WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AGIRC, ARRCO v. Roustom, Aboudi, Aarrco Inc.
Case No. D2017-1805
1. The Parties
The Complainants are AGIRC and ARRCO of Paris, France, represented by SCAN Avocats, France.
The Respondent is Roustom, Aboudi, Aarrco Inc. of Vienna, Virginia, United States of America (“United States”), self-represented.
2. The Domain Name and Registrar
The disputed domain name <aarrco.com> is registered with Network Solutions, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 19, 2017. On September 19, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 19, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Complainant filed an amended Complaint on September 28, 2017, correcting the address of the Registrar for the disputed domain name.
The Center verified that the Complaint together with the amended 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 October 5, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 25, 2017. On October 24, 2017, the Center received a request by the Respondent for extension of the due date for Response, which was subsequently granted on the same day, extending the Response due date to October 29, 2017. The Response was filed with the Center on October 29, 2017.
The Center appointed Christopher J. Pibus as the sole panelist in this matter on November 14, 2017. 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.
On November 27, 2017, the Center issued Panelist Order No. 1, requesting that the Respondent provide further evidence with respect to the business associated with the name AARRCO. The Respondent submitted the response to Panelist Order No. 1, on December 1, 2017. The Complainant provided supplemental submissions on December 7, 2017, and the Respondent then submitted a further supplemental filing on December 8, 2017.
4. Factual Background
The Complainants are the French Federations AGIRC (General Association of Retirement Institutions for Executives), registered before the SIRENE Registry under No. 78464750500105 and ARRCO (Association for Employees’ Supplementary Pension Schemes), registered before the SIRENE Registry under No. 77566106900044.
The Complainants are the only institutions in France providing compulsory pension schemes for private sector employees. The Federation AARCO was created on December 8, 1961 and has been providing pension services continually since that date, to more than 30 million people in France.
The Complainant, ARRCO has since February 6, 1996, owned and operated a website in association with the domain name <arrco.fr>. The Complainants also own the following domain names:
<agirc-arrco.fr> - Registered July 25, 2002
<agircarrco-actionsociale.eu> - Registered June 8, 2010
<agircarrco-actionsociale.fr> - Registered April 28, 2017
The Complainants also own the following trademarks:
RETRAITE COMPLEMENTAIRE AGIRC ET ARRCO, Design, French Trademark No. 4213686 filed September 29, 2015;
RETRAITE COMPLEMENTAIRE AGIRC ET ARRCO, Design, French Trademark No. (09)3648315 filed May 4, 2009;
RETRAITE COMPLEMENTAIRE AGIRC ET ARRCO, French Trademark No. 3648314 filed May 4, 2009; hereinafter the “ARRCO trademark”.
The Respondent is a small business that was created in 1996, which is privately owned and managed by Aboudi Roustom and his wife Rana B. Roustom. The Respondent’s business was incorporated under the name Aarrco Inc. under the laws of the Commonwealth of Virginia in February, 2004, and provides speech-language pathology services to individuals and educational institutions in Virginia, United States.
The disputed domain name <aarrco.com> was created on April 26, 2001, and at the time the Complaint was filed, it reverted to a parking page, which featured links to websites owned by third parties.
5. Parties’ Contentions
Identical or Confusingly Similar
The Complainants submit that they own the trademark ARRCO, by virtue of their trademarks in France and their registered domain names. The Complainants assert that their domain name <arrco.fr>, which was registered on February 6, 1996, predates the registration of the disputed domain name. The Complainants submit that a domain name can qualify as a trademark for UDRP purposes (Caldsoft Way3D Sistemas Eireli EPP v. Jinsoo Yoon, WIPO Case No. D2016-2614). Furthermore, the Complainants submit common law rights in the mark ARRCO by virtue of its long term use since 1961.
The Complainants further contend that the disputed domain name is confusingly similar to the Complainants’ ARRCO trademark, since it incorporates the Complainants’ ARRCO trademark in its entirety, and the single addition of an extra letter “A” does not distinguish the disputed domain name from the ARRCO trademark.
Rights and Legitimate Interests
The Complainants submit that the Respondent is not commonly known by the name AARRCO, and that it has never authorized the Respondent to use the ARRCO trademark. Further, there is no evidence to suggest the Respondent has used, or undertaken demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods and services. The disputed domain name reverts to a parking page which features links to third party websites.
Registered and Used in Bad Faith
The Complainants submit that the Respondent has registered and used the disputed domain name in bad faith. The Complainants submit the Respondent is trading on the goodwill of the ARRCO trademark and directing customers to competing websites. The parking page associated with the disputed domain name features links to third party websites, some of which are in the French language and are direct competitors of the Complainants.
The Complainants contend that is highly unlikely that the Respondent was unaware of the Complainants’ ARRCO trademarks and services, because the Complainants are very well-known and have a long established reputation in the field of pension services. Further, the Complainants contend that the Respondent is interfering with the Complainants’ ability to conduct business by registering and using a confusingly similar domain name that directs customers to competitor websites.
The Respondent submits that the name AARRCO is an acronym which was created from the names of the Respondent Roustom and his wife: “Aboudi and Rana Roustom Company”. The Respondent incorporated the business AARRCO in the Commonwealth of Virginia in February, 2004. The company has provided speech-language pathology services to individuals and educational institutions in Virginia, for many years. In response to the Administrative Panel Procedural Order No. 1, the Respondent provided copies of tax returns for the business, speech and language licenses authorizing Rana Roustom to operate as a speech pathologist in Virginia, copies of invoices for the business, copies of marketing materials, namely business cards, copies of a void cheque for the business account, and a copy of a Speech Pathology Evaluation Report, demonstrating the use of the business name AARRCO for the last 16 years. The Respondent submits that it had no prior knowledge of the Complainants’ trademark rights in ARRCO, or its related services. The Respondent had never resided in France.
The Respondent submits that he and his wife were not aware of the Complainants’ rights in the ARRCO trademark at the time of registering the disputed domain name, that the name was created from a combination of the first letters of their names, that the disputed domain name has been used in the association with speech-language pathology services continuously for 16 years, and that accordingly the Respondent has a legitimate right and interest in the disputed domain name.
Further, the Respondent submits that he and his wife conducted necessary due diligence searches to ensure that the name AARRCO was not used by other entities before registering their business name in the state where they operate. The Respondent explains that he did not control the marketing messages displayed by Network Solutions on the website associated with <aarrco.com>, which is still under construction, although the URL serves as a platform for the Respondent’s e-mail accounts. Accordingly, the Respondent submits that the registration and use of the disputed domain name is in good faith.
6. Discussion and Findings
As a preliminary matter, the Panel will address the unsolicited supplemental filings of both the Complainant and the Respondent. WIPO Jurisprudential Overview 3.0, section 4.6, provides the following:
“Paragraph 10 of the UDRP Rules vests the panel with the authority to determine the admissibility, relevance, materiality and weight of the evidence, and also to conduct the proceedings with due expedition.
Paragraph 12 of the UDRP Rules expressly provides that it is for the panel to request, in its sole discretion, any further statements or documents from the parties it may deem necessary to decide the case.
Unsolicited supplemental filings are generally discouraged, unless specifically requested by the panel.
On receipt of a request to submit an unsolicited supplemental filing or the actual receipt of such filing, the WIPO Center will confirm receipt of the request or filing to the parties, and forward such request or filing to the panel for its consideration as to admissibility.
In all such cases, panels have repeatedly affirmed that the party submitting or requesting to submit an unsolicited supplemental filing should clearly show its relevance to the case and why it was unable to provide the information contained therein in its complaint or response (e.g., owing to some ʻexceptionalʼ circumstance).”
In this dispute, the Administrative Panel Procedural Order No. 1 was issued to seek clarification of certain facts pertaining to the business of the Respondent, and to determine whether the Respondent had ever resided in France, where the Complainant is well-known. The Respondent provided a response to the Order on December 1, 2017. Although, the Panelist did not invite a reply from the Complainant supplemental submissions were received from the Complainant, and this lead Respondent to make a further supplemental filing as well. In the circumstances, the Panelist has reviewed the unsolicited submission from the Complainant to ensure that its further arguments were fully considered. However, the Panel will not consider the further unsolicited arguments by Respondent, as it already had a full opportunity to raise its additional evidence and submissions.
According to paragraph 4(a) of the Policy, in order to succeed, the Complainants must establish each of the following elements:
(i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainants have rights;
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainants own relevant trademark rights in France for the trademark ARRCO, and common trademark rights in the ARRCO trademark by virtue of its long time use of the mark since 1961.
The Panel further finds that the domain name <aarrco.com> is confusingly similar with the Complainants’ ARRCO trademark. The disputed domain name contains one additional letter at the beginning of the mark, which is often considered to constitute typo-squatting under the Policy. Although the Panel does not find that the disputed domain <aarrco.com> is evidence of typo-squatting in the particular circumstances of this case, the Panel is prepared to find that the Complainants’ trademark ARRCO and the disputed domain name <aarrco.com> are confusingly similar. This finding is based solely on the overall similarity of the trademark and the domain name, and the low threshold for this element in the prescribed analysis under the Policy.
Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Panel has carefully considered the evidence filed by the Respondent in its initial response, and the supplementary materials provided in response to the Administrative Panel Procedural Order No. 1. Based on the factors set out below, the Panel is prepared to find that the Complainant has failed to prove the absence of a legitimate right and interest in the disputed domain name at the time the domain name <aarrco.com> was created and since that time.
The Respondent’s claim that the disputed domain name and corresponding business name were created as an acronym of the names of the Respondent and his wife is credibly supported by the various annexes filed in this dispute. The incorporation of the business AARRCO is substantiated by the Articles of Incorporation from the Commonwealth of Virginia, and the Notice dated January 15, 2004 from the Department of the Treasury, Internal Revenue Service assigning AARRCO Inc. an employer identification number. Furthermore, the Respondent has provided its U.S. Income Tax Returns from 2012 to 2016 to support use of the business name for several years. The evidence also includes certificates for Ms. Rana Roustom to establish that the business provides speech-language pathology services, which is a legitimate and bona fide use of the name under the Policy. The Panel also highlights the Speech and Language Evaluation Report dated January 19, 2008 which features the Respondent’s business name and logo, as tangible evidence that the business has operated under the name AARRCO for at least eight years.
The Panel therefore finds that the Respondent, who resides in the United States of America, was likely not aware of the Complainants’ rights in the ARRCO mark, when the disputed domain name was registered, as the Respondent himself has stated. Since the date of registration, the Respondent has also shown that it has been operating a legitimate business providing speech-language pathology services under the name of Aarrco Inc., all of which supports a finding of a legitimate right and interest in the disputed domain name.
Accordingly, the Panel finds that the Complainant has not satisfied the requirement under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
In view of the findings in paragraph 6(B), under Legitimate Rights and Interests, the Panel will not make a finding with respect to bad faith.
For the foregoing reasons, the Complaint is denied.
Christopher J. Pibus
Date: December 19, 2017