DECISION

AARP v. live love

Claim Number:  FA0403000248740

PARTIES

Complainant is AARP (“Complainant”), represented by Melise R. Blakeslee, of McDermott, Will & Emery, 600 13th Street N.W., Washington DC 20005.  Respondent is live love (“Respondent”), 203 West 46th Street, New York, NY 10019.

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <wwaarp.com>, <wwwwaarp.com>, and <wwwaarp-pharmacy.com>, registered with Enom, Inc.

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

Hon. Ralph Yachnin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on March 22, 2004; the Forum received a hard copy of the Complaint on March 25, 2004.

On March 24, 2004, Enom, Inc. confirmed by e-mail to the Forum that the domain names <wwaarp.com>, <wwwwaarp.com>, and <wwwaarp-pharmacy.com> are registered with Enom, Inc. and that Respondent is the current registrant of the names. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

On March 26, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 15, 2004 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@wwaarp.com, postmaster@wwwwaarp.com, and postmaster@wwwaarp-pharmacy.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On April 27, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Ralph Yachnin as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <wwaarp.com>, <wwwwaarp.com>, and <wwwaarp-pharmacy.com> domain names are confusingly similar to Complainant’s AARP and AARP PHARMACY SERVICE and Design marks.

2. Respondent does not have any rights or legitimate interests in the <wwaarp.com>, <wwwwaarp.com>, and <wwwaarp-pharmacy.com> domain names.

3. Respondent registered and used the <wwaarp.com>, <wwwwaarp.com>, and <wwwaarp-pharmacy.com> domain names in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant is the leading nonprofit, membership organization in the United States that exists to address the needs and interests of persons 50 years old or older.  35 million members are a part of Complainant’s organization, including nearly half of those people eligible for membership.  Complainant maintains offices in the United States and U.S. territories, and its members have organized over 2,000 local chapters.

Complainant has made available a wide range of products and services to its members, including retail pharmaceutical services.  Such services are offered through approved providers under license and service agreements with Complainant and its wholly owned subsidiary, AARP Services, Inc.

In connection with the foregoing, Complainant has registered the AARP and AARP PHARMACY SERVICE and Design marks with the United States Patent and Trademark Office (“USPTO”).  The AARP mark has been used since 1959 and was registered on August 24, 1976 in connection with, inter alia, “retail and mail order pharmaceutical store services” (Reg. No. 1,046,998).

The AARP PHARMACY SERVICE and Design mark has been used since 1982 and was registered on August 23, 1983 in connection with “retail over-the-counter and mail order pharmacy services” (Reg. No. 1,249,450).

Respondent registered the disputed domain names <wwaarp.com> and <wwwwaarp.com> on March 11, 2003.  Respondent registered the disputed domain name <wwwaarp-pharmacy.com> on August 20, 2003.  The domain names are currently being used to host pro-life content that displays photographs of aborted babies.

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

Identical and/or Confusingly Similar

Respondent has established rights in the AARP and AARP PHARMACY SERVICE and Design marks as a result of its registration of the marks with the governmental authority within the United States, namely the USPTO. See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that the registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption); see also Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”).

Each of the disputed domain names includes Complainant’s AARP mark in its entirety. See Nikon, Inc. v. Technilab, Inc., D2000-1774 (WIPO Feb. 26, 2000) (holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name); see also Magnum Piering, Inc. v. Mudjackers & Wilson, D2000-1525 (WIPO Jan. 29, 2001) (holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name).

In the case of the domain names <wwaarp.com> and <wwwwaarp.com>, Respondent has merely included misspellings of the prefix “www” to a URL.  In addition, Respondent has omitted the period that separates the “www” from the desired domain name.  Such misspellings and omissions fail to distinguish the domain names from Complainant’s AARP mark because Respondent is engaging in the practice of typosquatting. See Dow Jones & Co., Inc. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000) (holding that the deliberate introduction of errors or changes, such as the addition of a fourth “w” or the omission of periods or other such generic typos do not change respondent’s infringement on a core trademark held by Complainant); see also Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that Respondent’s domain name <wwwbankofamerica.com> is confusingly similar to Complainant’s registered trademark BANK OF AMERICA because it “takes advantage of a typing error (eliminating the period between the www and the domain name) that users commonly make when searching on the Internet”); see also Marie Claire Album v. Geoffrey Blakely, D2002-1015 (WIPO Dec. 23, 2002) (holding that the letters "www" are not distinct in the "Internet world" and thus Respondent 's <wwwmarieclaire.com> domain name is confusingly similar to Complainant's MARIE CLAIRE trademark).

In the case of the domain name <wwwaarp-pharmacy.com>, Respondent has omitted the period that typically separates the URL prefix “www” from the domain name.  Respondent has also added a hyphen and a descriptive word signifying a type of service provided by Complainant.  Such changes fail to distinguish the domain name from Complainant’s mark under the Policy.  See Teradyne Inc. v. 4Tel Tech., D2000-0026 (WIPO May 9, 2000) ( “[The] addition of a hyphen to the registered mark is an insubstantial change. Both the mark and the domain name would be pronounced in the identical fashion, by eliminating the hyphen."); see also InfoSpace.com v. Ofer, D2000-0075 (WIPO Apr. 27, 2000) (“The domain name ‘info-space.com’ is identical to Complainant’s INFOSPACE trademark. The addition of a hyphen and .com are not distinguishing features.”); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the subject domain name incorporated the VIAGRA mark in its entirety, and deviated only by the addition of the word “bomb,” the domain name was rendered confusingly similar to Complainant’s mark); see also Westfield Corp., Inc. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element).

Complainant has established Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent has not provided a Response to the Panel.  The Panel construes such a failure as an implicit admission that Respondent lacks rights to and legitimate interests in the domain names. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names); see also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where Respondent fails to respond); see also Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertion in this regard.”)

There is nothing in the record to indicate that Respondent is commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (finding that the WHOIS information, and its failure to imply that Respondent is commonly known by the disputed domain name, is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").

In addition, Respondent is using the domain names that are confusingly similar to Complainant’s AARP mark to host content completely unrelated to the mark.  Thus, Respondent registered the domain names to take advantage of the fame associated with the AARP marks, which Complainant developed therein, in order to attract Internet users to its unrelated websites.  Such use is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  See Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because Respondent's sole purpose in selecting the domain names was to cause confusion with Complainant's website and marks, its use of the names was not in connection with the offering of goods or services or any other fair use); see also Am. Online, Inc. v. Tencent Communications Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that use of Complainant’s mark “as a portal to suck surfers into a site sponsored by Respondent hardly seems legitimate”).

Moreover, Respondent is engaged in the practice of typosquatting.  Typosquatting has been consistently found to evidence a respondent’s lack of rights and legitimate interests in domain names under the Policy.  Accordingly, the Panel finds that Respondent’s typosquatting activity is affirmative evidence that it lacks rights to and legitimate interests in the disputed domain names. See Nat’l Ass’n of  Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting as a means of redirecting consumers against their will to another site, does not qualify as a bona fide offering of goods or services, whatever may be the goods or services offered at that site.”); see also Diners Club Int’l Ltd. v. Domain Admin******It's all in the name******, FA 156839 (Nat. Arb. Forum June 23, 2003) (holding that Respondent’s <wwwdinersclub.com> domain name, a typosquatted version of Complainant’s DINERS CLUB mark, was evidence in and of itself that Respondent lacks rights or legitimate interests in the disputed domain name vis á vis Complainant).

Thus, Complainant has established Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Consistent with the foregoing, typosquatting is also evidence of bad faith registration and use under the Policy.  Respondent has engaged in typosquatting as previously mentioned.  Therefore, the Panel finds that Respondent registered and used the disputed domain names <wwaarp.com>, <wwwwaarp.com>, and <wwwaarp-pharmacy.com> in bad faith as a result of its typosquatting activity. See L.L. Bean, Inc. v. Cupcake Patrol, FA 96504 (Nat. Arb. Forum Mar. 12, 2001) (finding that Respondent acted in bad faith by establishing a pattern of registering misspellings of famous trademarks and names); see also Canadian Tire Corp., Ltd. v. domain adm’r no.valid.email@worldnic.net 1111111111, D2003-0232 (WIPO May 22, 2003) (holding that an “absence of a dot between the ‘www’  and ‘canadiantire.com’ [in the <wwwcanadiantire.com> domain name is] likely to confuse Internet users, encourage them to access Respondent’s site” and evidenced bad faith registration and use of the domain name); see also Medline, Inc. v. Domain Active Pty. Ltd., FA 139718 (Nat. Arb. Forum Feb. 6, 2003) (“[I]n typosquatting cases, such as this one, it would be difficult for Respondent to prove to the Panel that it did not have actual knowledge of Complainant’s distinctive MEDLINE mark when it registered the infringing <wwwmedline.com> domain name”).

Moreover, the AARP mark is well-known throughout the United States.  The AARP mark has been listed on the principal register of the USPTO for decades.  Thus, when Respondent registered the disputed domain names, Respondent either knew or should have known about Complainant’s rights in the AARP mark. See Yahoo! Inc. v. Ashby, D2000-0241 (WIPO June 14, 2000) (finding that the fame of the YAHOO! mark negated any plausible explanation for Respondent’s registration of the <yahooventures.com> domain name); see also Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.”); see also Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. 2002) ("Where an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse.").

Thus, Complainant has established Policy ¶ 4(a)(iii).

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <wwaarp.com>, <wwwwaarp.com>, and <wwwaarp-pharmacy.com> domain names be TRANSFERRED from Respondent to Complainant.

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

Dated:  May 11, 2004

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