Complainant is The American Kennel Club, Inc., United States of America (“United States”), represented by Reed Smith LLP, United States.
Respondent is Linh Hoang, United States.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 5, 2021. On November 8, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 10, 2021, the Registrar transmitted by email to the Center its verification response and 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 November 10, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on November 12, 2021.
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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on November 22, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 12, 2021. An informal communication was sent by Respondent to the Center on November 15, 2021.
The Center appointed Ingrīda Kariņa-Bērziņa as the sole panelist in this matter on December 20, 2021. 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 BackgroundComplainant is an American non-profit organization, founded in 1884, engaged in the registration of purebred dog pedigrees and providing information, services and products related to dogs and other pets. Complainant is the proprietor of several registrations for its marks, including the following:
- United States Trademark Registration No. 3036432 for AKC AMERICAN KENNEL CLUB (device mark), registered on November 25, 1969 for goods in class 16, claiming a date of first use of January 5, 1909;
- United States Trademark Registration No. 3007192 for AMERICAN KENNEL CLUB (word mark), registered on October 18, 2005 for services in classes 35, 41, and 42, claiming a date of first use of January 5, 1909;
- United States Trademark Registration No. 3030063 for AMERICAN KENNEL CLUB (word mark), registered on December 13, 2005 for goods in class 16, claiming a date of first use of February 7, 2003.
The disputed domain name was registered on February 21, 2021. At the time of this Decision, it does not resolve to an active website. The record reflects that it previously resolved to a website operated by an entity identifying itself as “America’s Kennel Company” and stating that it is a “designer breed registry”.
5. Parties’ Contentions A. ComplainantUnder the first element, Complainant states that it is a not-for-profit organization, founded in 1884 and dedicated to upholding the integrity of its registry of purebred dog pedigrees and promoting the sport and care of purebred dogs. Complainant has operated under the name American Kennel Club for over 130 years. The AMERICAN KENNEL CLUB marks are famous and enjoy a reputation in connection with high-quality canine-related services. The disputed domain name incorporates the distinguishing and dominant characteristics of Complainant’s marks nearly in its entirety. The only differences between the disputed domain name and Complainant’s registered AMERICAN KENNEL CLUB marks are the omission of the word “club” and the addition of the generic descriptor, “company” and use of “americas” rather than “american.”
Under the second element, Complainant states that Respondent is not in any way affiliated with it. Complainant has never licensed or authorized Respondent to use the AMERICAN KENNEL CLUB marks. Complainant is not aware of any legitimate use by Respondent of the AMERICAN KENNEL CLUB marks prior to Complainant’s adoption and use of these marks. There is no evidence that Respondent has been known by the name “Americas Kennel Company”, nor that Respondent is making a legitimate noncommercial use of the disputed domain name.
Under the third element, Complainant states that Respondent has acted in bad faith by opportunistically registering and using a domain name that incorporates the dominant and source-identifying portions of the AMERICAN KENNEL CLUB marks to intentionally confuse and attract, for commercial gain, Internet users to Respondent’s website believing it is that of Complainant or some legitimately related party. Complainant’s marks are famous and have a worldwide reputation. Respondent demonstrates knowledge of Complainant by referencing Complainant in a small-print disclaimer at the bottom of its page. Visitors do not see this disclaimer before they have been lured to the site, where they first see a logo that is highly confusingly similar to Complainant’s registered design mark. Respondent is using the disputed domain name in bad faith by operating an illegal scheme to steal payments from unsuspecting targets believing they are registering their dog pedigrees with Complainant. Respondent is operating this scheme using the disputed domain name and several other domain names, demonstrating that Respondent is a serial scam artist. Respondent has copied verbatim text from Complainant’s website. Finally, Respondent has concealed his identity using a privacy service to avoid being notified of a UDRP proceeding filed against it.
Complainant requests transfer of the disputed domain name.
B. RespondentOn November 15, 2021, Respondent sent an email to the Center stating that the disputed domain name would be disabled by November 30, 2021.
6. Discussion and FindingsParagraph 4(a) of the UDRP requires Complainant to make out all three of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) Respondent has registered and is using the disputed domain name in bad faith.
A. Identical or Confusingly SimilarThe Panel is satisfied that Complainant has rights in the AMERICAN KENNEL CLUB marks identified above.
In comparing Complainant’s marks with the disputed domain name, the Panel finds that the disputed domain name is confusingly similar to Complainant’s AMERICAN KENNEL CLUB mark. Pursuant to sections 1.7 and 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), it is appropriate to consider whether the disputed domain name signals an intention on the part of Respondent to confuse users seeking or expecting Complainant. The disputed domain name comprises three elements that are, respectively, a deliberate misspelling of, identical to, or confusingly similar to corresponding elements of Complainant’s mark. Accordingly, consistent with UDRP practice, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark for the purposes of the first element. Further, although it is usual to disregard the content of the website to which the disputed domain name resolves, the Panel finds it relevant to take into account the content of the website in this case, which affirms the finding of confusing similarity. See WIPO Overview 3.0, section 1.15; see also, VF Corporation v. Vogt Debra,WIPO Case No. D2016-2650.
It is the well-established view of UDRP panels that the generic Top-Level Domain (“gTLD”) “.org” is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test (see WIPO Overview 3.0, section 1.11.1, and cases cited thereunder).
Accordingly, the Panel finds that Complainant has established the first element under paragraph 4(a) of the Policy.
B. Rights or Legitimate InterestsThe Panel finds that the evidence submitted by Complainant establishes a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not authorized by Complainant and has no rights in the AMERICAN KENNEL CLUB mark. The disputed domain name is confusingly similar to Complainant’s mark. Further to the Panel’s findings under the first element, the Panel finds that the content of the website to which the disputed domain name resolves in this case is also relevant to assessing Respondent’s intent to create confusion under paragraphs 4(a)(ii) and 4(a)(iii) of the Policy. The Panel considers that there is a real risk that Internet users may believe there is a connection between the disputed domain name and Complainant and/or to its services and goods. See, for example, The Canadian Hockey Association and The Canadian Olympic Committee v. Lin Lin,WIPO Case No. D2016-0322; RapidShare AG, Christian Schmid v. Protected Domain Services/Dmytro Gerasymenko,WIPO Case No. D2010-1071. Such use cannot confer rights or legitimate interests.
Pursuant to WIPO Overview 3.0, section 2.1, and cases thereunder, where Complainant makes out a prima facie case that Respondent lacks rights or legitimate interests, the burden of production on this element shifts to Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name.
Respondent has not proved rights or legitimate interests. There is no evidence that Respondent is commonly known by the disputed domain name, nor that there are any circumstances or activities that would establish Respondent’s rights or legitimate interests therein. The disputed domain name pointed to a website operated by “America’s Kennel Company”, displaying a logo reminiscent of Complainant’s circular AKC AMERICAN KENNEL CLUB registered mark. On this website, Respondent offers fee-based registration of dog pedigrees. The Panel finds that such use has been created done with the intention of diverting Internet users seeking information about Complainant and its dog pedigree registry. Such use can never confer rights or legitimate interests. See WIPO Overview 3.0, section 2.13.1, and cases cited thereunder.
Therefore, the Panel finds that Complainant has established the second element under paragraph 4(a) of the Policy.
C. Registered and Used in Bad FaithThe Panel finds that Complainant has demonstrated Respondent’s bad faith registration and use of the disputed domain name. Complainant’s rights in its AMERICAN KENNEL CLUB mark predate the registration of the disputed domain name by more than a century. The disputed domain name is confusingly similar to Complainant’s mark and resolved to a website offering similar services as the Complainant, which implies affiliation with Complainant’s registry of purebred dogs. The Panel finds that the evidence supports a finding that Respondent was aware of Complainant when registering the disputed domain name.
The Panel finds that Respondent has demonstrated bad faith use of the disputed domain name. The evidence on record supports a finding that Respondent has, by using the domain name to point to its website offering dog registry services, intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark. Having drawn Internet users to its website by using a confusingly similar approximation of Complainant’s mark and mimicking its logo, Respondent is fraudulently soliciting payments from website visitors. Such conduct is emblematic of bad faith use of the disputed domain name. See WIPO Overview 3.0, section 3.1.4. See also Tom Cruise v. Network Operations Center / Alberta Hot Rods,WIPO Case No. D2006-0560; Wal-Mart Stores, Inc. v. Steve Powers, WIPO Case No. D2003-1051.
In light of the overall circumstances of the case, the disclaimer on Respondent’s website does not cure bad faith. Rather, Respondent’s use of a disclaimer referencing Complainant effectively constitutes an admission by the Respondent that Internet users may be confused. See WIPO Overview 3.0, section 3.7, and cases cited thereunder.
The Panel therefore finds that Complainant has established the third element under paragraph 4(a) of the Policy.
7. DecisionFor 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
Ingrīda Kariņa-Bērziņa
Sole Panelist
Date: January 19, 2022