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and Mediation Center
American Diabetes Association. v. Domain Administration Limited
Case No. D2006-0921
1. The Parties
The Complainant is American Diabetes Association, of Alexandria, Virginia, United States of America, represented by Caesar, Rivise, Bernstein, Cohen, & Pokotilow, Ltd., United States of America.
The Respondent is Domain Administration Limited, David Halstead, of Auckland,
2. The Domain Name and Registrar
The disputed domain name <americandiabetesassociation.com> (the “Domain
Name”) is registered with IPNIC, INC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 19, 2006. On July 23, 2006, the Center transmitted by email to IPNIC, INC. a request for registrar verification in connection with the domain name at issue. On July 24, 2006, IPNIC, INC. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 26, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was August 15, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 18, 2006.
The Center appointed Andrew D. S. Lothian as the sole
panelist in this matter on August 31, 2006. 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 a nonprofit health organization relating to diabetes based in the United States of America. It is engaged in the business of providing diabetes education, awareness, fundraising, research and advocacy services to the public, as well as health care professionals. Since 1940, the Complainant has provided these services under the name and trademark AMERICAN DIABETES ASSOCIATION.
The Complainant is the registered owner of the United States federal trademark AMERICAN DIABETES ASSOCIATION (word mark), in connection with the following goods and services: conducting professional, familial and patient education programs on diabetes and promoting treatment and alleviation of the effects of diabetes through research. The registration number of the mark is 1218650 and its date of registration is November 30, 1982.
The Complainant has had a continuous online presence since 1995 at the web site “www.diabetes.org” on which it publishes details of its activities to Internet users. The site receives more than 500,000 visitors and more than 3.5 million page views per month.
According to the relevant WHOIS, the Domain Name was
registered on or about October 4, 2002. As at the date of this decision, the
web site associated with the Domain Name showed a series of hyperlinks which,
when clicked, displayed a series of further links under the heading ‘Sponsored
Results’, some but not all of which were concerned with diabetes-related
products or services.
5. Parties’ Contentions
The Respondent is in no way sponsored or endorsed by, or affiliated or connected with the Complainant. The Complainant’s diabetes research, information and advocacy services have been widely advertised and extensively offered under the trademark AMERICAN DIABETES ASSOCIATION throughout the United States, and the trademark has become, through widespread and favorable public acceptance and recognition, an asset of substantial value as a symbol of the Complainant, its quality services, and its goodwill.
The Complainant has priority of use as between the Respondent’s Domain Name and the Complainant’s trademark. The Respondent has no rights or interest to use the trademark and its use is without permission or authority of the Complainant.
The Domain Name is identical to the Complainant’s well known name and trademark, and thus confusion is inevitable. Internet users are highly likely to assume that the Domain Name is sponsored, licensed and/or otherwise approved by or in some way connected or affiliated with the Complainant.
The Respondent has not engaged in any use of the disputed domain name with the bona fide offering of any goods and services and has never been known by the names American Diabetes Association and/or Americandiabetesassociation.com.
The Respondent registered the Domain Name to trade upon the reputation and goodwill of the Complainant and to increase the amount of user traffic to its own web site. Such use does not constitute bona fide commercial or fair use. It defies credibility to think that the Respondent had any other purpose in mind.
The Respondent uses the Domain Name to attract, for commercial gain, users to its
web site by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s web site. The Respondent misleadingly directs visitors looking for the Complainant’s services on the Internet to a web site using popup pages and listing third party hyperlinks and has derived commercial gain thereby.
The fact that the Respondent uses the web site attached to the domain name to advertise diabetes related goods and services evidences a strong probability that the Respondent had actual notice of the Complainant’s rights prior to its registration of the Domain Name. This constitutes bad faith and directly contravenes Paragraph 4(b)(iv) of the Policy.
The Respondent did not reply to the Complainant’s
6. Discussion and Findings
Paragraph 4(a) of the Policy directs that the burden is on the Complainant to establish each of the following elements:
(i) That the Respondent’s Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) That the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) That the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has established that it has rights in the US registered trademark AMERICAN DIABETES ASSOCIATION, registered on November 30, 1982. When this is compared to the Domain Name, it can be seen that the Domain Name is identical to the Complainant’s trademark given that the generic top level domain (gTLD) “.com” can be disregarded for the purposes of comparison on the basis that it is wholly generic and given that it is not possible to reproduce white spaces in a domain name because of the naming rules.
Accordingly, the Panel finds that the Domain Name is identical to a trademark in which the Complainant has rights and that the Complainant has proved the first element required under paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Name. According to paragraph 4(c) of the Policy, a Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
“(i) before any notice to you [Respondent] of the dispute, your 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are 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 asserts that the Respondent (i) is not making a bona fide offering of goods or services and (ii) has never been known by the name contained within the Domain Name. Furthermore, the Complainant asserts (iii) that the Respondent is using the Domain Name for commercial gain to misleadingly direct consumers. The Respondent has chosen not to answer any of these contentions.
As far as sub-paragraph (i) is concerned, the Panel is satisfied that the Respondent’s web site, trading as it does upon the name, goodwill and reputation of the Complainant cannot be said to be a bona fide commercial or fair use of the Domain Name. As far as sub-paragraph (ii) is concerned, there is nothing apparent from the web site to which the Domain Name points to connect the Respondent to the Domain Name on any apparently legitimate basis, nor is there any other evidence available to the Panel by which the Respondent might contradict the Complainant’s submissions on this point. Finally, in terms of sub-paragraph (iii), it is highly likely in the Panel’s view that the web site associated with the Domain Name is being employed for commercial gain on a “pay per click” or sponsored advertising basis, and that such use will misleadingly divert consumers and tarnish the trademark at issue.
Finally, given that the Domain Name is an exact match for the name of the Complainant’s organization and trademark and could only relate to the Complainant, the Panel considers that it is extremely difficult to conceive of any possible legitimate use that the Respondent might have had in mind for the Domain Name.
In these circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name and accordingly that the Complainant has proved the second element required under paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The remaining question for the Panel is whether the Respondent has registered and is using the Domain Name in bad faith. On this subject, the Complainant submits that by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with the Complainant’s mark. This submission corresponds with paragraph 4(b)(iv) of the Policy.
The Domain Name is identical to the Complainant’s name and trademark and appears to the Panel to be uniquely referable to the Complainant and not to the Respondent. A likelihood of confusion is therefore inevitable. The Domain Name does appear to be employed by the Respondent to redirect Internet users to a web site from which the Respondent derives or intends to derive commercial gain (namely the so-called “Sponsored Results”). It is difficult to conceive of any possible good faith motivation that the Respondent might have had in registering and using the Domain Name in this way.
The Panel considers that it is reasonable to infer from the evidence presented
by the Complainant that the Domain Name has been registered and is being used
in bad faith and consequently that there is a case for the Respondent to answer.
The Respondent has chosen not to provide any alternative explanation for such
registration and use. The Panel therefore finds that the Complainant has proved
the third element required under paragraph 4(a) of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <americandiabetesassociation.com> be transferred to the Complainant.
Andrew D. S. Lothian
Dated: September 14, 2006