National Arbitration Forum

DECISION

AARP v. Electronic Marketing Services c/o Tammy Gloe

Claim Number: FA0411000366129

PARTIES

Complainant is AARP (“Complainant”), represented by Melise Blakeslee, of McDermott Will & Emery LLP, 600 13th Street, N.W., Washington, DC 20005. Respondent is Electronic Marketing Services c/o Tammy Gloe (“Respondent”), 309 Melbourne Road, Great Neck, New York 11021.

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <aarpdefensivedriver.com> and <aarpdefensivedriving.com>, registered with Register.com.

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.

Honorable Richard B. Wickersham, Judge (Ret.), as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on November 16, 2004; the National Arbitration Forum received a hard copy of the Complaint on November 19, 2004.

On November 17, 2004, Register.com confirmed by e-mail to the National Arbitration Forum that the domain names <aarpdefensivedriver.com> and <aarpdefensivedriving.com> are registered with Register.com and that the Respondent is the current registrant of the names. Register.com has verified that Respondent is bound by the Register.com 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 November 23, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 13, 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@aarpdefensivedriver.com and postmaster@aarpdefensivedriving.com by e-mail.

A timely Response was received and determined to be complete on December 9, 2004.

On December 18, 2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Richard B. Wickersham, Judge (Ret.), as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

The Complainant in this administrative proceeding is AARP, a nonprofit corporation organized and existing under the laws of the District of Columbia, having its principal place of business at 601 E. Street, N.W., Washington, D.C. 20049.

This Complaint is based upon the trademark and service mark AARP, which has been adopted and continually used in commerce by the Complainant for over four decades in connection with addressing the needs and interests of persons who are 50 years of age and older.

With over 35 millions members, Complainant is the leading nonprofit, membership organization of its kind in the United States, and nearly half of the individuals in the United States who are 50 years of age or older are among Complainant’s members.

Complainant maintains offices in every state in the United States and U.S. territories and its members have organized over 2,000 local chapters.

For years, Complainant has made available a wide range of products and services to its members, including a driver’s safety program, information about driving, travel and discounted automobile insurance in association with endorsed providers, other insurance products and services, health care products and services, financial services, and related products and services. Such services are offered through approved providers under license and service agreements with AARP and AARP’s wholly owned subsidiary, AARP Services, Inc.

Similarly, Complainant, through other approved providers, also has offered discount programs for a variety of products and services that are of particular interest to Complainant’s members.

All of Complainant’s approved products and services have been advertised and furnished by the approved providers under the famous mark AARP.

Complainant owns numerous valid and subsisting registrations in the U.S. Patent and Trademark Office for the mark AARP and formatives thereof for a variety of products and services. Many AARP registrations are incontestable. Additionally, Complainant also owns numerous common law, i.e., unregistered, AARP marks, and has approximately five applications pending before the USPTO which contain the mark AARP and variations thereof.

Complainant’s approved providers have spent significant amounts of money in promoting, informing and providing products and services under the AARP marks.

As a result of this widespread, long-time continuous, and prominent use of the mark AARP, that mark has acquired significant goodwill, wide public recognition, and fame as a means by which Complainant and its products and services are known to the public and its service and origin are identified. See AARP v. live love, FA 248740 (Nat. Arb. Forum May 11, 2004) (recognizing Complainant’s established rights in the mark AARP).

Respondent’s registered domain names are confusingly similar to Complainant’s AARP mark and are likely to mislead, deceive and cause mistake. This is of particular concern when online driving safety courses are involved, and the market for these services is aimed at retired persons. The potential for deception is extremely high.

Respondent’s domain names, <aarpdefensivedriver.com> and <aarpdefensivedriving.com>, incorporate Complainant’s mark AARP and add the word “defensive” in addition to the word “driver” or “driving.”

By merely adding a generic word or words to Complainant’s famous mark, Respondent does nothing to prevent likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or of goods or services advertised or sold on those websites. Therefore, Respondent’s domain names are likely to misleadingly divert AARP members trying to locate the legitimate AARP website or AARP-affiliated websites to learn about driving safety classes.

Complainant sent a cease and desist letter via certified mail and e-mail to Respondent, informing it that the <aarpdefensivedriver.com> domain name infringed upon Complainant’s trademark rights, requesting that it immediately cease and desist use of the domain name, and requesting that it assign the <aarpdefensivedriver.com> domain name registration to Complainant.

At the time Complainant sent its cease and desist letter, the <aarpdefensivedriver.com> domain name was registered to Electronic Marketing Services c/o Tammy Gloe, and, via a re-direct link, it diverted Internet traffic to the <thedefensivedrivingschool.com> domain name, which resolves to a website that advertises online driver safety courses. According to the website at that time, it offered driver safety courses online and sponsored an “affiliate” program that paid commissions to parties that directed traffic to the site, resulting in sales of driver safety courses.

Respondent is not using the domain names in connection with a bona fide offering of goods or services. See Policy Paragraph 4(c)(i).

Respondent is not commonly known by the domain names, either as a business, individual, or other organization. See Policy Paragraph 4(c)(ii).

Respondent is not making a legitimate noncommercial or fair use of the domain names, See Policy Paragraph 4(c)(iii).

Despite Complainant’s request, to date, Respondent has acted willfully in bad faith and has failed to articulate any rights or legal interest it has in the domain names. It is impossible to conceive of any plausible actual or contemplated use of the domain names by the Respondent that would not be illegitimate.

Respondent’s conduct demonstrates a willful intent to attract Internet users to its websites, deceiving potential consumers by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its websites. See Policy Paragraph 4(b)(iv). Simply adding formative words to the end of the mark AARP does not mitigate the bad faith association with registering these domain names.

In addition, Respondent’s $1,000 offer to sell the domain names and its willful renewal of the same demonstrates an illicit intent to profit from the ownership of the domain names.

B. Respondent

Respondent received a Notification of Complaint and Commencement of Administrative Proceeding on November 23, 2004. The Notification stated that Complainant had submitted a Complaint for decision in accordance with the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 and approved by ICANN on October 24, 1999 (ICANN Policy), and the Rules for Uniform Domain Name Dispute Resolution Policy (ICANN Rules), adopted by ICANN on August 26, 1999 and approved by ICANN on October 24, 1999, and the National Arbitration Forum (NAF) Supplemental Rules (Supp. Rules). ICANN Rule 4.

Respondent does not dispute the similarity of the domain names in question and Complainant’s mark. However, Complainant does not have any legitimate right to the phrases “defensive driver” and “defensive driving.”

Electronic Marketing Services operates an online defensive driving school, thedefensivedrivingschool.com, and holds regisrations for the disputed domain names in order to restrict competition from a large, well-funded company, not to use them deceptively.

 

These domain names are not being used in any way that is misleading, devious, or deceptive. In fact, these domain names are not now nor ever will be used by Electronic Marketing Services. The sole purpose in holding these domain name registrations is to lessen the amount of competition Respondent must deal with from large, well-funded companies.

How can something that’s not being used, and will not be used, be thought of as being used in bad faith? As far as Respondent understands, there is no legitimate reason why a small company such as Respondent’s cannot try to restrict competition from such a giant as AARP.

By not using the names in question, Respondent is not looking to attract Internet users to Respondent’s website or other on-line location. Respondent is not trying to create a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or with the location of a product or service on Respondent’s website or location. Respondent is simply looking to reduce the amount of competition over the Internet for its driving course.

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”

Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the 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.

FINDINGS

Identical and/or Confusingly Similar  Policy ¶ 4(a)(i).

Complainant asserts that it has established rights in the AARP mark through registration with the United States Patent and Trademark Office and through continuous use in commerce since 1959. 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 determines that the <aarpdefensivedriver.com> and <aarpdefensivedriving.com> domain names registered by Respondent are confusingly similar to Complainant’s AARP mark because the domain names incorporate Complainant’s mark in its entirety, adding only the generic terms “defensive driver” and “defensive driving” and the “.com” generic top-level domain (gTLD). Complainant also provides evidence that the terms “defensive driver” and “defensive driving” are descriptive of Complainant’s driving safety course services. The Panel  further concludes that the mere addition of generic or descriptive terms and a gTLD to Complainant’s registered mark is irrelevant and fails to distinguish the disputed domain names. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top-level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Am. Online, Inc. v. Anytime Online Traffic Sch., FA 146930 (Nat. Arb. Forum Apr. 11, 2003) (finding that Respondent’s domain names, which incorporated Complainant’s entire mark and merely added the descriptive terms “traffic school,” “defensive driving,” and “driver improvement” did not add any distinctive features capable of overcoming a claim of confusing similarity); see also Space Imaging LLC v. Brownell, 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).

 

Rights or Legitimate Interests  Policy ¶ 4(a)(ii).

Complainant claims that Respondent has never been known by the <aarpdefensivedriver.com> and <aarpdefensivedriving.com> domain names. Therefore, the Panel determines that Respondent does not have rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c)(ii). See 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); 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").

Complainant contends that Respondent has used the disputed domain names to divert Internet users searching for Complainant’s products and services to Respondent’s competing website. The Panel finds that Respondent’s use of domain names confusingly similar to Complainant’s registered AARP mark to redirect Internet users to Respondent’s commercial website is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that Respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to Complainant’s mark, websites where Respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy); see also Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that Respondent’s diversionary use of Complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names); see also U.S. Franchise Sys., Inc. v. Howell, FA 152457 (Nat. Arb. Forum May 6, 2003) (holding that Respondent’s use of Complainant’s mark and the goodwill surrounding that mark as a means of attracting Internet users to an unrelated business was not a bona fide offering of goods or services).

Complainant states that Respondent offered to sell the disputed domain name registrations to Complainant for an amount that exceeds Respondent’s out-of-pocket costs directly related to the disputed domain names. The Panel finds that Respondent’s offer to sell the domain name registration for profit is evidence that Respondent lacks rights and legitimate interests pursuant to Policy ¶ 4(a)(ii). See Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s lack of rights and legitimate interests in the domain name is further evidenced by Respondent’s attempt to sell its domain name registration to Complainant, the rightful holder of the RED CROSS mark”); see also J. Paul Getty Trust v. Domain 4 Sale & Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000) (finding rights or legitimate interests do not exist when one has made no use of the websites that are located at the domain names at issue, other than to sell the domain names for profit).

Furthermore, the Panel is aware that once Complainant makes a prima facie case regarding Policy ¶ 4(a)(ii), the burden shifts to Respondent to establish rights or legitimate interests in the domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests with respect to the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name).

 

Registration and Use in Bad Faith  Policy ¶ 4(a)(iii).

The Panel finds that there is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). Complainant argues that, in the past, the <aarpdefensivedriver.com> and <aarpdefensivedriving.com> domain names resolved to a website that promoted a driver safety course, thereby confusing Internet users searching under Complainant’s mark and diverting them to a competing website. The Panel finds that Respondent commercially benefited when Internet users visited its website. Thus, the Panel finds that Respondent used a domain name confusingly similar to Complainant’s AARP mark to attract Internet users searching for Complainant’s products and services to Respondent’s website. See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where Respondent directed Internet users seeking Complainant’s site to its own website for commercial gain); see also Identigene, Inc. v. Genetest Lab., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where Respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that Complainant is the source of or is sponsoring the services offered at the site).

Complainant contends that Respondent used the disputed domain names to divert Internet users to Respondent’s website that offers driver safety courses. Respondent admits that it registered the disputed domain names in an attempt to reduce competition from Complainant. The Panel finds that Respondent registered the domain names primarily for the purpose of disrupting the business of a competitor pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by attracting Internet users to a website that competes with Complainant’s business); see also EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000)  (finding that the minor degree of variation from Complainant's marks suggests that Respondent, Complainant’s competitor, registered the names primarily for the purpose of disrupting Complainant's business).

Complainant asserts that Respondent attempted to sell the disputed domain name registrations to Complainant for more than Respondent’s out-of-pocket costs directly related to the domain names. The Panel finds that this offer to sell the domain name registrations evidences bad faith registration and use pursuant to Policy ¶ 4(b)(i). See Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where Respondent offered domain names for sale); see also Little Six, Inc v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding Respondent's offer to sell the domain name at issue to Complainant was evidence of bad faith); see also Dynojet Research, Inc. v. Norman, AF-0316 (eResolution Sept. 26, 2000) (finding that Respondent demonstrated bad faith when he requested monetary compensation beyond out-of-pocket costs in exchange for the registered domain name).

Complainant asserts that Respondent had actual and constructive knowledge of Complainant’s rights in the AARP mark because the mark is famous and because the mark is registered with the U.S. Patent and Trademark Office. The Panel finds that Respondent chose the disputed domain names based on the distinctive and well-known qualities of Complainant’s mark, which evidences bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO, a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof”).

 

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 <aarpdefensivedriver.com> and <aarpdefensivedriving.com> domain names be TRANSFERRED from Respondent to Complainant.

___________________________________________________

Honorable Richard B. Wickersham, Judge (Ret.), Panelist
Dated:  January 3, 2005

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