The Complainant is AARP, United States of America (“United States”), represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States.
The Respondent is Domain Admin, Whois Privacy Corp., Bahamas. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 23, 2020. On September 23, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 24, 2020, 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 September 28, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 18, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 19, 2020. The Center appointed Gregor Vos as the sole panelist in this matter on October 29, 2020. 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 an American nonprofit organization. The company helps people 50 years of age and older have independence, choice, and control in ways that are beneficial and affordable to them and society as a whole. The Complainant has a nationwide presence and nearly 38 million members. The Complainant also produces America’s largest circulation publications, AARP The Magazine and AARP Bulletin; and publishes an extensive “Medicare Resource Center” online at “www.aarp.org/health/medicare-insurance” and the “AARP Medicare Question and Answer Tool” at “www.aarp.org/health/medicare-qa-tool”. The Complainant is the owner of inter alia the following trademark registrations (the “Trademarks”): - United States registration No. 741334 for the word mark AARP, registered on November 27, 1962; These trademark registrations predate the registration date of the disputed domain name The Complainant’s licensee UnitedHealth Group Incorporated is the registrant of numerous domain names that include the AARP Trademark and the word “medicare”, including the domain name The Respondent registered the disputed domain name on August 30, 2006. The disputed domain name redirects visitors to various websites at different times, including to websites that offer services in competition with the Complainant and a website that falsely informs visitors of security threats on their computers. 5. Parties’ Contentions A. Complainant The Complainant asserts that the disputed domain name is confusingly similar to the AARP Trademark. The Complainant alleges that previous UDRP panels have recognized that the fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy. In respect of the generic Top-Level domain (“gTLD”) “.org”, the Complainant requests that this be disregarded, as it is a standard registration requirement. The Complainant further claims that the addition of the word “medicare” in the disputed domain name does nothing to alleviate any confusing similarity because where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The Complainant claims that all Trademarks for the name AARP were registered by the Complainant from 1962 and previous UDRP panels have confirmed that the Complainant has right in the AARP Trademark. According to the Complainant, the Respondent lacks rights and legitimate interests in the disputed domain name. The Complainant has not found that the Respondent has any registered trademarks or service marks corresponding to the disputed domain name, the Respondent is not commonly known by the disputed domain name, and the Respondent has not received any license from the Complainant to use a domain name which features the AARP Trademark. Also, the Complainant states that the Respondent does not use the disputed domain name in connection with a bona fide offering of goods and services. Instead, the disputed domain name is used in connection with a website that falsely informs visitors of security threats on their computers and redirects the disputed domain name to websites for the Complainant’s competitors. The Complainant states that the Respondent’s use of the disputed domain name cannot be considered a legitimate noncommercial or fair use of the domain name, since the Respondent is using the disputed domain name in connection with a website that falsely informs visitors of security threats on their computers. Finally, the Complainant asserts that the disputed domain name has been registered and is being used in bad faith. The Complainant states that the only explanation of what has happened is that the Respondent’s motive in registering and using the disputed domain name seems to be simply to disrupt the Complainant’s relationship with its customers or potential customers or attempt to attract Internet users for potential gain. According to the Complainant, it is inconceivable that the Respondent chose the disputed domain name without knowledge of the Complainant’s activities and the name and trademark under which the Complainant is doing business. Also, the Complainant states that the mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. In that regard, the Complainant claims that the AARP Trademark is famous or widely-known, given that it has been used for 62 years, is protected by 51 trademark registrations in at least four jurisdictions worldwide (including in the United States for almost 58 years), and is used by a company that has 38 million members. Further, the Complainant states that the Respondent’s actions constitute bad faith. Firstly, the Respondent is falsely informing visitors of security threats on their computers, which disrupts the business of a competitor and intentionally attempts 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. Secondly, by redirecting the disputed domain name to websites offering Medicare health services – the same services with which the Complainant uses the AARP Trademark – the Respondent is clearly creating a likelihood of confusion with the AARP Trademark. Moreover, according to the Complainant, the Respondent’s actions suggest “opportunistic bad faith”, since in light of the long history of the Complainant’s Trademarks and the Complainant’s significant international presence and brand recognition, it is likely that the Respondent knew of the Complainant’s mark and has sought to obtain a commercial benefit by attracting Internet users based on that confusion. Finally, the Complainant notes that the Respondent created the disputed domain name only one day after the Complainant obtained one of its registrations for the AARP United States Trademark reg. No. 3135601. According to the Complainant, earlier UDRP panels have found that where the facts of the case establish that the respondent’s intent in registering the domain name was to unfairly capitalize on the complainant’s nascent trademark rights, that the respondent has acted in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings In view of the lack of a response filed by the Respondent as required under paragraph 5 of the Rules, this proceeding has proceeded by way of default. Hence, under paragraphs 5(f), 14(a) and 15(a) of the Rules, the Panel is directed to decide this administrative proceeding on the basis of the Complainant’s undisputed factual presentations. For the Complainant to succeed, it must prove, within the meaning of paragraph 4(a) of the Policy and on the balance of probabilities that: i. the disputed domain name is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights; and ii. the Respondent has no rights or legitimate interests in respect of the disputed domain name; and iii. the disputed domain name has been registered and is being used in bad faith. Only if all three elements have been fulfilled, the Panel is able to grant the remedies requested by the Complainant. The Panel will deal with each of the requirements in turn. A. Identical or Confusingly Similar Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is (i) identical or confusingly similar to a trademark or service mark, (ii) in which the Complainant has rights. With respect to having rights pursuant to paragraph 4(a)(i) of the Policy, it is noted that the Complainant is registered as the owner of the Trademarks, as can be seen from the list of active Trademark registrations (Annex 14). Consequently, the Panel finds that the Complainant has proven that it has right in the Trademarks. With regard to the assessment of identity or confusing similarity of the disputed domain name with the Trademarks, it is generally accepted that this test involves a reasoned but relatively straightforward comparison between a complainant’s trademark and the disputed domain name (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. For the purpose of assessing confusing similarity under the Policy, the Top-Level Domain suffixes (in the present case the gTLD “.org”) are generally ignored in the comparison between the disputed domain name and the trademarks (see Bialetti Industrie S.p.A. v. Onno Brantjes, Stichting Taxaceace, WIPO Case No. D2016-1450; Canyon Bicycles GmbH v. Domains by Proxy, LLC / Rob van Eck, WIPO Case No. D2014-0206; Zions Bancorporation v. Mohammed Akik Miah, WIPO Case No. D2014-0269). This case does not contain any indications to the contrary. The disputed domain name is confusingly similar to the AARP Trademark. 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 (see WIPO Overview 3.0, section 1.7; Advance Magazine Publishers Inc. v. Abhishek Singh WIPO Case No. D2020-1154). Further, where the relevant trademark is recognizable within the disputed domain name, the addition of other terms, in this case “medicare”, would not prevent a finding of confusing similarity under the first element (see e.g. Pandora A/S v. Domain Admin, Privacy Protect LLC (PrivacyProtect.org) / Robin Puckett, WIPO Case No. D2018-0586; WIPO Overview 3.0, section 1.8). In this case the AARP Trademark is fully incorporated in the disputed domain name. Also, the addition of the term “medicare” does not prevent a finding of confusing similarity under the first element. Consequently, the Panel finds that the requirement under paragraph 4(a)(i) of the Policy has been satisfied. B. Rights or Legitimate Interests The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name. The onus of proving this requirement, like each element, falls on the Complainant. Given the difficulty in proving a negative, however, it is usually sufficient for a complainant to make out a prima facie case that the respondent lacks rights or legitimate interests. If the complainant does establish a prima facie case, the burden of production shifts to the respondent. See, e.g. WIPO Overview 3.0, section 2.1; Sanofi v. Cimpress Schweiz GmbH, WIPO Case No. D2017-0522. Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the disputed domain name, by demonstrating any of the following: i. before any notice of the dispute, the respondent’s 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; or ii. the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or iii. the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The Complainant has substantiated that none of the circumstances apply in this case. By defaulting, the Respondent has failed to address the prima facie case thus established by the Complainant. Furthermore, based on the record before it, the Panel does not see an indication that any of the circumstances of paragraph 4(c) of the Policy is present. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Paragraph 4(a)(ii) is thereby fulfilled. C. Registered and Used in Bad Faith Under paragraph 4(iii) of the Policy, a complainant must show that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four non-limitative circumstances which may be considered as evidence of registration and use in bad faith of a domain name. The AARP Trademark is registered by the Complainant in several jurisdictions and has been used for many years. The Complainant’s trademark rights predate the registration date of the disputed domain name (see Section 4 above). The Complainant’s AARP trademark is distinctive and has a strong online visibility. The AARP Trademark is widely known, given that is has been used for 62 years, is protected by 51 trademark registrations, and is used by a company that has 38 million members. Based on this information, the Panel agrees with the Complainant that it is not conceivable that the Respondent chose the disputed domain name without knowledge of the Complainant’s activities and trademark under which the Complainant is doing business (see Pancil LLC v. Domain Deluxe,WIPO Case No. D2003-1035). Also, the registration of a domain name that is confusingly similar to a trademark, with an addition of a term related to the field of the Complainant, by an entity that has no relationship to that mark can be evidence of opportunistic bad faith (see Ebay Inc. v. Wangming,WIPO Case No. D2006-1107). The Panel finds, on these facts, that the Respondent targeted the Complainant and its AARP Trademark when it registered the disputed domain name. These facts show bad faith registration of the disputed domain name. In addition, the Complainant has shown that the Respondent has used the disputed domain name to direct internet users to websites offering Medicare health services – the same services with which the Complainant uses the AARP Trademark. Redirecting the disputed domain name to a competitor’s website supports the finding that the Respondent has register the disputed domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s AARP Trademark (see paragraph 4(b)(iv) of the Policy; WIPO Overview 3.0, section 3.1.4). Accordingly, the Panel finds that the disputed domain name has been registered and is being used in bad faith and the third element of paragraph 4(a)(iii) of the Policy is fulfilled. 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 Gregor Vos
- United States registration No. 1047005 for the word mark AARP, registered on August 24, 1976;
- United States registration No. 1046998 for the word mark AARP, registered on August 24, 1976.
Sole Panelist
Date: November 12, 2020
Full & Egal Universal Law Academy