America Online, Inc. v. David
Claim Number: FA0202000104980
The Complainant is America Online, Inc., Dulles, VA (“Complainant”) represented by James R. Davis, II, of Arent, Fox, Kintner, Plotkin & Kahn. The Respondent is David, Fresno, CA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <mapquewst.com> and <netscapoe.com>, registered with Intercosmos Media Group, Inc.
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.
Judge Karl V. Fink as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on February 21, 2002; the Forum received a hard copy of the Complaint on February 25, 2002.
On February 22, 2002, Intercosmos Media Group, Inc. confirmed by e-mail to the Forum that the domain names <mapquewst.com> and <netscapoe.com> are registered with Intercosmos Media Group, Inc. and that the Respondent is the current registrant of the names. Intercosmos Media Group, Inc. has verified that Respondent is bound by the Intercosmos Media Group, 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 February 25, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 18, 2002 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 and firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on March 18, 2002.
On March 22, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Karl V. Fink (Ret.) as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
Complainant America Online, Inc. and its affiliated entities (collectively “AOL”), is the owner of the marks MAPQUEST and NETSCAPE (collectively “AOL Marks”). AOL owns numerous trademark registrations worldwide for its AOL Marks.
AOL owns a federal trademark registration for the mark MAPQUEST.COM, and a pending application for NETSCAPE.COM.
On November 21 and 22, 2001, many years after AOL’s adoption and first use of its AOL Marks, and long after the AOL Marks became well-known and famous, Respondent registered the domain names <netscapoe.com> and <mapquewst.com> (collectively the “Infringing Domains”) for the bad faith purpose of profiting from the goodwill AOL has created in its AOL Marks. Specifically, Respondent uses the Infringing Domains to route to a commercial Web site and provides pornographic content and gambling services.
The Infringing Domains are confusingly similar or nearly identical to the AOL Marks. In fact, except for the additional of a single letter, the domains are identical to the AOL Marks.
Respondent’s bad faith registration of the Infringing Domains is evidenced by the fact that he registered the domains many years after the AOL Marks had become famous and well-known to customers.
Respondent’s bad faith use of the Infringing Domains is demonstrated by the Web site that Respondent uses in connection with the domains. Respondent uses the Infringing Domains to route to a commercial pornographic and gambling site that makes no reference whatsoever to the MAPQUEST or NETSCAPE services.
The names <netscapoe.com> and <mapquewst.com> were registered as a direct result of a business plan. They are not related or associated with <netscape.com> or <mapquest.com>.
For the reasons set forth below, the Panel finds that Complainant has proven the required elements to have each of the names transferred to Complainant.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”
Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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
The Panel finds that the disputed domain names are confusingly similar or essentially identical to the MAPQUEST.COM and NETSCAPE.COM marks, because Respondent merely added a single letter to each of the two disputed domain names. See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive); see also Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that misspelling words and adding letters on to words does not create a distinct mark but is nevertheless confusingly similar with the Complainant’s marks).
The misspelling of a famous mark does not diminish the confusingly similar nature between the marks and the disputed domain names. See Hewlett-Packard Co. v. Zuccarini, FA 94454 (Nat. Arb. Forum May 30, 2000) (finding the domain name <hewlitpackard.com> to be identical or confusingly similar to Complainant’s HEWLETT-PACKARD mark); see also Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001) (finding that the domain names <tdwatergouse.com> and <dwaterhouse.com> are virtually identical to Complainant’s TD WATERHOUSE name and mark).
Further, the Panel finds that the disputed domain names <mapquewst.com> and <netscapoe.com> are confusingly similar to Complainant’s MAPQUEST and NETSCAPE marks since the generic top-level domain name does not distinguish the disputed domain names from Complainant’s famous marks. See Blue Sky Software Corp. v. Digital Sierra Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the domain name <robohelp.com> is identical to complainant’s registered ROBOHELP trademark, and that the "addition of .com is not a distinguishing difference"); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding that "the addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants").
Respondent does not dispute the confusing similarity between the disputed domain names and Complainant’s marks.
Complainant has proven this element.
Rights or Legitimate Interests
The Panel finds that Respondent’s use of the disputed domain names to divert Complainant’s customers to its websites offering gambling and pornographic goods and services is not considered a bona fide offering of goods or services as outlined by Policy ¶ 4(c)(i). See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name); see also America Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that use of Complainant’s mark “as a portal to suck surfers into a site sponsored by Respondent hardly seems legitimate”).
The Panel finds that Complainant’s marks have become so widely known and Respondent has not provided evidence that it is commonly known as <mapquewst.com> or <netscapoe.com> and therefore, Respondent cannot satisfy Policy ¶ 4(c)(ii). See Victoria’s Secret v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (finding sufficient proof that Respondent was not commonly known by a domain name confusingly similar to Complainant’s VICTORIA’S SECRET mark because of Complainant’s well established use of the mark); see also Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one “would be hard pressed to find a person who may show a right or legitimate interest” in a domain name containing Complainant's distinct and famous NIKE trademark).
Respondent has not claimed that it has any rights or legitimate interest in the disputed domain names.
Complainant has proven this element.
Registration and Use in Bad Faith
Based on the fame attained by Complainant’s marks before Respondent registered the disputed domain names, the Panel finds that Respondent had knowledge of the marks when Respondent registered the disputed domain names. Therefore, this is evidence that Respondent registered the disputed domain names in bad faith. See Nintendo of Am. Inc v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding that Respondent, at the time of registration, had notice of Complainant’s famous POKÉMON and PIKACHU trademarks given their extreme popularity); see also Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that, in light of the notoriety of Complainants' famous marks, Respondent had actual or constructive knowledge of the BODY BY VICTORIA marks at the time she registered the disputed domain name and such knowledge constituted bad faith).
Respondent has not disputed Complainant’s allegations on this or any other issue.
Complainant has proven this element.
Complainant has proven each of the required elements and, therefore, it is ordered that the domain names, <mapquewst.com> and <netscapoe.com>, be transferred to Complainant.
Judge Karl V. Fink (Ret.) Panelist
Dated: April 10, 2002
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