national arbitration forum

 

DECISION

 

AOL LLC v. WhoisGuard c/o WhoisGuard Protected

Claim Number:  FA0707001040222

 

PARTIES

Complainant is AOL LLC (“Complainant”), represented by Blake R. Bertagna, of Arent Fox LLP, 1050 Connecticut Avenue, NW, Washington, DC 20036.  Respondent is WhoisGuard c/o WhoisGuard Protected (“Respondent”), 8939 S. Sepulveda Blvd., Westchester, CA 90045.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <myeaddress.org>, registered with Enom.

 

PANEL

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.

 

Honorable Paul A. Dorf, (Ret.), as Panelist.

 

PROCEDURAL HISTORY

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, Enom confirmed by e-mail to the National Arbitration Forum that the <myeaddress.org> domain name is registered with Enom and that Respondent is the current registrant of the name.  Enom has verified that Respondent is bound by the Enom 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 27, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 16, 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 postmaster@myeaddress.org by e-mail.

 

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

 

On August 23, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf, (Ret.), as Panelist.

 

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, 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 makes the following assertions:

 

1.      Respondent’s <myeaddress.org> domain name is identical to Complainant’s MY EADDRESS mark.

 

2.      Respondent does not have any rights or legitimate interests in the <myeaddress.org> domain name.

 

3.      Respondent registered and used the <myeaddress.org> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, AOL LLC, is an interactive online service provider of software and computer and Internet-related communications.  On August 9, 2007, Complainant announced its launch of a new e-mail service identified by the MY EADDRESS mark.  The service is a free e-mail service that allows consumers to register and use customized e-mail addresses, allowing users to personalize the top-level domain of their e-mail address.  Complainant has spent significant money developing and marketing the MY EADDRESS mark.  Complainant’s mark has gained significant commercial strength and goodwill, creating in the first year of service approximately 169,000 personal domain names for consumers around the world.

 

Respondent registered the <myeaddress.org> domain name on August 11, 2007.  The disputed domain name resolves to a parked web page that promotes and offers services that are related to the services offered under Complainant’s MY EADDRESS mark, such as the registration of domain names, as well as other unrelated goods and services. 

 

DISCUSSION

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 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.

 

Identical and/or Confusingly Similar

 

Complainant has not registered the MY EADDRESS mark with any governmental authority.  However, the UDRP does not require governmental registration for a party to establish rights in a mark; common law rights can create rights in a mark sufficient to satisfy Policy ¶ 4(a)(i).  See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also HR Commodities LLC v. Rob Harper, D2007-0153 (WIPO April 9, 2007) (“It is well-settled that the Policy encompasses both registered and common law marks.”). 

 

The MY EADDRESS mark has been continuously used since Complainant’s announcement of its launch of the new e-mail service under the MY EADDRESS mark on August 9, 2006.  Complainant has invested substantial money in developing and marketing both the mark and the service.  Complainant’s mark has gained significant commercial strength and goodwill, creating in the first year of service approximately 169,000 personal domain names for consumers around the world.  The Panel finds that Complainant has established common law rights in the MY EADDRESS mark pursuant to Policy ¶ 4(a)(i).  See BroadcastAmerica.com, Inc. v. Quo, DTV2000-0001 (WIPO Oct. 4, 2000) (finding that the complainant has common law rights in BROADCASTAMERICA.COM, given extensive use of that mark to identify the complainant as the source of broadcast services over the Internet, and evidence that there is wide recognition with the BROADCASTAMERICA.COM mark among Internet users as to the source of broadcast services); see also Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established).

 

The <myeaddress.org> domain name domain name fully incorporates Complainant’s MY EADDRESS mark.  The disputed domain name omits the space between MY and EADDRESS and adds the generic top-level domain (“gTLD”) “.org.”  It is well established that the omission of a space and the addition of a gTLD does not negate the elements necessary to find a disputed domain name to be identical to a complainant’s mark.  Accordingly, the Panel finds that the <myeaddress.org> domain name is identical to Complainant’s mark pursuant to Policy ¶ 4(a)(i).  See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); 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). 

 

Rights or Legitimate Interests

 

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 C.A., D2000-0303 (WIPO June 28, 2000) (“Respondent's default, however, does not lead to an automatic ruling for Complainant. Complainant still must establish a prima facie case showing that under the Uniform Domain Name Dispute Resolution Policy it is entitled to a transfer of the domain name.”).  The Panel finds that Complainant has met this burden and accordingly, the burden is shifted to Respondent to demonstrate that it does have rights or legitimate interests in the disputed domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent.”).

 

Respondent has failed to submit a Response to the Complaint.  The Panel may thus presume that Respondent has no rights or legitimate interests in the <myeaddress.org> 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 <myeaddress.org> 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 <myeaddress.org> domain name contains Complainant’s mark in its entirety and resolves to a parked web page featuring links and advertisements for services both related and unrelated to the services offered under Complainant’s mark.  It is presumed that such links financially benefit Respondent.  The Panel finds that this is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  See eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating that the respondent’s use of the complainant’s entire mark in domain names makes it difficult to infer a legitimate use); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); see also WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy).

 

The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Complainant issued a press release announcing the launch of its MY EADDRESS mark and associated service on August 9, 2006.  Respondent registered its <myeaddress.org> domain name two days later on August 11, 2007.  The Panel finds that such conduct constitutes opportunistic bad faith registration and use pursuant to Policy ¶ 4(a)(iii).  See Sota v. Waldron, D2001-0351 (WIPO June 18, 2001) (finding that the respondent’s registration of the <seveballesterostrophy.com> domain name at the time of the announcement of the Seve Ballesteros Trophy golf tournament “strongly indicates an opportunistic registration”); see also 3M Co. v. Jeong, FA 505494 (Nat. Arb. Forum Aug. 11, 2005) (“Respondent’s registration of the disputed domain name the same day that Complainant issued a press release regarding the acquisition constitutes opportunistic bad faith.”).

 

Respondent’s <myeaddress.org> domain name is identical to Complainant’s MY EADDRESS mark and resolves to a website featuring links to third parties, many of whom offer services in competition with those services offered under Complainant’s mark.  The Panel finds this to be further evidence of bad faith registration and use purusant to Policy ¶ 4(b)(iii).  See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business); see also EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the minor degree of variation from the complainant's marks suggests that the respondent, the complainant’s competitor, registered the names primarily for the purpose of disrupting the complainant's business).

 

Lastly, Respondent’s website features links to third parties, some of whom are competitors of Complainant.  The Panel may presume that such links are financially benefiting Respondent through click-through-fees.  Consequently, the Panel finds this to be additional evidence of bad faith pursuant to Policy ¶ 4(b)(iv).  See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”); see also AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).

 

The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <myeaddress.org> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Honorable Paul A. Dorf, (Ret.), Panelist

Dated:  September 4, 2007

 

 

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