DECISION

AARP v. JG a/k/a Josh Green

Claim Number:  FA0403000244742

PARTIES

Complainant is AARP (“Complainant”), represented by Melise R. Blakeslee of McDermott, Will & Emery, 600 13th Street, N.W., Washington, DC, 20005.  Respondent is JG a/k/a Josh Green (“Respondent”), 345 West 59 Street, New York, NY 10019.

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <aarp-pharmacy.com>, <aarpphamacy.com>, and <wwwaarppharmacy.com>, registered with Intercosmos d/b/a Directnic.com.

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically March 9, 2004; the Forum received a hard copy of the Complaint March 11, 2004.

On March 10, 2004, Intercosmos d/b/a Directnic.com confirmed by e-mail to the Forum that the domain names <aarp-pharmacy.com>, <aarpphamacy.com>, and <wwwaarppharmacy.com> are registered with Intercosmos d/b/a Directnic.com and that Respondent is the current registrant of the name. Intercosmos d/b/a Directnic.com verified that Respondent is bound by the Intercosmos d/b/a Directnic.com registration agreement and thereby has 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 23, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 12, 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@aarp‑pharmacy.com, postmaster@aarpphamacy.com, and postmaster@wwwaarppharmacy.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 20, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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 name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. The domain names registered by the Respondent, <aarp‑pharmacy.com>, <aarpphamacy.com>, and <wwwaarppharmacy.com>, are confusingly similar to Complainant’s AARP mark.

2. Respondent has no rights to or legitimate interests in the <aarp-pharmacy.com>, <aarpphamacy.com>, and <wwwaarppharmacy.com> domain names.

3. Respondent registered and used the <aarp-pharmacy.com>, <aarpphamacy.com>, and <wwwaarppharmacy.com> domain names in bad faith.

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

FINDINGS

Complainant, AARP, is a non-profit membership organization that provides services for and advocates on behalf of some 35 million Americans over the age of 50.  Complainant registered the AARP mark August 24, 1976 (Reg. No. 1,047,005), noting a first use in commerce date in 1958.  Complainant offers a wide range of services to its members, including retail pharmaceutical services, health care products and services, financial services and insurance services.

Complainant, upon discovering the disputed domain names, sent a cease and desist letter on May 13, 2003, to the holder of the domain name registration at that time, John Barry. 

Complainant alleges that the now-named registrant, Josh Green, is an alias for John Barry.

Respondent registered the <aarp-pharmacy.com>, <aarpphamacy.com>¸ and <wwwaarppharmacy.com> domain names under the name “Josh Green” March 11, 2003, March 11, 2003, and March 12, 2003, respectively. 

Before March 16, 2003, the disputed domain names referred traffic to <e‑scripts-md.com>.  After March 16, 2003, the disputed domain names referred traffic to the <abortionismurder.org>.

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 will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires Complainant to 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 to and/or Confusingly Similar

Complainant established with extrinsic proof in this proceeding that it has rights in the AARP mark as evidenced by its registration with the USPTO and through earlier use of the mark in commerce dating back to 1958.  See 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.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that 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).

The Panel finds that the <aarp‑pharmacy.com>, <aarpphamacy.com>¸ and <wwwaarppharmacy.com> domain names are confusingly similar to Complainant’s AARP mark. 

With the <aarpphamacy.com> domain name, the only difference is the addition of the misspelled word “pharmacy,” which does not significantly distinguish the domain name from the mark.  In addition, the word “pharmacy” is related to the services offered by Complainant (i.e. pharmaceutical services for members).  See Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where Respondent’s domain name combines Complainant’s mark with a generic term that has an obvious relationship to Complainant’s business); see also PG&E Corp. v. Anderson, D2000-1264 (WIPO Nov. 22, 2000) (finding that “Respondent does not by adding the common descriptive or generic terms ‘corp’, ‘corporation’ and ‘2000’ following ‘PGE’, create new or different marks in which it has rights or legitimate interests, nor does it alter the underlying PG&E mark held by Complainant”).

The <aarp‑pharmacy.com> domain name adds a hyphen and the word “pharmacy,” which does not significantly distinguish the domain name from the mark.  See, supra, Identical/Confusingly Similar section ¶ 3;  see also Teleplace, Inc. v. De Oliveira, FA 95835 (Nat. Arb. Forum Dec. 4, 2000) (finding that the domain names <teleplace.com>, <tele-place.com>, and <theteleplace.com> are confusingly similar to Complainant’s TELEPLACE trademark); see also Nintendo of Am. Inc. v. This Domain Is For Sale, D2000-1197 (WIPO Nov. 1, 2000) (finding <game-boy.com> identical and confusingly similar Complainant’s GAME BOY mark, even though the domain name is a combination of two descriptive words divided by a hyphen).

The <wwwaarppharmacy.com> domain name adds the letters “www” and the word “pharmacy,” neither of which significantly distinguishes the domain name from the mark.  See, supra, Identical/Confusingly Similar section ¶ 3; see also Marie Claire Album v. 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); see also Neiman Marcus Group, Inc. v. S1A, FA 128683 (Nat. Arb. Forum Dec. 6, 2002) (holding confusing similarity has been established because the prefix "www" does not sufficiently differentiate the <wwwneimanmarcus.com> domain name from Complainant's NEIMAN-MARCUS mark).

The Panel finds that Complainant has established Policy ¶ 4(a)(i).

Rights to or Legitimate Interests

Respondent did not file a Response in this proceeding. Therefore, the Panel is permitted to presume that Respondent lacks rights and legitimate interests in the disputed 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). Furthermore, because Respondent failed to submit a Response, the Panel is permitted to take the allegations in the Complaint as true and to make all inferences in favor of Complainant. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”).

Respondent is appropriating Complainant’s mark to post graphic anti-abortion messages.  While Respondent may not be profiting from this activity, Panels have held that appropriating a third-party’s mark to post graphic political content is not a bona fide offering of goods or services, pursuant to Policy ¶ 4(c)(i), and it is not a legitimate noncommercial or fair use of the domain name, pursuant to Policy ¶ 4(c)(iii), because it is unrelated to the mark itself.  See eBay Inc. v. Sunho Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating that the "use of complainant’s entire mark in infringing domain names makes it difficult to infer a legitimate use"); see also 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).

Nothing in the Record, including Respondent’s WHOIS registration information, shows that Respondent is commonly known by the disputed domain name, pursuant to Policy ¶ 4(c)(ii).   See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark).

The Panel finds that Complainant has established Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent is using the disputed domain names to exploit the goodwill vested in the AARP mark for purposes wholly unrelated to the holder of the mark.  The Panel finds that this supports a finding of bad faith registration and use, pursuant to Policy ¶ 4(a)(iii).  See McClatchy Management Servs., Inc. v. Please DON'T Kill Your Baby, FA 153541 (Nat. Arb. Forum May 28, 2003) (finding “[b]y intentionally taking advantage of the goodwill surrounding Complainant’s mark to further its own political agenda, Respondent registered the disputed domain names in bad faith”); see also Journal Gazette Co. v. Domain For Sale Inc., FA 12202 (Nat. Arb. Forum Oct. 9, 2002) (finding “Respondent chose the domain name to increase the traffic flowing to the <abortionismurder.org> and <thetruthpage.com> websites”).

In addition, conduct showing that Respondent has wholly appropriated the AARP mark, without consent of the holder of the mark, also supports a finding of bad faith registration and use, pursuant to Policy 4(a)(iii).  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the “domain names are so obviously connected with the Complainants that the use or registration by anyone other than Complainants suggests ‘opportunistic bad faith’”); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”).

DECISION

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

Accordingly, it is Ordered that the <aarp-pharmacy.com>, <aarpphamacy.com>, and <wwwaarppharmacy.com> domain names be TRANSFERRED from Respondent to Complainant.

Hon. Carolyn Marks Johnson, Panelist

Dated: May 4, 2004.

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