainant.

The Respondent lacked knowledge of the Complainant’s trademark because the � symbol was absent with respect to the AABB logo found on the Complainant’s website at . Additionally, the Complainant’s trademarks were not registered until January 2007, and there is no basis for the Respondent’s constructive knowledge of them prior to that date. These facts do not support a finding of bad faith registration and use of the disputed domain name.

The Respondent registered the disputed domain name neither to sell it to the Complainant at excessive cost, nor to prevent the Complainant from reflecting its mark in a corresponding domain name. Moreover, the Respondent has not attempted to disrupt the Complainant’s business in registering or using said name. Finally, the Respondent is not relying on confusion to mislead consumers for the Respondent’s commercial gain.

 

6. Discussion and Findings

Pursuant to paragraphs 4(a)(i) – (iii) of the Policy, the Complainant is provided with the opportunity in this administrative proceeding to obtain a transfer of the disputed domain name, , if the Complainant can establish the following:

- The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

- The Respondent has no rights or legitimate interest in respect of the disputed domain name; and

- The disputed domain name was registered and is being used by the Respondent in bad faith.

A. Identical or Confusingly Similar

Having placed in the record concrete evidence of its trademark registration with the USPTO, the Complainant has persuaded the Panel that the Complainant has valid rights in its mark, AABB, for the purposes of paragraph 4(a)(i) of the Policy. See, for example, Innomed Technologies, Inc. v. DRP Services, NAF Case No. FA221171 (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant’s rights in the mark.”); and The Chip Merchant, Inc. v. Blue Star Electronics, d/b/a Memory World,WIPO Case No. D2000-0474.

The disputed domain name, , incorporates the Complainant’s full trademark, adding merely the gTLD, “.net”, at the end. Thus, the Panel considers the name to be identical to the mark. See Miller Brewing Company v. Virtual Agents,WIPO Case No. D2001-0652 (“The addition of the suffix “.com” or “.net” is an irrelevant distinction which does not change the likelihood for confusion”); and Snow Fun, Inc. v. James O’Connor, NAF Case No. FA96578.

The Respondent contends that, for the Complainant to succeed as to paragraph 4(a)(i), it is necessary to compare the goods or services provided by the Complainant versus the Respondent to determine whether confusion between the competing mark and domain name actually exists. This form of analysis might be appropriate in establishing trademarks, but has no bearing under the first element of this UDRP proceeding, where the Panel may simply compare visually the disputed domain name to the Complainant’s trademark in discerning identity or similarity.

In line with the above, the Panel finds that the Complainant has proved that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Respondent points out correctly that paragraph 4(a)(ii) of the Policy places upon the Complainant the burden of showing that the Respondent lacks rights or legitimate interests in the disputed domain name. However, because that burden requires proof of a negative proposition where the Respondent possesses access to most of the relevant information, the Complainant need only sustain a prima facie case in its favor before the onus descends upon the Respondent to go forward with evidence clarifying its rights or legitimate interests in the name. See Compagnie Generale des Matieres Nucleaires v. Greenpeace International,WIPO Case No. D2001-0376 (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this subparagraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted onto the shoulders of Respondent.”); and AOL LLC v. Gerberg, NAF Case No. FA780200.

In this case the Complainant has made its prima facie case by demonstrating its ownership of the trademark, AABB, and asserting that the Respondent was not authorized to use it.

In its Response, the Respondent contends wrongly that the Complainant must provide evidence that the Respondent does not satisfy the criteria of Policy paragraphs 4(c)(i) and (iii) in order to prevail per paragraph 4(a)(ii). Rather, once the prima facie case is established, it is the Respondent that must offer evidence to satisfy one of the paragraph 4(c) criteria, or present some other rationale, to prevail regarding paragraph 4(a)(ii).

With respect to the criteria listed in paragraph 4(c), the Respondent concedes tacitly that it cannot use paragraph 4(c)(ii) to bolster its case, as it fails to contend that it, or a business owned by it, is commonly known by the disputed domain name. This contention is absent even though that name is registered nominally to an entity entitled “ABB.NET.” As a result, the Panel is left to conclude that said entity is actually a nonentity, if not a deliberate ruse employed to deceive others as to the real ownership of the disputed domain name.

To satisfy paragraph 4(c)(iii), the Respondent claims to be making fair use of the disputed domain name. However, the Respondent presents no evidence to substantiate that claim, asserting instead that it uses the name to supply Internet users with immigration parentage DNA testing services. The Panel finds that such use fails to constitute “noncommercial or fair use” of the disputed domain name as those terms are understood pursuant to paragraph 4(c)(iii).

The Respondent also states that its use of the disputed domain name as described above satisfies the requirements of paragraph 4(c)(i), i.e., “a bona fide offering of goods and services” before knowledge of the present dispute. Moreover, the Respondent argues that those services are markedly different than those offered by the Complainant. The Panel, however, concludes that the distinction between the services offered by the Respondent and Complainant appears to be slight if it exists at all. The Complainant operates, among other things, in the field of DNA blood testing standards. That field is directly related to immigration parentage DNA testing, which naturally involves the examination of blood for DNA characteristics.

The Panel is aware of many prior Policy decision that have held that use of a disputed domain name for marketing of products or services similar to those offered by the holder of a trademark identical or confusingly similar to the name is not “a bona fide offering of goods or services” per paragraph 4(c)(i). See, for example, Reed Elsevier Inc. and Reed Elsevier Properties Inc. v. Carlos M. Alvarez d/b/a IT Lexis, NAF Case No. FA98249 (“Respondent is using the [disputed] domain name to promote its services within the same general field as Complainant. Using an infringing domain name to offer competing goods or services does not constitute a bona fide offering of goods or services within the meaning of Policy [paragraph] 4(c)(i).”); and Option One Mortgage Corporation v. Option One Lending,WIPO Case No. D2004-1052. The Panel agrees with the reasoning found in those decisions.

The Respondent contends that the Complainant condoned the Respondent’s use of the disputed domain name for immigration DNA testing services when the Complainant accepted the Respondent’s membership in the Complainant’s association. The Panel is not persuaded by this contention because it does not believe that mere affiliate membership, without an express authorization, confers upon that member the right to use the trademark of the organization granting affiliation. See American Border Collie Association, Inc. v. Richard Swafford,WIPO Case No. D2006-0113.

The Respondent also contends that the joined letters “aabb” have connotations relating to blood. Presumably, the Respondent is requesting that the Panel consider “aabb” to be a generic term and to invoke the rationale of prior UDRP cases that have found respondents to possess rights or legitimate interests in disputed domain names comprised of such terms. However, while the Panel recognizes that “a”, “b” and “ab” are blood types, the Panel finds it an unsustainable leap in logic to conclude that “aabb” is a generic term meaning blood or anything else.

Finally, the Respondent cites in its defense the circumstance that the domain name, , is owned by a governmental agency, while the name, , is owned by a private third party. Again, the Panel is unimpressed by this argument, as the exact nature of that circumstance (whether, for instance, the ownership of the latter domain name has ever been challenged) is not before the Panel for examination.

In view of the reasoning above, the Panel rules that the Complainant has successfully shown that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith because the Respondent had actual (and certainly constructive) knowledge of the Complainant’s trademark through application for membership as an affiliate of its organization, and because the Respondent was deceptive as to its identity in registration of the name. The Respondent counters that it had no knowledge of the trademark because the Complainant failed on its website to use the symbol, �, with the mark, and that the Respondent avoided Internet user confusion by including a disclaimer on its website disavowing the Complainant’s involvement with that site.

In reviewing the evidence before it, the Panel concludes that the Respondent, who was granted affiliate membership in Complainant’s organization before registration of the disputed domain name, was certainly aware of the Complainant’s use of the distinctive mark, AABB, in relation to blood DNA testing whether or not � appeared on the Complainant’s website. Furthermore, the Panel concludes that the Respondent was well aware that Internet users would likely confuse its use of with some sort of authorized affiliation or sponsorship by the Complainant of the Respondent’s blood testing services. Respondent’s use of a disclaimer does not measurably reduce the likelihood of confusion in this case, but rather reaffirms the Respondent’s knowledge of the Complainant’s rights and actually serves as evidence of the Respondent’s expectation that Internet users would infer (erroneously) a connection between the disputed domain name and the Complainant. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “M”,WIPO Case No. D2000-0084 (“…a disclaimer does nothing to dispel initial interest confusion that is inevitable from respondent’s actions.”); and The Napoleon Hill Foundation v. T,WIPO Case No. D2002-0228 (“The Respondent was aware of the Complainant’s rights and interests in the mark at the time of registration, as is evident from its use of a disclaimer.”).

Therefore, in line with the circumstance evidencing bad faith as set forth in paragraph 4(b)(iv), the Panel determines that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or service on that website. See Ameriquest Mortgage Company v. Phayze, Inc.,WIPO Case No. D2002-0861 (“…the Respondent is attracting traffic that he would otherwise not get for his website. This constitutes bad faith registration and use as defined in particular by paragraph 4(b)(iv) of the Policy.”); Identigene, Inc. v. Genetest Laboratories,WIPO Case No. D2000-1100; and Reed Elsevier Inc., supra.

Also, the Respondent’s apparent use of a deceptive identity in registration of the disputed domain name compounds the Panel’s belief that the Respondent has engaged in bad faith actions with respect to the name. See Countrywide Financial Corporation, Inc. and Countrywide Financial Corporation, Inc., Countrywide Home Loans, Inc. v. Marc bohleren,WIPO Case No. D2005-0248; and Banco Bilbao Vizcaya Argentaria, S. A. v. N/A,WIPO Case No. D2003-0996.

Furthermore, the Respondent’s acquisition of the disputed domain name from a third party, who may have had a legitimate claim to the name and put it to good faith use, does not mitigate the Respondent’s bad faith registration and use of that name. See Audio Visual Services Corporation v. SIA Netex Galaxy, NAF Case No. FA713767; and Webjet Marketing Pty Ltd v. Brad Norrish,WIPO Case No. D2005-1096 (“…the fact that the Respondent was not the first registrant of the domain name does not preclude a finding that the domain name was registered and is being used in bad faith.”).

Accordingly, the Panel finds that the Complainant has sustained its burden in proving that the Respondent registered and is using the disputed domain name in bad faith.

 

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.

Dennis A. Foster
Sole Panelist

Dated: February 21, 2008

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