AOL LLC v. WhoisGuard c/o WhoisGuard Protected
Claim Number: FA0707001040222
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 <myeaddress.org>, registered with Enom.
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.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
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 firstname.lastname@example.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
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.
Complainant, AOL LLC, is an interactive online service
provider of software and computer and Internet-related communications. On
domain name on
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.
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
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
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 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
129120 (Nat. Arb. Forum
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).
Complainant issued a press release announcing the launch of
its MY EADDRESS mark and associated service on
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
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).
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
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