Domain name - Domain name dispute resolution policy - U.S. service mark - U.S. trademark - Identical - Confusingly similar - Bad faith registration - Bad faith use - Notification of Respondent Default

Complainant was registrant of United States service mark and United States trademark.  Respondent registered the domain name alcoholicsanonymous.net.  Complainant alleges that its registered mark and trademark are identical or confusingly similar and that the Respondent registered the domain name at issue in bad faith. 

Held, Name Transferred to Complainant.

Complainant must establish that the name was registered and used in bad faith. 

It is clear that the domain name ALCOHOLICSANONYMOUS.NET is identical or confusingly similar to the service mark and trademark registered and used by the complainant ALCOHOLICS ANONYMOUS.  It is also clear that the Respondent has no right or legitimate interest in the domain name at issue. 

It is a general principle of United States law that the failure of a party to submit evidence on facts in its control may permit the court to draw an adverse inference regarding those facts.  Since the Respondent failed to respond to the Complainant, bad faith registration and use is inferred. 

Policies referred to

Uniform Domain Name Resolution Policy, adopted August 24, 1999

Cases referred to

Mondich v Brown, WIPO Arbitration and Mediation Center, Administrative Panel Decision, Case No. D00-0004, February 16, 2000

 The Parties

The complainant is Alcoholics Anonymous World Services, Inc., a not-for-profit New York corporation located in New York, New York, United States of America (“Complainant”).  The respondent is Lauren Raymond, an individual, with an address of P.O. Box 7533, Phoenix, Arizona 85011, United States of America (“Respondent”).

 The Domain Name and Registrar

The domain name at issue is “alcoholicsanonymous.net”, registered with Network Solutions, Inc. (“NSI”) in the United States of America.

 Procedural History

Complainant submitted a Complaint to the World Intellectual Property Organization Arbitration and Mediation Center (the “WIPO Center”) electronically on January 14, 2000; the WIPO Center received a hard copy of the Complaint on January 18, 2000.  By written submission via courier on January 21, 2000, with copies to Respondent and to NSI, Complainant amended Paragraph 27 of the Complaint to add the following:
  “Complainant certifies that the information contained in this Complaint is to the best of Complainant's knowledge complete and accurate, that this Complaint is not being presented for any improper purpose, such as to harass, and that the assertions in this Complaint are warranted under these Rules and under applicable law, as it now exists or as it may be extended by a good-faith and reasonable argument.”

On January 19, 2000, NSI confirmed by e-mail to the WIPO Center that the domain name “alcoholicsanonymous.net” is registered with NSI and that the Respondent is the current registrant of the name.

On January 24, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 12, 2000, by which Respondent could file a Response to the Complaint, was transmitted to Respondent via email, post and courier, and to the entity and person listed on Respondent’s registration as technical, administrative, zone and billing contacts by email.  Efforts to send the Commencement Notification to the technical, administrative, zone and billing contact via facsimile on February 24, 2000 were unsuccessful in that the facsimile number was no longer in service, and a recorded message indicated that all inquiries should be sent by email to “[email protected]”.  Accordingly, on February 25, 2000, the WIPO Center also transmitted a copy of the Commencement Notification to “[email protected]” via email, and added “[email protected]” to the communications list in this matter for future correspondence.

On February 15, 2000, having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the WIPO Center transmitted to the parties a Notification of Respondent Default. 

On February 21, 2000, pursuant to Complainant’s request to have the dispute decided by a single-member panel, the WIPO Center appointed Sally M. Abel as Panelist.

Having reviewed the communications records in the case file, the Administrative Panel (the “Panel”) finds that the WIPO Center has discharged its responsibility under Paragraph 2(a) of the Uniform Rules “to employ reasonably available means calculated to achieve actual notice to Respondent.”  Therefore, the Panel shall issue its Decision based on the Complaint, the Policy, the Uniform Rules, the WIPO Supplemental Rules, and without the benefit of any Response from Respondent.

Factual Background
Complainant has provided evidence of registration of the following trademark and service mark in the United States Patent and Trademark Office:
  ALCOHOLICS ANONYMOUS for “book, pamphlets and printed cards”, in Class 16, “wall plaques and wood signs” in Class 20, and “association services-namely, promoting the interests of those concerned with alcoholism,” in Class 42. The mark is registered for a term of 20 years from April 9, 1985.  The registration recites a date of first use in 1939.

Complainant, a non-profit corporation, handles the affairs of “the fellowship of Alcoholic[s] Anonymous” in North America and elsewhere.  Complaint, Paragraph 7.  Alcoholics Anonymous, commonly known as “AA”, whose members are alcoholics, has used the name and mark ALCOHOLICS ANONYMOUS continuously since 1939 in connection with an unique, locally administered group program to assist “still-suffering” alcoholics, based on certain specified principles, steps and traditions.  Complaint, Paragraphs 7-10.  According to Complainant, there are more than 1,000,000 AA members in the United States and approximately 700,000 elsewhere.  Complaint, Paragraph 8.  Complainant alleges that based on its long and continuous use, the mark ALCOHOLICS ANONYMOUS “is associated exclusively with Complainant” and “its mark is “very well known, if not famous, to the general public”.  Complaint, Paragraph 12, 13.  Complainant also alleges that it has made “extensive efforts” to prevent unauthorized uses of the ALCOHOLICS ANONYMOUS mark.  Complaint, Paragraph 14. Complainant maintains an informational web site at “alcoholics-anonymous.org”.

On March 29, 1999, Respondent obtained the domain name “alcoholicsanonymous.net”.  At some point prior to filing the Complaint, Complainant allegedly contacted Respondent by mail requesting that Respondent “cease and desist use of Complainant’s mark in its domain name.”  Complaint, Paragraph 20.  The record contains no indication as to whether Respondent ever responded to that request.  Complainant alleges that Respondent has not complied with the request.  Complaint, Paragraph 20.

Parties’ Contentions

A. Complainant
The Complaint is sufficient under the notice pleading principles of the United States to allege that Respondent has registered a domain name which is identical to the mark registered and used by Complainant, that Respondent appears to have no rights or legitimate interests in respect to the domain name at issue, and that Respondent appears to have registered and used the domain name at issue in bad faith.

B. Respondent
Respondent has not contested the allegations of the Complaint.

Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute:  “A Panel shall 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.”  Since both Complainant and Respondent are domiciled in the United States, the Panel will look to rules and principles of law of the United States.

Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:

(1) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(2) that the respondent has no legitimate interests in respect of the domain name; and

(3) the domain name has been registered and used in bad faith.

The domain name “alcoholicsanonymous.net” is identical to the trademark registered and used by Complainant.  The first requirement of Paragraph 4(a) of the Policy is therefore satisfied.

As to the second and third requirements, Complainant alleges that Respondent “has no rights or legitimate interest” in the domain name due to Complainant’s “long prior use” of its mark (Complaint, Paragraph 18), and that Respondent selected the domain name and uses it “with the intent and purpose of creating likelihood of confusion and appropriating and trading upon Complainant’s considerable goodwill and reputation” (Complaint, Paragraph 21).  Complainant further alleges that Respondent has not ceased this wrongful behavior despite Complainant’s written request to cease and desist.  Complaint, Paragraph 20.

From Respondent, silence.  “It is a general principle of United States law that the failure of a party to submit evidence on facts in its control may permit the court to draw an adverse inference regarding those facts.”  Mondich v. Brown, WIPO Arbitration and Mediation Center, Administrative Panel Decision, Case No. D00-0004, February 16, 2000.  Respondent’s failure to respond to the Complaint allows the inference that the evidence would not have been favorable to Respondent.

Accordingly, the Panel finds that Respondent has not legitimate interests in respect of the domain name, and that Complainant has met its burden of demonstrating bad faith in the registration and use of the domain name.  There is nothing in the record to suggest that Respondent has any rights or legitimate interest in the domain name.  As to bad faith, the Policy provides that bad faith may be established by a showing that by using the domain name, Respondent “intentionally attempted to attract” users to its site “for commercial gain”, by creating a likelihood of confusion with Complainant’s mark as to “source, sponsorship, affiliation, or endorsement”.  Policy, Paragraph 4(b)(iv).  Complainant has alleged such bad faith and Respondent has chosen not to respond.  The Panel therefore infers that the necessary bad faith is established.

Decision
Because the undisputed evidence permits a finding in favor of Complainant on each element of its claim, and there is no evidence to the contrary, the Panel decides that the domain name registered by Respondent is identical to Complainant’s mark, Respondent has no rights or legitimate interests in respect of the domain name, and Respondent registered and used the domain name in bad faith.

Accordingly, the Panel requires that the registration of the domain name “alcoholicsanonymous.net” be transferred to the Complainant.

Sally M. Abel
Presiding Panelist
Dated:  March 6, 2000