WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

AARP v. Nikolay Nikolov, WhoIsGuard Protected / WhoIsGuard, Inc.

Case No. D2016-1239

1. The Parties

The Complainant is AARP of Washington, District of Columbia, United States of America (“United States”), represented by CSC Digital Brand Services AB, Sweden.

The Respondents are Nikolay Nikolov of Plovdiv, Bulgaria and WhoIsGuard Protected / WhoIsGuard, Inc. of Panama.

2. The Domain Name and Registrar

The disputed domain names <aarpphone.com>, <aarpphonenumber.com>, <aarpprovideronlinetool.net> and <aarpprovider.org> are registered with eNom, Inc, and the disputed domain name <aarpprovider.net> is registered with GoDaddy.com, LLC (collectively referred to as the “Domain Names”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 17, 2016. On June 20, 2016, the Center transmitted by email to the registrars eNom, Inc. and GoDaddy.com, LLC (the “Registrars”) a request for registrar verification in connection with the Domain Names. On June 21, 2016, the Registrars transmitted by email to the Center their verification responses confirming that the Respondent is listed as the registrant and providing the contact details.

On June 27, 2016, the Complainant requested the suspension of the proceedings. On the same date the Center notified the parties that the proceedings were suspended until July 27, 2016. On July 26, 2016 the Complainant requested the reinstitution of the proceedings. On July 27, 2016 the Center notified the parties that the proceedings were reinstituted.

The Center verified that the 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 the Respondent of the Complaint, and the proceedings commenced on August 2, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 22, 2016. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on August 23, 2016.

The Center appointed Jane Seager as the sole panelist in this matter on September 5, 2016. 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 organization founded in 1958 that aims to promote independence, dignity and purpose for older persons and enhance their quality of life. It assists its members with matters relating to healthcare, employment, income security, protection from financial abuse and travel. The Complainant has almost 38 million members, making it one of the largest organizations in the United States. In 2014, the Complainant had operating revenues of USD 1.49 billion and total assets of nearly USD 3.6 billion.

The Complainant has supplied evidence that it owns numerous registered trademarks in the term AARP, for example United States trademark registration n° 1046998, registered on August 24, 1976, which significantly predates the registration of the Domain Names.

The Domain Names were registered on the following dates: <aarpprovideronlinetool.net> on February 6, 2013, <aarpphone.com> and <aarpphonenumber.com> on April 25, 2013, and <aarpprovider.org> and <aarpprovider.net> on September 12, 2013.

Four of the Domain Names are pointing to websites prominently using the Complainant’s trademarks and logos and creating the erroneous impression that they are somehow affiliated with or connected to the Complainant, although certain of the information contained on such websites is false and misleading. Sponsored links to competing businesses also appear. The remaining Domain Name, <aarpprovider.net>, is pointing to a webpage containing the message “Sorry, but you are looking for something that isn’t here”.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that it is the owner of a number of trademark registrations across various jurisdictions, including the United States, Canada and the European Union, and evidences the following examples:

- European Union trademark registration n° 003283934, registered on November 18, 2007;

- European Union trademark registration n° 003283975, registered on April 11, 2005;

- Canadian trademark registration n° TMA621395, registered on October 1, 2004;

- United States trademark registration n° 1046998, registered on August 24, 1976;

- United States trademark registration n° 1047005, registered on August 24, 1976;

- United States trademark registration n° 2461155, registered on June 19, 2001; and

- United States trademark registration n° 1047005, registered on May 1, 2007.

The Complainant states that it licenses its registered trademarks to business entities that provide products and services tailored to meet the specific needs of people over 50, but only after careful evaluation of the potential licensee and product. In addition, it underlines that it uses its registered trademarks in other ways to further its social mission, for example its media team circulates a number of publications under the AARP trademark, including “AARP The Magazine”, the world’s largest circulation magazine with a readership of over 47 million people. The Complainant adds that it also publishes major reports on health and financial security trends affecting people over 50 through the AARP Public Policy Institute.

The Complainant argues that the AARP trademark is distinctive and well-known and has been used for nearly 60 years in connection with the services and products that the Complainant offers. In addition, the Complainant points out that it maintains a strong Internet presence through its websites and other digital profiles, and it receives almost 5.4 million unique monthly visitors via its “www.aarp.org” website.

In summary, the Complainant argues that its brand and trademarks are well-recognized by consumers, industry peers and the broader community, and that as a result of its extensive and continuous use of the AARP trademarks and significant investments to promote and protect its trademarks across the Internet and world, the Complainant should be recognized as enjoying a substantial degree of public recognition in the AARP trademark, and the AARP trademark should be seen as uniquely and distinctly associated with the Complainant.

Turning to each of the requirements under the Policy, the Complainant asserts as follows:

(i) The Domain Names are confusingly similar to the Complainant’s trade mark

The Complainant points out that, when comparing the Domain Names to the Complainant’s trademarks, the relevant comparison to be made is only between the second-level portion of the Domain Names and the Complainant’s trademarks. The Complainant argues that, in creating the Domain Names, the Respondent has added the generic, descriptive terms “phone,” “phone number,” “provider” and “provider online tool” to the Complainant’s AARP trademark, thereby making the Domain Names confusingly similar to the Complainant’s trademark. The Complainant asserts that the fact that such terms are closely associated with the Complainant’s brand and trademark only serves to underscore and increase the confusing similarity between the Domain Names and the Complainant’s trademark.

In particular, the Complainant underlines the following in relation to each specific term:

- “phone”: the Complainant is a nonprofit organization that advocates for Americans over 50, including licensing its brand to vetted products and services tailored to meet their specific needs. Among those products and services are discounted cellular phone plans that offer consumer-friendly terms and are associated with phones designed for heightened usability.

- “phone number”: the Complainant maintains a customer service phone number that its members are able to dial for support with their membership. The Complainant also maintains several member support phone numbers, including toll-free numbers in the United States, a number providing support in Spanish, and a phone number for international callers.

- “provider”: the Complainant advocates for its membership by licensing its brand to a wide range of vetted products and services, such as health insurance and restaurant discounts, which are all offered through the Complainant’s chosen providers.

- “provider online tool”: the Complainant uses the website “www.aarp.org” to connect with its membership in a variety of ways. For example it has created various online tools that direct its members to a variety of membership benefits, including the products and services offered through the Complainant’s providers. Furthermore, certain of the Complainant’s providers have set up online tools used to support the Complainant’s members.

The Complainant points out that previous UDRP panels have consistently held that a disputed domain name consisting merely of a complainant’s trademark and an additional term that closely relates to and describes that complainant’s business is confusingly similar to that complainant’s trademarks.

The Complainant also argues that the Respondent’s use of the Domain Names contributes to the initial confusion. The Complainant points out that the Respondent is using the Domain Names <aarpphone.com>, <aarpphonenumber.com>, <aarpprovider.org> and <aarpprovideronlinetool.net> to point to websites prominently featuring the Complainant’s AARP trademark and disseminating information about the Complainant, some of which is wholly false and has been created without authorization by the Complainant and without regard to the veracity of the statements made. The Complainant therefore argues that the Respondent intended the Domain Names to be confusingly similar to the Complainant’s trademark as a means of furthering consumer confusion.

The Complainant states that the websites create the false impression that the Respondent and his websites are somehow affiliated with or connected to the Complainant, but they are not. For example, text found on the website at the Domain Name <aarpphone.com> reads, “The AARP phone is a special type of phone aimed at aged people. The AARP lobbied for special phones for the older people. This led to the formation of the AARP phone for seniors.”

In this regard the Complainant states that it has called for phones that meet the needs of older Americans and does partner with various phone companies to provide discounts to its members, and argues that the Respondent references such facts to cause Internet users to believe that the website content is accurate, suggesting that the Domain Name is associated with the Complainant’s legitimate business relationships. However, the Complainant does not manufacture phones, there is no specific product entitled the “AARP phone”, and the Respondent is not a distributor of the Complainant’s branded cellular phone plans.

In the Complainant’s opinion, this evidences the Respondent’s disregard for the veracity and accuracy of his invocation of the Complainant’s brand. The Respondent is intentionally misleading Internet users by supplying certain information related to the Complainant, but then coupling those facts with false information, which causes further confusion. Thus, the illegitimate use of the Domain Names should be considered as contributing to their confusing similarity to the Complainant’s trademark.

(ii) The Respondent has no rights or legitimate interests in the Domain Names

The Complainant underlines that the Respondent is not sponsored by or affiliated with the Complainant in any way and has not given the Respondent permission to use the Complainant’s trademarks in any manner, including in domain names. The Complainant argues that no evidence, including the WhoIs record for the Domain Names, suggests that the Respondent is commonly known by the Domain Names, and the Respondent cannot be regarded as having acquired rights to or legitimate interests in them.

The Complainant states that the Respondent is using the Domain Names <aarpphone.com>, <aarpphonenumber.com>, <aarpprovider.org> and <aarpprovideronlinetool.net> to redirect Internet users to websites featuring links to third-party websites, some of which directly compete with the Complainant’s business. Among those pay-per-click links are links for low-cost senior life insurance, accounting software, clothing retailers, free cell phones, Medicare plans, and medical billing services. Aside from creating the false impression that the Complainant is affiliated with certain of these services and companies, the Complainant asserts that the Respondent is also presumably receiving pay-per-click fees. In the Complainant’s opinion, the use of content purportedly related to the Complainant, despite much of it being false, is merely a perfidious and transparent attempt by the Respondent to lend legitimacy to the websites in an attempt to induce Internet users to click on the pay-per-click links. Thus the Complainant argues that the Respondent is monetarily benefitting from the use of the Complainant’s AARP mark.

The Complainant points out that prior decisions under the Policy have consistently held that respondents who monetize domain names using pay-per-click links have not made a bona fide offering of goods or services that would give rise to rights or legitimate interests in a disputed domain name. As such, the Complainant asserts that the Respondent is not using the Domain Names to provide a bona fide offering of goods or services nor is making a legitimate noncommercial or fair use. Specifically, the Complainant underlines that the Respondent’s inclusion of the Complainant’s AARP logo within the video imbedded on the website linked to the Domain Name <aarpprovideronlinetool.net>, as well as in the title of the website linked to the Domain Name <aarpphone.com>, without the Complainant’s consent, is a direct effort to take advantage of the fame and goodwill that the Complainant has built in its brand. In the Complainant’s opinion, the Respondent is thus not only using confusingly similar Domain Names, but is also imitating the Complainant illegitimately and without authorization, also known as “passing off”.

The Complainant also points out that the Respondent is using the Domain Name <aarpprovider.net> to redirect Internet users to a website that resolves to a blank page and lacks content. The website reachable at this Domain Name reads “Sorry, but you are looking for something that isn’t here”. The Complainant argues that the Respondent has therefore not demonstrated any attempt to make legitimate use of this Domain Name, which evinces a lack of rights or legitimate interests, a conclusion supported by numerous past UDRP panels.

Finally, the Complainant states that the Respondent registered the Domain Names during a period ranging from February 6, 2013 to September 12, 2013, which is significantly after the Complainant filed for registration of its AARP trademark in the United States, Canada and the European Union, and significantly after the Complainant’s first use in commerce of its trademark in 1958 and the registration of its <aarp.com> domain name in 1994.

(iii) The Domain Names were registered and are being used in bad faith

The Complainant states that it and its AARP trademark are known internationally, with trademark registrations across numerous jurisdictions, including in the European Union, covering Bulgaria where the

Respondent resides (according to the WhoIs details). The Complainant has conducted business using this trademark since 1958, approximately 55 years before the Respondent’s registration of the Domain Names. The Complainant’s <aarp.org> domain name was registered in 1994, nearly 20 years before the Respondent’s registration of the Domain Names.

The Complainant argues that the composition of the Domain Names, coupled with the Respondent’s specific references to the Complainant, provision of certain facts related to the Complainant, and use of the AARP logo in a video imbedded on the website to which the Domain Name <aarpprovideronlinetool.net> is pointing, undeniably demonstrate that the Respondent had actual knowledge of and familiarity with the Complainant’s brand and business. The fact that the Complainant has owned the domain name <aarpprovideronlinetool.com> since 2007, which is identical to the Respondent’s Domain Name <aarpprovideronlinetool.net> in every way except for the Top-Level Domain, further indicates that the Respondent is targeting the Complainant. The Complainant asserts that the Respondent is using the Domain Names <aarpphone.com>, <aarpphonenumber.com>, <aarpprovider.org> and <aarpprovideronlinetool.net> to host websites which feature the Complainant’s AARP trademark and provide information about the Complainant in such a way as to confuse Internet users into believing that the Domain Names and their corresponding websites are somehow affiliated with the Complainant.

In light of the facts set forth within the Complaint, the Complainant argues that it would not be possible to conceive of a plausible situation in which the Respondent was unaware of the Complainant’s brands at the time that the Domain Names were registered. In other words, the AARP trademark is so closely linked and associated with the Complainant that the Respondent’s use of this trademark, or any variations thereof, strongly implies bad faith. The Complainant underlines that the Domain Names incorporate the Complainant’s AARP trademark in its entirety while adding the generic, descriptive terms “phone,” “phone number,” “provider” and “provider online tool,” and the Respondent then makes direct reference to the Complainant on the corresponding websites, thus making it impossible to believe that the Respondent coincidentally selected the Domain Names without any knowledge of the Complainant and its trademarks. Performing searches across a number of Internet search engines for “aarp phone,” “aarp phone number”, “aarp provider” and “aarp provider online tool” returns multiple links referencing the Complainant and its business, putting the Respondent on constructive notice of the Complainant’s rights to the AARP name.

The Complainant states that the direct references to facts regarding the Complainant in the Domain Names, as well as the use of the Complainant’s registered AARP logo, evidence the Respondent’s clear knowledge of the Complainant’s trademark rights at the time of registration. But even if the Respondent had no actual knowledge of the Complainant, the Complainant argues that the Respondent may still be held to have constructive knowledge of the existence of the Complainant’s trademarks because the Complainant has been in business since 1958 and maintains a membership of nearly 38 million people, one of the largest memberships in the United States. The Complainant asserts that this, together with its operating revenues and total assets, demonstrates the Complainant’s fame and the scope of its business. As such, the Complainant argues that the registration of the Domain Names, containing the Complainant’s well-known trademarks, constitutes bad faith per se.

The Complainant points out that the Policy provides that bad faith is established when a respondent has “intentionally attempted to attract, for commercial gain, Internet users to [Respondent’s] website…by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the web site or location of a product or service on [Respondent’s] website or location.” In this case, the Complainant argues that the Respondent has created an initial likelihood of confusion with the Complainant and its trademarks by registering the Domain Names that incorporate the Complainant’s famous AARP trademark in its entirety while adding the generic, descriptive terms “phone,” “phone number,” “provider” and “provider online tool.” The Respondent then furthers this confusion through the illegitimate use of the corresponding websites. In the Complainant’s view, registration and illegitimate use together demonstrate that the Respondent is using the Domain Names to confuse unsuspecting Internet users looking for the Complainant’s services and misleading Internet users as to the ownership of the Domain Names and websites. By creating a strong likelihood of confusion between the Complainant’s trademarks and the Domain Names, the Respondent has demonstrated a nefarious intent to capitalize on the fame and goodwill of the Complainant’s trademarks in order to increase traffic to the corresponding websites for the Respondent’s own pecuniary gain, as evidenced by the presence of multiple pay-per-click links.

The Complainant points out that, although the Domain Name <aarpprovider.net> currently resolves to an inactive site and is not being used, previous UDRP panels have noted that bad faith use in the context of the Policy does not require a positive act on the part of the Respondent, and passively holding a domain name can constitute a factor in finding bad faith registration and use. In the Complainant’s view, in this case the Domain Name <aarpprovider.net> is confusingly similar to the Complainant’s trademarks, and the Respondent has made no use of it, factors which should be duly considered in assessing bad faith registration and use.

At the time of filing of the Complaint, the Respondent was using a privacy service to hide his identity and ownership of the Domain Name <aarpprovider.org>, and the Complainant points out that previous UDRP panels have held that this serves as further evidence of bad faith registration and use. The Respondent initially registered the Domain Name <aarpprovider.org> using the WhoIs details associated with the other Domain Names, but then elected to utilize a privacy protection service to shield his true identity and prevent the Complainant from contacting him. In the Complainant’s opinion, this should be considered an additional factor in establishing the Respondent’s bad faith.

The Complainant points out that the Respondent has registered numerous Domain Names that infringe upon the Complainant’s AARP trademark, and argues that the sheer number of infringing Domain Names demonstrates that the Respondent is engaging in a pattern of cybersquatting, which is evidence of bad faith registration and use.

In the Complainant’s opinion, the Respondent’s failure to cooperate with the Complainant’s attempts to resolve this matter outside of formal proceedings further evidences bad faith registration and use. The Complainant first tried to contact the Respondent on October 21, 2015 through a cease-and-desist email. In that communication, the Complainant advised the Respondent of the unauthorized use of the AARP trademark and requested that the Respondent immediately cease using it. After receiving no reply from the Respondent, a second letter was sent on October 29, 2015. The Respondent replied denying any wrongdoing and stating that his websites did not use the AARP trademark or logo and that they did not have any commercial function and were merely informative. The Complainant argues that these statements were clearly false as (i) the AARP trademark and logo are used repeatedly throughout the websites linked to the Domain Names, (ii) the Respondent has posted numerous pay-per-click links on such websites in an attempt to profit from Internet users who may click on them, and (iii) these websites are not informative, as the Respondent provides false and misleading information related to the Complainant, thus potentially damaging the Complainant’s reputation and goodwill and confusing Internet users.

The Complainant replied to the Respondent on October 30, 2015 providing a detailed explanation of the infringing behavior, and again asking the Respondent to cease using the AARP trademark. The Respondent did not respond or cease using the AARP mark. A fourth email was sent to the Respondent on November 24, 2015, to which the Respondent replied insisting that he had not acted in bad faith. A final notice from the Complainant was sent to the Respondent on December 17, 2015, again covering the issues in detail and providing numerous ways for the Respondent to contact the Complainant.

The Complainant thus points out that, despite the Complainant’s best efforts to resolve the matter amicably, the Respondent remains uncooperative and has taken no meaningful steps to resolve the issues at hand. In the Complainant’s opinion, the Respondent’s refusal to cooperate in this matter, or even engage in meaningful dialogue to resolve it, is further evidence of the Respondent’s bad faith registration and use of the Domain Names.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that to obtain the transfer of the Domain Names, the Complainant must prove each of the following three elements:

(i) the Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the Domain Names; and

(iii) the Domain Names have been registered and are being used in bad faith.

The standard of proof is on the balance of probabilities (Nintendo of America Inc. v. Fernando Sascha Gutierrez, WIPO Case No. D2009-0434).

Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Furthermore, paragraphs 10(b) and 10(d) of the Rules provide that the Panel shall ensure that the parties are treated with equality and shall determine the admissibility, relevance, materiality and weight of the evidence.

In addition, paragraph 14(b) of the Rules further provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under, the Rules, the Panel shall draw such inferences therefrom as it considers appropriate.

The Panel notes that the Respondent has failed to respond to the Complaint. The Respondent’s failure to respond, however, does not automatically result in a decision in favor of the Complainant, although the Panel is entitled to draw appropriate inferences therefrom, in accordance with paragraph 14(b) of the Rules. See paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).

Taking the aforementioned provisions into consideration, the Panel finds as follows:

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Panel to first consider whether the Complainant has established relevant trademark rights. The Complainant has provided evidence of a number of registered trademarks in the term AARP across various jurisdictions, including the United States, Canada and the European Union, for example United States trademark registration n. 1046998, registered on August 24, 1976.

As mentioned above, the Panel is also required under paragraph 4(a)(i) of the Policy to examine whether the Domain Names are identical or confusingly similar to the Complainant’s trademark. In this regard, the Panel notes that the Domain Names all incorporate the Complainant’s AARP trademark in its entirety, together with the addition of the following descriptive terms: “phone,” “phone number,” “provider” and “provider online tool”. The Panel agrees with the Complainant that the mere addition of these terms is insufficient to avoid a finding of confusing similarity with the Complainant’s trademark. Indeed they only serve to increase such confusing similarity, given that such terms are closely associated with the Complainant and its field of activity, as argued at length by the Complainant.

Furthermore, it is widely accepted that the “.com”, “.net” or “.org” generic Top-Level Domains (“gTLDs”) are generally irrelevant for the purpose of assessing identity or confusing similarity between a trademark and a domain name.

The Panel therefore finds that the Domain Names are confusingly similar to the Complainant’s trademark. Accordingly, the Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out a list of non-exhaustive circumstances that may suggest that a respondent has rights or legitimate interests in a domain name, including:

(i) before any notice to the respondent of the dispute, the respondent’s 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) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or

(iii) the respondent is 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.

Based on the statements and evidence put forward by the Complainant, the Panel finds that the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in the Domain Names and that, as a result of its default, the Respondent has failed to rebut such a showing.

The Respondent cannot be considered to be making a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy referred to above, and neither can such use be said to be a legitimate noncommercial or fair use of the Domain Names within the meaning of paragraph 4(c)(iii). Four of the Domain Names are pointing to active websites which, in the Panel’s opinion, have been deliberately designed to confuse Internet users and make them believe that such websites are linked to the Complainant. Furthermore, these websites contain sponsored links and the Panel believes that the Respondent is undoubtedly obtaining revenue as a result of confused Internet users clicking on them, believing them to lead to products and services endorsed by the Complainant as a result of the confusion and false information supplied by the Respondent. The Panel agrees with the Complainant that the Respondent has deliberately created such content to lend legitimacy to his websites with scant regard for accuracy and with the ultimate aim of increasing his revenue from the sponsored links. It is well established under the Policy that, by using the Domain Names in this manner, the Respondent cannot be said to be making either a bona fide offering of goods or services or a legitimate noncommercial or fair use of them in accordance with the Policy.

In this regard it is also clear that the mere registration of a domain name does not confer a right or legitimate interest, and the Respondent’s passive holding of the Domain Name <aarpprovider.net> is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use.

Furthermore, the Complainant has stated that it has not authorized the Respondent to make any use of its trademark and it is highly unlikely that the Respondent would be “commonly known” by the Domain Names, as referred to at paragraph 4(c)(ii) of the Policy, given the notoriety surrounding the Complainant’s trademark and the information provided in the WhoIs.

The Panel is also of the view that the Respondent’s refusal to engage with the Complainant before the Complaint was filed and his failure to submit a Response is, in the circumstances of this case, also evidence of the Respondent’s lack of rights or legitimate interests in the Domain Names. See Pomellato S.p.A v. Richard Tonetti, WIPO Case No. D2000-0493 (“non-response is indicative of a lack of interests inconsistent with an attitude of ownership and a belief in the lawfulness of one’s own rights”).

The Panel therefore finds that the Respondent has no rights or legitimate interests in the Domain Names. As such, the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, including:

(i) circumstances indicating that the respondent has registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the disputed domain name; or

(ii) the respondent has registered the disputed domain name in order to prevent the complainant from reflecting the complainant’s trademark or service mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.

The evidence put forward by the Complainant shows that the registration of the Complainant’s AARP trademark predates the Domain Names by many years, and that such trademark has been extensively used by the Complainant. Based on the detailed evidence provided by the Complainant, the Panel understands that the Complainant’s reputation is significant and has been so since well before the Domain Names were registered in 2013. The Panel therefore finds, on the balance of probabilities, that the Respondent was aware of the Complainant’s rights at the time of registration of all of the Domain Names, and thus registered them in bad faith seeking to profit from the Complainant’s rights.

Moreover, the Panel further finds that the Respondent’s current use of four of the Domain Names (<aarpphone.com>, <aarpphonenumber.com>, <aarpprovideronlinetool.net> and <aarpprovider.org>) to point to deliberately confusing websites containing false information and sponsored links is clear evidence of bad faith. The Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website, in accordance with paragraph 4(b)(iv) of the Policy. In this regard the Panel believes that the Respondent’s bad faith is exacerbated by the fact that his target audience undoubtedly consists of older Internet users, based on the nature of the Complainant’s organization, who may therefore be more vulnerable and likely to believe that the websites at the Domain Names are linked to the Complainant.

As far as the use of the Domain Name <aarpprovider.net> is concerned, it has long been established that passive holding of a domain name does not prevent a finding of bad faith. Under the circumstances, including the Respondent’s registration and use of a number of very similar Domain Names, and given no explanation from the Respondent, the Panel here finds sufficient indicia of bad faith to satisfy the Policy.

Finally, upon receipt of the Complaint, the Respondent immediately agreed to transfer the Domain Names, but then became completely unresponsive. In the Panel’s opinion, such behavior was deliberately calculated to delay the proceedings, not to settle them but instead to retain ownership of the Domain Names for as long as possible, and thus continue to receive any corresponding pay-per-click revenue. This also emphasizes the Respondent’s bad faith, together with his decision to use a privacy protection service in relation to the Domain Name <aarpprovider.org>.

The Panel therefore finds that the Respondent registered and is using the Domain Names in bad faith, in accordance with paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <aarpphone.com>, <aarpphonenumber.com>, <aarpprovider.net>, <aarpprovideronlinetool.net> and <aarpprovider.org> be transferred to the Complainant.

Jane Seager
Sole Panelist
Date: September 19, 2016