Alcoholics Anonymous World Services, Inc. v. Friends of Bill W and Jimmy K

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

Alcoholics

Anonymous World Services, Inc. v. Friends of Bill W and Jimmy K

Case

No. D2001-1124

1. The Parties

Complainant in this case

is Alcoholics Anonymous World Services, Inc. According to its complaint, it

is a not-for-profit corporation incorporated under the laws of the State of

New York, U.S.A., with its principal place of business in the city of New York.

It is represented in this proceeding by Attorney Cynthia Clarke Weber of the

law firm Sughrue, Mion, Zinn, MacPeak & Seas, Washington, D.C., U.S.A.

The Respondent in this

case is an entity called the Friends of Bill W and Jimmy K. Respondent’s representatives

in this case call themselves the Admin Committee for <alcoholicsanonymous.org>,

appearing to be based in Palmdale, California, U.S.A.

2. The Domain Name

and Registrar

The dispute is with respect

to the following domain name (hereafter "the domain name"), <alcoholicsanonymous.org>.

The registrar with which

this domain name is registered is Network Solutions, Inc., U.S.A., (hereafter

"the Registrar").

3. Procedural History

The procedures for resolving

Complaints like this one are governed by the Uniform Domain Name Dispute Resolution

Policy (hereafter "The Policy") adopted by the Internet Corporation

for Assigned Names and Numbers ("ICANN") on August 26, 1999,

ICANN’s Rules for Uniform Domain Name Dispute Resolution Policy (hereafter "The

Rules"), as well as the Supplemental Rules of the WIPO Arbitration and

Mediation Center (hereafter "The Supplemental Rules").

The current dispute lies

within the scope of the Policy, so that this Panel does have proper jurisdiction

to hear and decide this dispute. The terms and conditions of the registration

agreement between the Registrar and the Respondents clearly incorporate the

Policy, so that Respondents were notified of the existence of the Policy’s provisions

for domain name dispute resolution. The Policy contains in its Paragraph 4(a)

the elements to be pleaded in order for a mandatory administrative proceeding

such as this one to be held: Complainant must allege that (i) Respondent’s domain

name is identical or confusingly similar to a trademark or service mark in which

the Complainant has rights; and (ii) Respondent has no rights or legitimate

interests in the domain name; and (iii) Respondent’s domain name has been registered

and is being used in bad faith. See the Policy, Paragraph 4 (a). In order to

successfully make its case, the Complainant must prove each of these three elements.

An electronic copy of the

Complaint was filed on September 14, 2001. A hardcopy of the Complaint was filed

on September 17, 2001. A request for Registrar Verification was made to the

Registrar on September 20, 2001, and such Verification was made on September

25, 2001. On October 1, 2001, the Center notified the Registrar of the filing

of the Complaint with the Center. On October 1, 2001, notification of the Complaint

was sent to Respondent. On October 23, 2001 a Notification was sent to Respondent

of its default. On October 25, 2001, Respondent filed an informal Response by

electronic mail, with copies to the Center and to Complainant’s legal representative

in this proceeding. Thereafter, Complainant sent a communication to the Center

requesting an additional opportunity to respond to certain allegations in the

Response dated October 25, 2001.

According to the Center’s

compliance checklist document, the Complaint has been filed in accordance with

the formal requirements of the Rules and the Center’s Supplemental Rules.

The Panel consists of a

single Panelist pursuant to Complainant’s request, with which the Respondent

agreed in its Response, see Section IV of Response, paragraph 13. The Panelist

was duly appointed by the Center. A "Statement of Acceptance and Impartiality

and Independence" was submitted to the Center by the Panelist on November

5, 2001, and the Panelist was appointed by the Center on November 7, 2001. A

decision on the Complaint is normally due within 14 days of the appointment

of the Panel under Paragraph 15(b) of the Rules. However, this deadline was

extended because of the issuance of Procedural Orders No. 1 and No. 2, described

below.

Soon after being constituted,

the Panel issued its Procedural Order No. 1 in this case, dated November 13,

2001, in which it requested Respondent to formalize its Response according to

the UDRP Rules requirements. It also provided Complainant an opportunity to

respond to Respondent’s allegations referred to earlier. Both parties had a

deadline of the close of business, U.S. Eastern Standard time on November 20,

2001 to provide the requested information.

The Panel then decided

to supersede its Procedural Order No. 1 with a more focused Procedural Order

No. 2 dated November 29, 2001, in which the Panel specifically asked Respondent

to sign and verify its Response in accordance with the Rules. Given the anonymous

nature of the organizations involved in this dispute, the Panel allowed Respondent

to use initials or an alias if it wished to do so. The deadline for receipt

of the signed and Verified Response by the Center was extended to December 11,

2001 to allow for hard copy delivery of this Order with proof of receipt by

Respondent.

The Center sent a copy

of both Procedural Orders to the Respondent’s technical contact person, Michael

Hughes of Hughes Electronic Commerce, Lancaster, California, U.S.A. by international

courier. The shipment tracking record of the courier company indicates that

the package was sent from the Center in Geneva, Switzerland on November 29,

2001, delivered to Mr. Hughes’ office and signed for on December 3, 2001.

However the phone number listed for Mr. Hughes was not functioning and had no

forwarding number. Likewise, the shipment tracking record of the courier company

for a subsequent attempt to deliver hard copies of these Procedural Orders to

Respondent’s administrative contact was also inconclusive as to actual receipt.

Communication of the Procedural Orders to Respondent and its technical contact

by electronic mail was unsuccessful because apparently, the mailbox for mailto:webmaster@alcoholicsanonymous.org

was full and the mails sent to technical contact’s email address were returned

to the Center as "user unknown".

Meanwhile, in response

to Procedural Order No. 1, the Complainant submitted a formal Reply on or about

November 22, 2001 (hereafter "the Reply"), which was accepted into

evidence by the Panel.

4. Factual Background

Complainant states that

since 1939, Complainant has continuously used the name "ALCOHOLICS ANONYMOUS

as a service mark, trademark and trade name (Complaint, Paragraph 10). Paragraph

11 of the Complaint states that Complainant is the owner of a valid and existing

U.S. trademark registration: ALCOHOLICS ANONYMOUS (U.S. Registration No. 1,329,499)

for "book pamphlets and printed cards; association services, namely, promoting

the interests of those concerned with alcoholism; wall plaques and wood signs."

A copy of this registration is attached to the Complaint as Exhibit A.

According to Paragraph

15 of its Complaint, the Complainant maintains a website at <alcoholics-anonymous.org>

5. Parties’ Contentions

Because of the difficulties

in communicating the Panel’s two Procedural Orders referred to in Section 3

of this decision to this particular Respondent which has seemed elusive, the

Panel has focused primarily on the strength of the arguments presented by Complainant

as verified by the Panel’s own independent visits to Respondent’s website containing

the domain name, as well as discussions with people familiar with the organization

of Alcoholics Anonymous worldwide.

Complainant alleges the

elements of its case as follows:

1. It has legitimate

intellectual property interests in the domain name, and

that Respondent has no

such interests (see Complaint, paragraphs10 – 18);

2. The domain name as

registered and used by Respondent is confusingly similar or nearly identical

to the "ALCOHOLICS ANONYMOUS mark (see Complaint, paragraph 17); and

3. Respondent has registered

and used the domain name in bad faith, as shown by:

- Respondent’s intent

in registering the domain name is "to confuse the purchasing public into

believing that Complainant maintains, or has approved, endorsed or is the sponsor

of, or is otherwise associated with Respondent’s web site", without explanation

for such registration (Complaint, paragraph 19);

- Respondent basically

provided false information to the Registrar by registering the domain name in

the name of "Friends of Bill W and Jimmy K" on one hand, but claiming

that the true Respondent in this case is instead "The Admin Committee of

Alcoholics Anonymous" (Reply, paragraphs 18 – 19)

- Complainant’s attempts

to negotiate with the Respondent for the domain name were not accepted by Respondent

(Complaint, paragraphs 21 – 24);

- On or about the week

of September 3, 2001, Respondent linked the domain name to a website maintained

at <hughes.net> which website contained a gambling element (Complaint,

paragraphs 25 – 31) and other similarly addictive elements the publicity of

which runs counter to Complainant’s primary mission and purpose, i.e

to lessen the ties of alcoholism and other addictive behaviors (also see Reply,

paragraphs 26 – 38, and 41).

- Respondent has tried

to offer the domain name for sale through a third party, <www.greatdomains.com>

- An allegation of

harassment by a third party (Complaint, Paragraph 32 and Exhibit H).

Finally, Complainant cites

the decision in Alcoholics Anonymous World Services, Inc. v. Lauren Raymond,

WIPO Case No. D2000-0007, in support of its case (Complaint, Paragraph 36).

As a result, Complainant

asks this Panel to issue a decision to the effect that the domain name be transferred

to Complainant, in accordance with Paragraph 4(i) of the Policy.

6. Discussion and

Findings

The Panel realizes that

this is a difficult case with somewhat unique circumstances. One of these is

the fact that this is a dispute involving non-profit organizations where the

domain name is not being contested for its commercial value.

Based on the considerations

referenced above the Panel finds as follows:

First, the correct Respondent

in this case is indeed the Friends of Bill W and Jimmy K, because this is the

entity listed by the Registrar as the registrant of the domain name. Bill W

is one of the founders of Alcoholics Anonymous, upon information and belief

of the Panel.

I. As regards proof

of element (1) above, intellectual property rights, the Panel finds:

a. Complainant has adequately

demonstrated its own intellectual property rights in the mark "ALCOHOLICS

ANONYMOUS".

b. As regards the lack

of legitimate interest or rights in the domain name, Respondent has, by virtue

of its claim to be one of the local groups representing the Alcoholics Anonymous

organization in its area, raised this issue for resolution.

Upon information and belief

of this Panel, Alcoholics Anonymous is a highly decentralized fellowship of

local organizations around the world, and Complainant acts primarily as a publishing

house in a very decentralized organizational structure of Alcoholics Anonymous.

Accordingly, the Panel

finds that Respondent does have some legitimate right to use the domain name

as well. It has buttressed its case by sending a brochure published by the General

Service Office of Alcoholics Anonymous in New York (The Complainant) entitled

"Ten Frequently Asked Questions About A.A. Web Sites." The existence

and contents of this brochure were not challenged by Complainant in its Reply

to Respondent’s Response. Nor does Complainant dispute Respondent’s status as

a locally-based Alcoholics Anonymous organization. The answers to questions

1, 5 and 7 clearly indicate authority of local organizations to set up local

alcoholics anonymous websites, and that Alcoholics Anonymous is a decentralized

organization – see for example:

Question 1: "How do

we start to set up a local A.A. web site?" (A: can be done upon forming

a local committee).

Question 5: "What

about linking to other sites?" (A: linking to other bona fide A.A. websites

is ok…each A.A. entity is autonomous and has its own group conscience.").

Question 7: "Will

the General Service Office of A.A. act as a ‘clearinghouse’ for local web sites?

(A: "There is no central authority in Alcoholics Anonymous, hence the General

Service Office is not a clearinghouse for local web sites.").

II. As regards proof of

element (2) above, the confusion between Complainant’s trademark and the domain

name as registered and used by Respondent, the Panel finds that the domain name

is confusingly similar to Complainant’s registered trademark.

III. As regards proof of

element (3) above, the bad faith registration and use elements, the Panel notes

that it is a settled principle of UDRP decisions that a Complainant must prove

both bad faith registration and bad faith use of the domain name.

a. On Complainant’s

claims of bad faith registration of the domain name, the Panel finds:

- Regarding the claim

that Respondent provided misleading information to the Registrar, the Panel

is not convinced that this is in fact the reason there is a difference between

the official registrant and the so-called Administrative Committee for Alcoholics

Anonymous, since anonymity is an important element in Respondent’s organization

and process.

- Regarding the claim

that Respondent registered the domain name with an "intent to confuse the

purchasing public", Complainant cites WIPO Case No. D2000-0007, Alcoholics

Anonymous World Services, Inc. v. Lauren Raymond on this point. However

in that case, the Respondent did not answer or challenge the complaint, and

the Panel drew a negative inference and therefore accepted all Complainant’s

allegations as true. This is not our situation in the present case, where Respondent

challenges vigorously, albeit in an informal, unverified Response.

b. On Complainant’s

claims of bad faith use of the domain name, the Panel finds:

- On the claim that

Respondent has shown bad faith by not completing negotiations between the parties

for transfer of the domain name, in general this Panel has not accepted in its

prior UDRP decisions, and does not accept in this case, evidence of success

or failure in negotiations between the parties as evidence of good or bad faith

on the part of any party. Admitting into this proceeding evidence taken from

settlement negotiations runs contrary to public policy adopted by all courts

in the U.S. at least, to encourage parties to settle their disputes amicably

by keeping confidential between them all evidence of their settlement negotiations.

- On links to gambling

and/or advertising site allegedly located on Respondent’s website, the Panel

finds that Complainant has not provided sufficient evidence to make its claim.

The Exhibits to the Complaint and Reply allegedly illustrating these gambling

and advertising sites illustrate some but not conclusive connections with Respondent’s

website. And the Declarations of Michelle White and Leigh Ann Lindquist, who

clicked onto Respondent’s website and followed various links there, only indicate

an indirect connection between Respondent’s website and the alleged gambling

sites. It is quite possible that these gambling sites were inserted by the web

host company, not necessarily at Respondent’s request.

- On the third-party

harassment claim, the Panel finds this to be only marginal on the merits.

- However, on the offer

to sell the domain name via the third-party <www.greatdomains.com> website,

the Panel visited this site independently on November 29, 2001 and did find

that the domain name was listed for sale, without limiting the sale price to

registration fees and costs. This constitutes bad faith use of the domain name,

according to examples given in the UDRP and a myriad of cases thereunder.

- Regarding disclaimers

by Respondent on its webpage to which the domain name resolves, at times disclaimers

can, depending upon their wording and prominence, mitigate claims of bad faith

use by a Respondent. In this case, the Panel observed in its own visit to Respondent’s

website, a number of disclaimers that were prominently posted so that the element

of bad faith use was highly mitigated. For example, on December 11, 2001, the

Panel visited Respondent’s website and found the following prominently posted

at the very top of Respondent’s home page, replicated below in an approximately

similar type style and size:

"AlcoholicsAnonymous.org

The

Unofficial Web Site for AA Related Information

alcoholicsanonymous.org

is not affiliated with Alcoholics Anonymous World Services, Inc."

The Panel also viewed

the following explanatory posting at the very bottom of Respondent’s home

page, which goes much further than an ordinary disclaimer:

" Click here to go

to the official web site for Alcoholics Anonymous

World

Services, Inc. ("The General Service Office of U.S./Canada").

The

General Services Office is the national office servicing A.A. in the U.S./Canada.

CLICK

HERE TO FIND LINKS FOR OTHER OFFICIAL WEB SITES

INCLUDING

NATIONAL OFFICES SERVING OTHER COUNTRIES!

Alcoholicsanonymous.org

is not affiliated with Alcoholics Anonymous World Services, Inc. These

pages are not endorsed or approved by Alcoholics Anonymous World Services, Inc.

They are solely provided by alcoholicsanonymous.org as part of its 12 step work

in reaching out to the alcoholic who still suffers. Some of the items on this

pages were originally published by A.A. World Services, but do not assume that

this implies continued approval by the General Services Conference for their

use in these pages. Alcoholics AnonymousÒ , A.A.Ò , and the Big BookÒ

are registered trademarks of Alcoholics Anonymous World Services, Inc. The GrapevineÒ

and A.A. GrapevineÒ are registered trademarks of The AA Grapevine, Inc."

An independent check by

the Panel on December 19, 2001 indicated that the hyperlink to Complainant’s

website as quoted above was functioning well.

IV. Finally, a legitimate

defense by a Respondent, even if bad faith were to be proven, is legitimate

business activity where the domain name plays an integral part and which is

not in competition with Complainant. This was the situation in the aoltrader.com

case, America Online, Inc. v. Frank Albanese, WIPO Case D2000-1604, January

25, 2001, where the Panel declined to transfer the <aoltrader.com> domain

name to Complainant AOL, Inc. because the Respondent was engaging in a legitimate,

non-competing business in which this domain name was an essential part – the

brokerage of AOL shares of stock.

A comparable situation

exists here, where Respondent is part of the worldwide, decentralized Alcoholics

Anonymous organization, although not necessarily always in agreement with Complainant’s

group within that organization. Its website is designed for similar, common

purposes to that of Complainant – to provide information and assistance to those

seeking help for alcoholism. Again, the Panel recognizes that this is not a

commercial situation, rather a dispute involving non-profit groups with similar

social goals.

7. Decision

Based upon the Panel’s

Findings in Section 6 above, and under its authority vested by Paragraph 4(i)

of the Policy, the Panel hereby finds that Complainant does have rights in the

"Alcoholics Anonymous" trademark, but that Respondent also has rights

to use the domain name based on the decentralized organizational structure of

Alcoholics Anonymous and Complainant’s own published website guidelines; that

the domain name is confusingly similar to Complainant’s trademarks; that the

case for bad faith registration of the domain name is not clear; that Complainant

has proven its case for bad faith use of the domain name based on attempted

sale of the domain name, although this element is mitigated by strong disclaimers

on Respondent’s website; and that even if bad faith were to be proven, that

Respondent is engaging in a legitimate, non-competitive activity with common

social goals to those of Complainant.

For each of these reasons,

the Panel concludes that Complainant has not met its full burden of proof under

the UDRP. However, this Panel’s decision should not be interpreted as a substantive

decision on the merits of any trademark infringement claim that Complainant

may ultimately choose to bring in court under applicable U.S. federal or state

law. Under the complex, unique circumstances and history of this case, it has

not been easy for this Panel to reach a decision and so this Panel would be

reluctant to have this decision stand as precedent for others unless the unique

circumstances were almost precisely duplicated.

Accordingly, the Panel

must find for the Respondent and decline Complainant’s request for transfer

of the domain name.

Paul E.

Mason

Sole Panelist

Dated: December

28, 2001

More cases by this complainant

• Alcoholics Anonymous World Services, Inc. — D2000-1508 · Terminated
• Alcoholics Anonymous World Services, Inc. — D2000-1507 · Terminated
• Alcoholics Anonymous World Services, Inc. — D2000-1506 · Terminated
• Alcoholics Anonymous World Services, Inc. — D2000-1505 · Terminated