LLC v. Telesat
Claim Number: FA0707001040219
Complainant is AOL LLC (“Complainant”), represented by Blake
R. Bertagna, of Arent Fox LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <aolpremium.com>, registered with Tucows Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 18, 2007; the National Arbitration Forum received a hard copy of the Complaint on July 19, 2007.
On July 19, 2007, Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the <aolpremium.com> domain name is registered with Tucows Inc. and that Respondent is the current registrant of the name. Tucows Inc. has verified that Respondent is bound by the Tucows Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On July 20, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 9, 2007 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to email@example.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 14, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) as Panelist.
A Response was received on August 23, 2007. The Response was deemed deficient under ICANN Rule 5 as it was late and not received in hard copy. Additionally, the Response was received in a foreign language, not in English, which is the language of the Registration Agreement, and consequently, the instant proceedings. As such, as is within the Panel’s discretion under these circumstances, the Response was not considered in the rendering of this Decision.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <aolpremium.com> domain name is confusingly similar to Complainant’s AOL mark.
2. Respondent does not have any rights or legitimate interests in the <aolpremium.com> domain name.
3. Respondent registered and used the <aolpremium.com> domain name in bad faith.
B. Respondent submitted a late, incomplete, foreign-language Response that was not considered by the Panel when rendering this Decision.
Complainant has continuously used the AOL mark in connection with a variety of software, computer and Internet-related communications and goods and services. Under this mark, Complainant offers also a line of premium internet services. Complainant has registered the AOL mark in numerous jurisdictions worldwide including with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,977,731 issued June 4, 1996) and the Columbian Superintendency of Industry and Commerce (“CSIC”) (Certificate No. 179.906 issued September 27, 1995).
Respondent’s <aolpremium.com> domain name resolves to a commercial website in Spanish that provides services that directly compete with those offered under the AOL mark, including providing Internet services. The disputed domain name was registered on July 2, 2002.
Paragraph 15(a) of the Rules instructs this Panel to "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."
In view of Respondent's failure to submit a compliant response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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.
Complainant has sufficiently established its rights in the AOL mark pursuant to Policy ¶ 4(a)(i) through registration of the mark with the USPTO and CSIC. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the complainant has rights to the name when the mark is registered in a country even if the complainant has never traded in that country).
Respondent’s <aolpremium.com> domain name fully incorporates Complainant’s AOL mark. The disputed domain name then includes the generic term “premium,” which corresponds to the “premium” internet services offered under Complainant’s AOL mark, and adds the generic top-level domain (“gTLD”) “.com.” It is well established that the addition of generic terms that correspond to the goods or services offered under an opposing party’s mark and the addition of a gTLD does not negate the elements of confusing similarity. Accordingly, the Panel finds that Respondent’s <aolpremium.com> domain name is confusingly similar to Complainant’s AOL mark pursuant to Policy ¶ 4(a)(i). See Sony Kabushiki Kaisha v. 0-0 Adult Video Corp., FA 475214 (Nat. Arb. Forum June 27, 2005) (“A general rule under Policy ¶ 4(a)(i) is that a domain name is confusingly similar to a third-party mark where the domain name fully incorporates the mark and simply adds additional words that correspond to the goods or services offered by the third party under the mark.”); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii),
Complainant must initially make out a prima
facie case that Respondent has no rights or legitimate interests in the
domain name at issue. See VeriSign
Inc. v. VeneSign
Respondent has failed to submit a Response to the Complaint. The Panel thus presumes that Respondent has no rights or legitimate interests in the <aolpremium.com> domain name, but will still consider all the available evidence with respect to the factors listed in Policy ¶ 4(c) before making this determination. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”).
Nowhere in the record, including Respondent’s WHOIS information, does it indicate that Respondent is or ever has been commonly known by the <aolpremium.com> domain name. Further, Respondent has not sought, nor has Complainant granted, a license or permission to Respondent to use Complainant’s mark in any way. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question).
Respondent’s disputed domain name resolves to a commercial website that offers Internet services that are in direct competition with those offered under Complainant’s mark. A domain name which contains another party’s mark in its entirety and redirects Internet users to another commercial site which offers services in competition with those offered under the other’s mark is not a bona fide offering of goods or services or a legitimate noncommercial or fair way of using that domain name. As such, the Panel finds that Respondent is not using the <aolpremium.com> domain name in connection with a bona fide offering of goods or services or in a legitimate noncommercial or fair way pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively. See Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services); see also Clear Channel Commc’ns, Inc. v. Beaty Enters., FA 135008 (Nat. Arb. Forum Jan. 2, 2003) (finding that the respondent, as a competitor of the complainant, had no rights or legitimate interests in a domain name that utilized the complainant’s mark for its competing website).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s <aolpremium.com> domain name directs users to a website that provides “premium” internet services that are identical to those “premium” services provided by Complainant. Appropriating another’s mark to offer competing services constitutes bad faith use and registration pursuant to Policy ¶ 4(b)(iii). Consequently, the Panel finds that Respondent is using and has registered the disputed domain name in bad faith. See Hewlett EthnicGrocer.com, Inc. v. Latingrocer.com, FA 94384 (Nat. Arb. Forum July 7, 2000) (finding bad faith where the respondent’s sites pass users through to the respondent’s competing business); see also Packard Co. v. Full Sys., FA 94637 (Nat. Arb. Forum May 22, 2000) (finding that the respondent registered and used the domain name primarily for the purpose of disrupting the business of the complainant by offering personal e-mail accounts under the domain name <openmail.com> which is identical to the complainant’s services under the OPENMAIL mark).
The <aolpremium.com> domain name is confusingly similar to Complainant’s mark and diverts Internet users to a commercial website in Spanish that offers Internet services that are the same or similar to those offered under Complainant’s AOL mark. The Panel finds this to be further evidence that Respondent has registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv), because Respondent is taking advantage of the confusing similarity between the disputed domain name and the AOL mark in order to profit by offering its own services that compete with those offered under the Complainant’s mark. See Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iv) where the domain name resolved to a website that offered similar products as those sold under the complainant’s famous mark); see also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <aolpremium.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: August 28, 2007
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