The Complainant is Buckeye Hills Hocking Valley Regional Development District d/b/a Buckeye Hills Regional Council, United States of America (“United States”), represented by Bricker & Eckler LLP, United States.
The Respondent is Savvy Investments, LLC, United States / Maksim Artemenko, Ukraine. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 3, 2019. On October 3, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 4, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the 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 the Respondent of the Complaint, and the proceedings commenced on October 16, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 5, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 6, 2019. The Center appointed Jane Seager as the sole panelist in this matter on November 18, 2019. 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 Buckeye Hills Hocking Valley Regional Development District d/b/a Buckeye Hills Regional Council, a Council of Governments based in Ohio, United States. Since 1974, the Complainant’s services have included advocating for and educating older adults and their caregivers, promoting long-term care choices, and consumer protection so that older adults can take advantage of opportunities that enable them to maintain wellness, independence and dignity. The Complainant also provides planning, advocacy, administrative, and organization assistance to county commissioners, county councils on aging, and others who provide services to the elderly. In connection with the services mentioned above, the Complainant has identified itself and its services under “Area Agency on Aging 8”, “Area Agency on Aging, District 8”, “AAA8” and a combined AAA8 logo together with “Area Agency on Aging”. These have been used for a variety of printed materials, including pamphlets, brochures, and advertisements, as well as for electronic materials including its social media pages and website. The disputed domain name was initially registered by the Complainant on June 11, 2002, and has been used to promote the Complainant’s elderly-care-related services. It appears that at some point in mid-2019, the disputed domain name was allowed to lapse and was re-registered by the Respondent using a privacy service, Savvy Investments, LLC. Prior to filing the Complaint, on September 26, 2019, the Complainant contacted the privacy service with which the disputed domain name had been registered by the Respondent. On September 27, 2019, the privacy service disclosed the contact details of the underlying registrant of the disputed domain name, Maksim Artemenko. On September 30, 2019, the Complainant sent an email communication to the underlying registrant, requesting transfer of the disputed domain name. The underlying registrant did not reply to the Complainant’s communication. At the time that the Complaint was filed, the disputed domain name resolved to a website that reproduced the contents of the Complainant’s website previously appearing at the disputed domain name (the “Respondent’s website”). The Respondent’s website included a link stating “Visit our partnet site viagra farmaci [sic]”, which redirected to the third-party website “www.ulpillo.com”, where generic versions of various erectile-dysfunction drugs are offered for sale. At the time of this decision, the disputed domain name no longer resolves to an active website. 5. Parties’ Contentions A. Complainant The Complainant asserts common law rights in “Area Agency on Aging 8”, “Area Agency on Aging, District 8”, “AAA8” and a combined AAA8 logo together with “Area Agency on Aging”. The Complainant claims that it has promoted its services under the abovementioned marks to constituents in a region of Southeast Ohio, through both printed and electronic media, that constitutes “use in commerce” sufficient to establish common law trademark rights within the State of Ohio. The Complainant submits that the Complainant’s marks have achieved secondary meaning or association with the Complainant through decades of use, including on thousands of printed materials that remain in circulation today, through media placements reaching 40,000 households annually, through email blasts, and via the Complainant’s websites and social media pages. The Complainant asserts that the Complainant’s AREA AGENCY ON AGING 8 mark is immediately recognizable in the disputed domain name, and that its AAA8 mark is readily ascertainable within the disputed domain name. The Complainant asserts that the fact that the disputed domain name is likely to cause Internet user confusion with the Complainant’s marks is further evidenced by the Respondent’s use of the disputed domain name. The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant asserts that there is no evidence that the Respondent had any interest or motive other than to profit off the Internet user confusion generated by the Respondent’s use of the disputed domain name. The Complainant further asserts that despite its opportunities to refute the Complainant’s allegations, that the Respondent has failed to engage, and that a party with legitimate interests would not ordinarily remain silent in view of such allegations. The Complainant asserts that the present case, involving clear copyright infringement and false and deceptive trade practices by the Respondent, in order to divert Internet traffic and to create confusion among the elderly of Southeast Ohio is the opposite of having legitimate interests in the disputed domain name. With regard to bad faith, the Complainant asserts that the Respondent registered the disputed domain name subsequent to it being allowed to lapse, following which the Respondent proceeded to copy an archived version of the Complainant’s entire website. The only change to the content of the website appears to be the addition of the text “Visit our partnet site viagra farmaci [sic]”, with a link to a third-party website, which is either controlled by the Respondent, or is the source of some financial benefit to the Respondent. Accordingly, the Complainant submits that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings In order to prevail in its Complaint, the Complainant is required to prove, on the balance of probabilities, that it has satisfied the requirements of paragraph 4(a) of the Policy: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in the disputed domain name; and (iii) the disputed domain name was registered and is being used in bad faith. A. Identical or Confusingly Similar The first element of the Policy requires that a complainant establish rights in a trademark or service mark, and that the disputed domain name is identical or confusingly similar to the complainant’s mark. In the present case, the Complainant asserts common law trademark rights in “Area Agency on Aging 8”, “Area Agency on Aging, District 8”, “AAA8” and a combined AAA8 logo together with “Area Agency on Aging”. To establish unregistered or common law trademark rights for purposes of the UDRP, a complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services. In support of its claimed rights, the Complainant has provided screen captures of its website and copies of printed materials that prominently feature “Area Agency on Aging 8”, “AAA8” and a combined AAA8 logo together with “Area Agency on Aging”. The Complainant’s evidence indicates that the Complainant has been providing its services under such marks for quite a sustained period (i.e., decades). The Panel finds that the Complainant has demonstrated that “Area Agency on Aging 8” and “AAA8” have acquired secondary meaning in connection with the Complainant’s elderly-care-related services offered under those signs sufficient to confer common law trademark rights on the Complainant in the same. The fact that the Respondent has targeted the Complainant by reproducing the contents of the Complainant’s website on the website at the disputed domain name affirms the Complainant’s assertion that its mark has achieved significance as a source identifier; see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.3. The Panel thus finds that the Complainant has established common law trademark rights in AREA AGENCY ON AGING 8 and AAA8 for the purposes of paragraph 4(a)(i) of the Policy. As noted in WIPO Overview 3.0, section 1.7, “[t]he standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name. This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. […] While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”. The disputed domain name incorporates a substantial portion of the Complainant’s AREA AGENCY ON AGING 8 mark in that it simply omits the element “on aging”. In the Panel’s view, the omission of the element “on aging” of the Complainant’s mark in the disputed domain name does not prevent a finding of confusing similarity, where the disputed domain name otherwise incorporates substantial and readily identifiable elements of the Complainant’s mark. Accordingly, the Panel finds the disputed domain name to be confusingly similar to the Complainant’s AREA AGENCY ON AGING 8 mark. The Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests By using the disputed domain name to resolve to a website that reproduced the contents of website appearing at the disputed domain name when it was previously operated by the Complainant, together with a link to an online pharmacy unrelated to the Complainant’s services, the Respondent has effectively impersonated the Complainant. As noted in Prevent Child Abuse America v. Sumardi Sumardi,WIPO Case No. D2019-1287, concerning similar facts: “There is no right or legitimate interest in holding a domain name to further fraudulent impersonation, and registration and use of a domain name for such a purpose involves registration and use in bad faith (see, for example, Weber-Stephen Products LLC v. WhoisGuard Protected, WhoisGuard, Inc. / Daniela Gebauer, Kitchenhelpers GmbH,WIPO Case No. D2017-0118). As stated in section 2.13.1 of the WIPO Overview 3.0 ‘the use of a domain name for illegal activity (e.g., […] impersonating/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent’. There is no need in circumstances where this can be shown for a panel to rely upon arguments as to a prima facie showing of lack of rights or legitimate interest and a passing of a burden of proof. The lack of rights or legitimate interests is clearly evident.” The Panel considers that the above reasoning may be appropriately applied to the facts of the present case and finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith By registering the disputed domain name when it was inadvertently allowed to lapse following a long period of sustained registration and use by the Complainant, and by using it in the manner described above, it is clear to the Panel that the Respondent registered the disputed domain name with the Complainant in mind having no intent to use the disputed domain name for any legitimate purpose. Rather, the Respondent has made use of the disputed domain name in an effort to impersonate the Complainant. The Panel finds that the disputed domain name was registered in bad faith. Not only has the Respondent reproduced the contents of the Complainant’s official website previously appearing at the disputed domain name – the Respondent has gone further in including a link to a third-party online pharmacy where generic versions of various erectile dysfunction drugs are offered for sale. The Panel accepts the Complainant’s uncontested allegation that the online pharmacy is either controlled by the Respondent, or that the Respondent derives some financial benefit by redirecting Internet users to it. By including such a link on the Respondent’s website, Internet users are likely to assume that products offered for sale via the third-party online pharmacy are endorsed or otherwise affiliated with the Complainant. In light of the foregoing, the Panel finds that by using the disputed domain name, the Respondent has attempted to attract, for commercial gain, Internet users to its 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 its website or online location or of a product or service on its website or online location, amounting to bad faith use of the disputed domain name pursuant to paragraph 4(b)(iv) of the Policy. In the circumstances of the present case, the additional factors that the Respondent attempted to mask its identity by using a privacy service when registering the disputed domain name, the Respondent’s failure to reply to the Complainant’s notice sent prior to filing the Complaint, and the fact that the disputed domain name no longer resolves to any active website further reinforce the Panel’s finding of bad faith above. The Complainant has satisfied the requirements of paragraph 4(a)(iii) 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 Jane Seager
Sole Panelist
Date: December 2, 2019
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