iaa.org UDRP: Despite no response panel finds Reverse Domain Name Hijacking

The Illinois Agricultural Association did its best to claim rights to the domain iaa.org via the UDRP process—all attempts fell flat as the sole panelist at the Forum tore them all apart.

According to the Complainant, the domain was registered on February 21, 1996 all while Complainant’s active US registration for IAA was issued in 1989 and Complainant has common law rights dating back to at least 1912 predating that of the domain by more than 84 years.

The panelist noted that the IAA name wasn’t really in use since 1916:

Assuming for present purposes that Complainant is claiming common law rights in the mark “IAA”, the Panel is not satisfied, on the evidence provided, that Complainant has shown that it has common law trademark rights in IAA. Complainant’s Exhibit 5 shows a webpage stating: “We planted our roots as the Illinois Agricultural Association (IAA) in DeKalb, Illinois in 1912 and then became the Illinois Farm Bureau® (IFB) at the state level in 1916”. That Exhibit also shows a webpage entitled “IAA Foundation”. Neither webpage is evidence that IAA is used otherwise than as the name of Complainant, as distinct from a name, logo or slogan recognized by consumers as distinguishing Complainant’s goods or services from those offered by others. The Complaint itself expressly uses “IAA” as a reference to the name of Complainant.

As for the attempts by the Complainant to acquire the domain and then filing a UDRP, they saw it as a “Plan B” approach:

As noted, the iaa.org domain name was registered 29 years ago, in February 1996, some 7 years after the registration of Complainant’s mark. On January 28, 2025, Complainant’s Counsel, on behalf of Complainant, offered to buy the domain name from the Illinois Mathematics and Science Academy’s Alumni Association (“IMSA”) for 5,000 USD. The offer was declined. On March 7, 2025, Complainant’s Counsel increased the offer to 8,000 USD. On March 27, 2025, IMSA clarified that it was not the owner of the domain name. The Complaint was filed on April 16, 2025.

In the Panel’s view, this is a classic “Plan B” case, i.e., using the Policy after failing in the marketplace to acquire the domain name. This stratagem has been described in several UDRP cases as “a highly improper purpose” and has contributed to findings of RDNH.  […]  The Panel therefore finds that the Complaint was brought in bad faith and constitutes an abuse of this administrative proceeding.

Final decision: Deny the transfer of the domain iaa.org to the Complainant with a finding of Reverse Domain Name Hijacking.

Illinois Agricultural Association v. James Browne / IMSA Alumni Association

Claim Number: FA2504002150996

PARTIES

Complainant is Illinois Agricultural Association (“Complainant”), represented by Joel R. Samuels of Harness, Dickey & Pierce, PLC, Missouri, USA. Respondent is James Browne / IMSA Alumni Association (“Respondent”), California, USA.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is iaa.org, registered with NameCheap, Inc.

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

Alan L. Limbury, as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on April 16, 2025. Forum received payment on April 16, 2025.

On April 17, 2025, NameCheap, Inc. confirmed by e-mail to Forum that the iaa.org domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On April 18, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 8, 2025 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@iaa.org. Also on April 18, 2025, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.

On May 9, 2025, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, Forum appointed Alan L. Limbury as Panelist.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant, Illinois Agricultural Association (“Complainant” or “IAA”), is the record owner of United States Trademark Reg. No. 1527542 for IAA & COUNTY AGRICULTURAL ASSOCIATIONS & Design, registered Feb. 28, 1989. Additionally, Complainant asserts common law rights in IAA dating back to at least 1912. Complainant’s common law rights and federal registration will be referred as the “IAA Mark.”

The iaa.org domain name is confusingly similar to Complainant’s registered IAA Mark. The incorporation of a trademark in its entirety into a domain name is sufficient to establish that the domain name is identical or confusingly similar to a registered trademark. See Hürriyet Gazetecilik ve Matbaacılık Anonim Şirketi v. Moniker Privacy Services / Kemal Demircioglu, D2010-1941 (WIPO Jan. 28, 2011) (“a domain name that reproduces the trademark in its entirety is confusingly similar to the mark” when the disputed domain names “hürriyet.com”, “hürriyetemlak.com”, and “hürriyetoto.com” fully incorporated the complainant’s HURRIYET mark); see also Bayerische Motoren Werke AG, Sauber Motorsport AG v. Petaluma Auto Works, D2005-0941 (WIPO Oct. 20, 2005) (“It has been stated in several decisions by prior UDRP administrative panels that incorporating a trademark in its entirety into a domain name can be sufficient to establish that the domain name is identical or confusingly similar to a registered trademark”, discussing that the “bmwsauberf1.com” domain name fully incorporated complainant’s BMW and SAUBER marks).

The Infringing Domain was registered on February 21, 1996. Complainant’s active U.S. registration for IAA issued in 1989 and Complainant has common law rights dating back to at least 1912 predating the registration of the Infringing Domain by more than 84 years.

In sum, the Infringing Domain is identical to and/or confusingly similar to the IAA Mark and seeks to mimic Complainant’s company name, Illinois Agricultural Association. Accordingly, Complainant contends the requirements of Policy ¶ 4(a)(i) have been satisfied.

Respondent has no rights or legitimate interests in the iaa.org domain name. The domain name does not resolve to an active webpage. Further, the IMSA Alumni Association does not appear to be the actual Registrant Organization of the iaa.org domain, which Respondent registered long after Complainant’s registration of its IAA Mark.

The iaa.org domain is not being put to bona fide use.

Complainant’s representative reached out to the identified Registrant Organization, the IMSA Alumni Association, as identified in the WHOIS record. The president of the IMSA Alumni Association declined Complainant’s offer to purchase the iaa.org domain. Complainant also contact the President of IMSA who denied ownership of the domain. After initially stating that the domain was owned by the IMSA Alumni Association, they later clarified and stated the domain is owned by an individual and that the IMSA Alumni Association is not responsible for the iaa.org domain. The fact that Respondent has no association with or established relationship to iaa.org, or with the identified Registrant Organization, is clear evidence of a lack of rights or legitimate interest in the domain.

It is clear that Respondent, “James Browne”, is not commonly known as “iaa” or even “IMSA Alumni Association”. Further, Respondent is not and did not become commonly known as “iaa” by registering the Infringing Domain with the privacy service.

Complainant has never licensed, authorized, or permitted Respondent to use the IAA Mark or to apply for domain names incorporating the IAA Mark. Any possible use Respondent might make of the iaa.org domain name would violate the exclusive trademark rights which the Complainant has long held in its marks because it is confusingly similar to Complainant’s IAA Mark.

Even if Respondent were operating a business known as “iaa” (which it is not), it would not have rights or legitimate interests in the iaa.org domain name. Previous panels have found that using a trademark term in an unauthorized manner in a domain name, even where Respondent is operating an actual business, causes confusion by illegitimately indicating to consumers that the products at the contested domain name are those of the trademark holder. Even if Respondent was commonly known as “iaa” its knowledge of Complainant’s trademark “negates any claim to legitimate usage” under the Policy.

The facts of record clearly support the finding that Complainant has rights in the IAA Mark, and that Respondent registered the domain after Complainant’s established common law rights and federal registration, falsely listing IMSA Alumni Association as the Registrant Organization of the domain. Thus, Complainant submits that Respondent both registered and is maintaining the Infringing Domain in bad faith.

At the time of registration and renewal of the iaa.org domain, the Respondent had both actual and constructive knowledge of Complainant’s IAA Mark because of the fame of the IAA Mark. The Infringing Domain does not resolve to an active webpage, instead Respondent is simply passively holding the iaa.org domain name, which previous panels have found to be in bad faith.

As stated, Complainant has used the IAA Mark since as early as 1912, and is located in the state of Illinois, which is the same state as the identified Registrant Organization, IMSA Alumni Association. Respondent’s registration and use of the Infringing Domain is disruptive to Complainant, constituting bad faith because there is a likelihood that Internet users will falsely believe Respondent’s confusingly similar Infringing Domain is affiliated with Complainant.

Respondent’s registration and use of the iaa.org domain which is identical to Complainant’s IAA Mark creates the false and misleading suggestion that Respondent is associated with or even is Complainant. Previous panels have found this use to be an indication that respondent is passing itself off as complainant and bad faith disruption to complainant’s business.

In addition, Respondent registered the Infringing Domain without providing its name. In the commercial context, the registration of a domain name using a privacy service, much less failing to provide a name at all, raises a rebuttable presumption of bad faith.

Complainant notes attempts to purchase the iaa.org domain name from Respondent were made on several occasions for varying amounts of money between $500 and $3000, using a broker service from Network Solutions. Respondent did not respond to these offers. Ultimately, due to the lack of response by Respondent, Complainant contacted the identified Registrant Organization, the IMSA Alumni Association directly – the offer was initially declined; however, Complainant was then made aware that the Infringing Domain is not actually owned by IMSA Alumni Association. Respondent’s attempt to hide behind the Registrant Organization, IMSA Alumni Association, is also indicative of bad faith in registering and renewing the Infringing Domain. Previous panels have found registering a domain name with false contact information as evidence of bad faith under Policy ¶ 4(a)(iii).

From the facts presented above, it is clear that Respondent’s registration and use of the Infringing Domain falls squarely within the parameters of ICANN Policy ¶ 4(b)(iv).

B. Respondent

Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant has failed to establish all the elements entitling it to relief.

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

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

(2) Respondent has no rights or legitimate interests in respect of the domain name; and

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

In view of Respondent’s failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant’s undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).

Identical and/or Confusingly Similar

Complainant has shown that it has rights in the IAA & COUNTY AGRICULTURAL ASSOCIATIONS & Design mark through registration with the USPTO (Reg. No. 1,527,542, registered on February 28, 1989, in Class 200 for “indicating membership in an association of those engaged in agriculture and agricultural services, county farm bureaus, and others who support Illinois agriculture”).

Complainant refers to its claimed common law rights and federal registration as the “IAA Mark”. It is unclear to the Panel whether Complainant is claiming both common law and registered rights in the mark IAA & COUNTY AGRICULTURAL ASSOCIATIONS & Design or whether, in addition to its registered rights in that mark, Complainant is also claiming common law rights in the mark “IAA”, the abbreviation of its name Illinois Agricultural Association.

Assuming for present purposes that Complainant is claiming common law rights in the mark “IAA”, the Panel is not satisfied, on the evidence provided, that Complainant has shown that it has common law trademark rights in IAA. Complainant’s Exhibit 5 shows a webpage stating: “We planted our roots as the Illinois Agricultural Association (IAA) in DeKalb, Illinois in 1912 and then became the Illinois Farm Bureau® (IFB) at the state level in 1916”. That Exhibit also shows a webpage entitled “IAA Foundation”. Neither webpage is evidence that IAA is used otherwise than as the name of Complainant, as distinct from a name, logo or slogan recognized by consumers as distinguishing Complainant’s goods or services from those offered by others. The Complaint itself expressly uses “IAA” as a reference to the name of Complainant.

As to whether the domain name is identical or confusingly similar to Complainant’s registered mark, it is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0 “), section 1.7.

The Panel accepts that incorporating a trademark in its entirety into a domain name can [emphasis added] be sufficient to establish that the domain name is identical or confusingly similar to a registered trademark. However, this does not mean that incorporating a trademark in its entirety into a domain name is always sufficient. It depends on the mark when compared to the domain name. Complainant cites Hürriyet Gazetecilik ve Matbaacılık Anonim Şirketi v. Moniker Privacy Services / Kemal Demircioglu, D2010-1941 (WIPO Jan. 28, 2011) in which the domain names “hürriyet.com”, “hürriyetemlak.com” and “hürriyetoto.com” incorporated the HURRIYET mark and Bayerische Motoren Werke AG, Sauber Motorsport AG v. Petaluma Auto Works, D2005-0941 (WIPO Oct. 20, 2005), in which the “bmwsauberf1.com” domain name fully incorporated complainant’s BMW and SAUBER marks.

In the present case, ignoring the inconsequential “.org” gTLD and the design elements of Complainant’s registered IAA & COUNTY AGRICULTURAL ASSOCIATIONS & Design mark, the Panel notes that the iaa.org domain name incorporates the “IAA” element of the mark. In the Panel’s opinion, the part of the mark that is not incorporated in the domain name, “& COUNTY AGRICULTURAL ASSOCIATIONS” distinguishes the mark from the domain name sufficiently to lead the Panel to conclude that the domain name is neither identical nor confusingly similar to the mark.

Accordingly, the Panel finds that Complainant has not established this element.

Rights or Legitimate Interests and Registration and Use in Bad Faith

In light of the Panel’s finding in relation to the first element, it is unnecessary to consider these elements.

Reverse Domain Name Hijacking

Reverse Domain Name Hijacking (“RDNH”) is defined in Rule 1 as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”. Rule 15(e) provides, in part:

“If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”

As noted, the iaa.org domain name was registered 29 years ago, in February 1996, some 7 years after the registration of Complainant’s mark. On January 28, 2025, Complainant’s Counsel, on behalf of Complainant, offered to buy the domain name from the Illinois Mathematics and Science Academy’s Alumni Association (“IMSA”) for 5,000 USD. The offer was declined. On March 7, 2025, Complainant’s Counsel increased the offer to 8,000 USD. On March 27, 2025, IMSA clarified that it was not the owner of the domain name. The Complaint was filed on April 16, 2025.

In the Panel’s view, this is a classic “Plan B” case, i.e., using the Policy after failing in the marketplace to acquire the domain name. This stratagem has been described in several UDRP cases as “a highly improper purpose” and has contributed to findings of RDNH. See, e.g., Patricks Universal Export Pty Ltd. v. David Greenblatt, WIPO Case No. D2016-0653 and BERNINA International AG v. Domain Administrator, Name Administration Inc. (BVI), WIPO Case No. D2016-1811.

The Panel therefore finds that the Complaint was brought in bad faith and constitutes an abuse of this administrative proceeding.

DECISION

Complainant having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

Accordingly, it is Ordered that the iaa.org domain name REMAIN WITH Respondent.

Alan L. Limbury, Panelist

Dated: May 12, 2025

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