Complainant is The Institute of Electrical and Electronics Engineers, Incorporated of New Jersey, United States of America (herein “United States”), represented by Dorsey & Whitney, LLP, United States.
Respondent is Domain Admin / Ilya Aleskerov of Nobby Beach, Queensland, Astralia and Krasnodar, Russian Federation, respectively. 2. The Domain Name and Registrar
The disputed domain name is registered with DomainContext, Inc. 3. Procedural History
Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 10, 2012. On the same date, the Center transmitted by email to DomainContext, Inc a request for registrar verification in connection with the disputed domain name. On February 14, 2012, DomainContext, Inc transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on February 16, 2012 providing the registrant and contact information disclosed by the Registrar and inviting Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on February 21, 2012.
On February 20, 2012, the Center received two email communications from Respondent requesting information about the proceeding. The Center replied on February 21, 2012.
The Center verified that the Complaint together with the amended Complaint] satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 February 22, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 13, 2012. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 14, 2012.
The Center appointed Debrett G. Lyons as the sole panelist in this matter on March 21, 2012. 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 non-contested facts relevant to the Panel’s findings in these Administrative Proceedings are that Complainant (The Institute of Electrical and Electronics Engineers, Incorporated, also known as IEEE) is the world’s largest technical society, with more than 400,000 members with expertise in technical areas ranging from computer engineering, biomedical technology and telecommunications to electric power, aerospace and consumer electronics.
Complainant has registered the letters “ieee” as a trade mark in a number of jurisdictions1 and has used the IEEE trade mark since 1963. Complainant’s trade mark registrations predate the date of registration of the disputed domain name, that is, July 12, 2009.
Complainant serves its members through 38 technical societies which function as operational units, each focused on a sub-discipline of electrical and electronics engineering. The so-called “Aerospace and Electronics Systems Society” (one of the IEEE technical societies) uses the initials “aess” and has been operational and using the trade mark AESS since 1973. At present, it has over 5,000 members in countries around the world and an annual budget of more than USD 2.5 million.
On May 10, 2007, Complainant registered the domain name and has operated a website connected to that domain name on which both the IEEE and AESS trade marks are prominently displayed.
As a result of Complainant’s long and prominent use of its IEEE and AESS trade marks for and in connection with its products and services, the IEEE and AESS trade marks have acquired worldwide recognition as identifying exclusively the products and services of Complainant. Complainant’s IEEE and AESS trade marks are well-known and enjoy a worldwide reputation and renown among aerospace engineers and others interested in aerospace and electronic systems. 5. Parties’ Contentions A. Complainant
Complainant asserts trade mark rights in IEEE and AESS, and alleges that the disputed domain name is identical and confusingly similar to the trade marks.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered and used the disputed domain name in bad faith.
In particular, Complainant argues that the disputed domain name “is identical and confusingly similar to Complainant’s IEEE and AESS marks, particularly because Complainant frequently uses the two marks together, as in the domain name and the site attached to it.”
Complainant asserts that Respondent cannot demonstrate that it has any rights or legitimate interests in the Disputed domain name because; (i) Complainant has not authorized Respondent to use either trade marks; (ii) Respondent has not made 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; (iii) Respondent has not been commonly known as “ieee” or “aess”; and (iv) Respondent is not making a legitimate noncommercial or fair use of the disputed domain name without intent (1) for commercial gain to divert consumers misleadingly or (2) to tarnish the trade mark at issue.
Complainant provides evidence that the disputed domain name resolves to a website which appears to be a consumer electronics blog. However the blogs are senseless and the website carries links to third party websites promoting, amongst other goods and services, dating services and growth hormones.
Finally, Complaint alleges that Respondent registered the disputed domain name “without any bona fide basis for such registration in an attempt to capitalize unfairly on the goodwill of Complainant’s well-known IEEE and AESS marks.” Complainant further asserts that Respondent had at least constructive notice of Complainant’s right in the IEEE trade mark before registering the disputed domain name, given Complainant’s registrations for the trade mark. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry, a threshold investigation into whether a complainant has rights in a trade mark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trade mark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trade mark rights. It is accepted that a trade mark registered with a national authority is prima facie evidence of trade mark rights for the purposes of the Policy2 and in this case, Complainant has provided evidence of its various trade mark registrations for IEEE.
Panel is accordingly satisfied that Complainant has trade mark rights in IEEE. Whether Complainant has done enough to show common law rights in AESS is another question, but one that need to be entertained by this Panel since in its determination once the non-distinctive gTLD “.org” is subtracted from the disputed domain name3, the term “aess-ieee” is confusingly similar to the trade mark IEEE.
In the Panel’s view, Complainant has accordingly satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the disputed domain name, even if you have acquired no trade mark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Complainant needs only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests4.
The publicly available WhoIs information identifies Respondent as Ilya Aleskerov and so there is no prima facie evidence that Respondent might be commonly known by the disputed domain name. There is no evidence that Respondent has any trade mark rights in the disputed domain name. Complainant has not authorized Respondent to use the trade mark.
Respondent has not provided any evidence that it used the disputed domain name in connection with a bona fide offering of goods or services prior to notice of the dispute. Indeed, contrary evidence provided by Complainant show that Respondent is not making any legitimate use of the disputed domain name and is misleadingly diverting Internet users.
The Panel finds that Complainant has established a prima facie case and so the onus shifts to Respondent to establish a right or legitimate interest in the disputed domain name. By failing to submit a Response, Respondent has not displaced the onus which fell upon it to show a right or legitimate interest and so Panel finds that Respondent has no rights or legitimate interests in the disputed domain name and therefore Complainant has satisfied the second element of the Policy. C. Registered and Used in Bad Faith
Complainant must prove on the balance of probabilities both that the disputed domain name was registered and that it is being used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
“(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trade mark 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) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) 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 the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.”
Complainant does not specifically rely on any one of those set circumstances but instead alleges that the disputed domain name was registered in bad faith and subsequently used in bad faith. Complainant relies on a largely discredited argument that Respondent was on constructive notice of Complainant’s trade mark rights by reason of the registration of IEEE trade mark. Panel finds it more appropriate to analyse the matter on the basis of actual knowledge and is prepared to draw the inference that it is more likely than not that Respondent was aware of Complainant and targeted its trade mark. Panel finds registration in bad faith.
Complainant provides evidence that the disputed domain name resolves to a website which has the superficial appearance of a consumer electronics blog but on closer inspection it is shown that the blogs are meaningless jibberish. Moreover, the website carries links to third party sites promoting dating services and growth hormones and other miscellaneous goods and services. Panel finds that this is not use in good faith and that it is more likely than not an attempt by Respondent to garner Internet traffic to the website by causing confusion with the object of commercial gain.
Panel finds both registration and use in bad faith and so Complainant has satisfied the third and final element of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, , be transferred to Complainant.
Debrett G. Lyons
Sole Panelist
Dated: April 1, 2012
1 By way of example, Complainant is the owner of the Australian Trade Mark Registration No. 757631, registered from March 19, 1998; United States Registration Nos. 1,770,511, dated May 11, 1993; Registration No. 2,862,848, dated July 13, 2004; and Registration No. 3,666,752, dated August 11, 2009; Community Trademark Registration No. 778662, dated March 17, 1998.
2 See State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Nat. Arb. Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”); see also Mothers Against Drunk Driving v. phix, FA 174052 (Nat. Arb. Forum Sept. 25, 2003) (finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy paragraph 4(a)(i)).
3 See Rollerblade, Inc. v.Chris McCrady,WIPO Case No. D2000-0429 (June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also The Forward Association, Inc., v. Enterprises Unlimited, NAF Claim No. FA95491 (“[N]either the beginning of the URL (http://www.), nor the TLD (.com) have any source indicating significance. Those designations are merely devices that every Internet site provider must use as part of its address”).
4 See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006).
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