Complainant is AARP of Washington, D.C., United States of America (“United States” or “U.S.”), represented by CSC Digital Brand Services AB, Sweden.
Respondent is Anthony Lauberth of Laguna Niguel, California, United States. 2. The Domain Names and Registrar
The disputed domain names and (the “Disputed Domain Names”) are registered with 1&1 Internet AG (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 26, 2017. On January 27, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On January 30, 2017, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing Respondent’s contact details.
The Center verified that the 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on January 31, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 20, 2017. The Response was filed with the Center on February 3, 2017, and confirmed by Respondent as its complete Response on February 18, 2017.
The Center appointed Douglas M. Isenberg as the sole panelist in this matter on February 27, 2017. 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 states that it “is a nonprofit, nonpartisan, social welfare organization that helps people turn their goals and dreams into real possibilities, strengthens communities and fights for the issues that matter most to families – such as health care, employment and income security, and protection from financial abuse”; that “[s]ince its inception in 1958, Complainant has grown and changed dramatically in response to societal changes, while remaining true to its founding principles: [t]o promote independence, dignity and purpose for older persons; [t]o enhance the quality of life for older persons; and [t]o encourage older people ‘To serve, not to be served’”; that it “maintains a membership of nearly 38 million, making it an organization with one of the largest memberships in the United States”; and that “[i]n 2015, Complainant had operating revenues of $1.5 billion (USD) and total assets of nearly $2.4 billion (USD).”
Complainant states, and provides evidence to support, that it is the owner of a number of trademark registrations for the mark AARP in the United States, Canada and the European Union, including U.S. Reg. No. 1,046,998 for use in connection with “insurance services-namely, contracting for plans of group health insurance in which its members may participate and administering such programs” (first used in commerce in October 1958; registered on August 24, 1976). These registrations are referred to hereafter as the “AARP Trademark.”
The Disputed Domain Name was created on April 5, 2007, and is being used in connection with a website offering pornographic content. The Disputed Domain Name was created on February 27, 2004, and is being used in connection with a website offering the domain name for sale.
According to copies of communications between the parties included in the Complaint, Complainant contacted Respondent about the Disputed Domain Name on November 3, 16, and 17, 2016; and Respondent responded on November 16 and 17, 2016. Among other things, Respondent wrote: “Your trademark is not being violated with our domain registration. You have no right to the domain and it is parked for our organizations future use. We have received these emails every year for about 11 years since registering.” And: “We have nothing to do with AARP. Have not used AARP trademark or represented we are any way associated with AARP. That is your companies [sic] assumption only. If you would like to purchase the domain I can offer it to your company for $5,000 we also have AARPR as well, and that is also offered at the same price.” 5. Parties’ Contentions A. Complainant
Complaint contends, in relevant part, as follows:
- The Disputed Domain Names are confusingly similar to the AARP Trademark because, inter alia, “[p]ast [p]anels have consistently held that a disputed domain name that consists merely of a complainant’s trademark and an additional term that closely relates to and describes that complainant’s business is confusingly similar to that complainant’s trademarks”; and “the added terms are specific to AARP’s business assets and designed to create confusion among potential visitors to .”
- Respondent has no rights or legitimate interests in respect of the Disputed Domain Names because, inter alia, “Respondent is not sponsored by or affiliated with Complainant in any way”; “the pertinent Whois information identifies the Registrant as ‘Anthony Lauberth,’ which does not resemble the Disputed Domain Names in any manner”; “use of a disputed domain name that is confusingly similar to a complainant’s trademarks to link to a website featuring pornographic or adult content evinces a lack of legitimate rights or interests”; and “Respondent has failed to make use of th[e] Disputed Domain Name’s website and has not demonstrated any attempt to make legitimate use of the domain name and website.”
- The Disputed Domain Names were registered and are being used in bad faith because, inter alia,“AARP is so closely linked and associated with Complainant that Respondent’s use of this mark, or any minor variation of it, strongly implies bad faith”; “a respondent’s use of a confusingly similar domain name to direct unsuspecting Internet users to adult content, as here, is evidence of bad faith registration and use of that domain name”; “passively holding a domain name can constitute a factor in finding bad faith registration and use”; “[t]he Disputed Domain Names can only be taken as intending to cause confusion among Internet users as to the source of the Disputed Domain Names”; “Respondent is currently offering to sell the Disputed Domain Names in the amount of 5,000 USD each, which constitutes bad faith under Section 4(b)(i) because Respondent has demonstrated an intent to sell, rent, or otherwise transfer the Disputed Domain Names for valuable consideration in excess of his out-of-pocket expenses”; and “on balance of the facts set forth above, it is more likely than not that the Respondent knew of and targeted Complainant’s trademark, and Respondent should be found to have registered and used the Disputed Domain Names in bad faith.” B. Respondent
Respondent contends, in full, as follows:
“This dispute is unfounded and should be denied at minimum for the following reasons.
1. AArp in our use stands for Animal Adventure Role Play and has no association to the AARP organization. The website we have been developing for over 15 years once live will clearly state that we are not related to this other organization.
2. When initially contacted by AARP we notified them they were welcome to make an offer for our domain name should they wish to purchase it as a sign of amicable compromise. We did not hear back from them.
3. We have had the domain name registered for nearly 13 years! The time has long passed for any reasonable dispute to be given regarding the use of this domain. We have taken years creating value to the domains once we complete and launch our game. Additionally, if it were important to their organizations business, being a multi Billion dollar organization, I’m sure they could have secured the domain for future use as we did for our online community.
4. AARP did not receive registration of the trademark AARP Rewards until 2005 a full year after we had already put the domains into use and they failed to trademark the full name which we own and have added value to. They do not hold trademarks for the name AARP Help at all. Again, neither domain infringe on the trademarks or business name of AARP.
Additionally, if they are not interested in purchasing or leasing the domain then any further contact regarding this domain will be received as harassment and civil remedies will be sought in the United States.
I apologize for their wasting everyone’s time as large corporations with large legal staffs often do. It is a shame they will spend more in time and fees pursuing this dispute than I would have been willing to sell the domains for previously.” 6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and (iii) the Disputed Domain Names have been registered and are being used in bad faith. Policy, paragraph 4(a). A. Identical or Confusingly Similar
Based upon the trademark registrations cited by Complainant, it is apparent that Complainant has rights in and to the AARP Trademark.
As to whether the Disputed Domain Names are identical or confusingly similar to the AARP Trademark, the relevant comparison to be made is with the second-level portion of the Disputed Domain Names only (i.e., “aarphelp” and “aarprewards”), as it is well established that the generic Top-Level Domain (“gTLD”) (i.e., “.com”) may generally be disregarded for this purpose. See the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2 (“[t]he applicable top-level suffix in the domain name (e.g., ‘.com’) would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark”).
Each of the Disputed Domain Names contains the AARP Trademark in its entirety, plus the word “help” or “rewards”. The inclusion of these additional words does nothing to alleviate any confusing similarity. See, e.g., Research in Motion Limited v. Input Inc, Domain Manager,WIPO Case No. D2011-2197 (“The additional word ‘help’ is an expression commonly used in the world to provide assistance” and “is solely descriptive” and “does not change the overall impression of the domain name as being dominated by the [complainant’s trademark] and does not serve to distinguish the disputed domain name from Complainant’s mark”); and The American Automobile Association, Inc. v. PSI,WIPO Case No. D2008-1931 (“Prior panels have recognized that confusing similarity is generally established for purposes of the Policy where the disputed domain name incorporates the complainant’s trademark in its entirety” and “[t]he additional term ‘auto rewards’, which calls to mind the Complainant’s business, does not dispel such confusing similarity, and in all likelihood heightens the confusion”).
Accordingly, the Panel finds that Complainant has proven the first element of the Policy. B. Rights or Legitimate Interests
Complainant has argued that Respondent has no rights or legitimate interests in respect of the Disputed Domain Names because, inter alia, “Respondent is not sponsored by or affiliated with Complainant in any way”; “the pertinent Whois information identifies the Registrant as ‘Anthony Lauberth,’ which does not resemble the Disputed Domain Names in any manner”; “use of a disputed domain name that is confusingly similar to a complainant’s trademarks to link to a website featuring pornographic or adult content evinces a lack of legitimate rights or interests”; and “Respondent has failed to make use of th[e] Disputed Domain Name’s website and has not demonstrated any attempt to make legitimate use of the domain name and website.”
Under the Policy, “a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP”. WIPO Overview 2.0, paragraph 2.1.
The Panel finds that Complainant has established its prima facie case. Although Respondent has submitted a short Response, the Response does not expressly dispute or respond to any of allegations made by Complainant regarding rights or legitimate interests. While Respondent states that “AArp in our use stands for Animal Adventure Role Play” and that “[t]he website we have been developing for over 15 years once live will clearly state that we are not related to this other organization,” these statements are self-serving; unsupported by any evidence; and, despite previous communications between the parties, raised by Respondent for the first time only in the Response. As a result, the Panel discounts these statements.
Therefore, without any relevant or credible evidence from Respondent to the contrary, the Panel is satisfied that Complainant has satisfied the second element of the Policy. C. Registered and Used in Bad Faith
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the respondent has registered or the respondent has 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 trademark 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 trademark or service mark from reflecting the mark in a corresponding domain name, provided that the 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, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other online 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 respondent’s website or location. Policy, paragraph 4(b).
As discussed above, although Respondent has stated that “AArp in our use stands for Animal Adventure Role Play” and that “[t]he website we have been developing for over 15 years once live will clearly state that we are not related to this other organization,” these statements are self-serving; unsupported by any evidence; and, despite previous communications between the parties, raised by Respondent for the first time only in the Response. As a result, the Panel does not give these statements any weight with respect to registration and use of the Disputed Domain Names.
With respect to the Disputed Domain Name , which is being used in connection with a website offering pornographic content, the Panel agrees with the decisions cited by Complainant that “using a confusingly similar domain name to resolve to adult-oriented material constitutes bad faith registration and use pursuant to Policy 4(b)(iv).” Verizon Trademark Services LLC v. n/a and Ruslan Biletsky, NAF Claim No. 1383599; Google Inc. v. Raffaele Bassano, NAF Claim No. 232958; and Microsoft Corporation v. Paul Horner,WIPO Case No. D2002-0029.
With respect to the Disputed Domain Name , which is being used in connection with a website offering the domain name for sale, the Panel agrees with Complainant that the doctrine of “passive holding” as articulated in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000‑0003, is applicable here. In that well-known case, the panel wrote that “it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.” While a website offering a domain name for sale is not, strictly, speaking, inactive, the Panel here nevertheless considers the Telstra factors applicable. Specifically, here, given the long use of, and multiple registrations for, the AARP Trademark, as well as Complainant’s size, it is obvious that “Complainant’s trademark has a strong reputation and is widely known.” As stated above, other than Respondent’s brief and unsupported statement referring to “Animal Adventure Role Play,” Respondent “has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name.” And, “it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law.”
Accordingly, the Panel finds that Complainant has proven the third 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 Names and be transferred to Complainant.
Douglas M. Isenberg
Sole Panelist
Date: March 12, 2017
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