America Online, Inc. v. Rocco Mancini
Claim Number: FA0204000110799
PARTIES
Complainant
is America Online, Inc., Dulles, VA
(“Complainant”) represented by James R.
Davis, of Arent Fox Kintner Plotkin
& Kahn. Respondent is Rocco Mancini, Waterbury, CT
(“Respondent”).
The
domain name at issue is <mapquest.biz>,
registered with Network Solutions, 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.
Jaime
Delgado, Esq., as Panelist.
Complainant
has standing to file a Start-up Trademark Opposition Policy (“STOP”) Complaint,
as it timely filed the required Intellectual Property (IP) Claim Form with the
Registry Operator, NeuLevel. As an IP
Claimant, Complainant timely noted its intent to file a STOP Complaint against
Respondent with the Registry Operator, NeuLevel and with the National
Arbitration Forum (the “Forum”).
Complainant
submitted a Complaint to the Forum electronically on April 23, 2002; the Forum
received a hard copy of the Complaint on April 25, 2002.
On
April 26, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of May 16,
2002 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent in compliance with paragraph 2(a) of the Rules for
the Start-up Trademark Opposition Policy (the “STOP Rules”).
A
timely Response was received and determined to be complete on May 16, 2002.
On May 30, 20002, pursuant to STOP Rule 6(b), the Forum
appointed Jaime Delgado, Esq., as
the single Panelist.
Transfer
of the domain name from Respondent to Complainant.
A.
Complainant
1. Complainant
is the owner of the mark MAPQUEST.
Complainant owns numerous trademark registrations for its MAPQUEST mark,
including U.S. Registration No. 2,129,378.
2. Complainant
also owns a federal trademark registration for the MAPQUEST.COM mark, which is
used in connection with the MapQuest Web site.
The MAPQUEST mark is used extensively at this Web site, which is a
significant method of promoting the MAPQUEST service.
3. Many
years prior to Respondent’s registration of <mapquest.biz>, AOL
adopted and began using the MAPQUEST mark in connection with computer and
Internet-related goods and services.
Since its first adoption, the distinctive MAPQUEST mark has been used
continuously and extensively in interstate and international commerce in
connection with the advertising and sale of the MAPQUEST service.
4. Complainant
has invested substantial sums of money in developing and marketing its
services.
5. Each
year, millions of consumers access and use the very famous MAPQUEST service,
which is consistently ranked among the top 30 Web properties. Millions of others are exposed to said mark
through advertising and promotion.
6. The
MAPQUEST mark has been and continues to be widely publicized through
substantial advertising throughout the United States. A significant amount of money is spent each year in connection
with such advertising which has been disseminated through network and cable
television programs, radio broadcasts, and in print media including newspapers
and periodicals.
7. Sales
of services under the MAPQUEST mark have amounted to many millions of dollars.
As a result, the general public has come to associate this name and mark with
services of a high and uniform quality.
8. Because
of these substantial advertising expenditures and sales, the distinctive
MAPQUEST mark has become well-known and famous among members of the purchasing
public.
9. On
March 27, 2002, many years after Complainant’s adoption and first use of its
MAPQUEST mark, and long after the MAPQUEST mark became well-known and famous,
Respondent registered the domain name <mapquest.biz>
in bad faith. Respondent is not
licensed or otherwise authorized to use the MAPQUEST mark in this manner.
10. But
for the “.biz” suffix, the domain name at issue is identical to Complainant’s
distinctive and famous MAPQUEST mark.
11. Respondent,
an individual residing in Connecticut, is deemed to have constructive knowledge
of Complainant’s trademark rights by virtue of the federal trademark
registrations for MAPQUEST. Moreover,
given the fame of that distinctive mark, Respondent presumably has knowledge of
Complainant’s prior use of the famous MAPQUEST mark. It is inconceivable that Respondent could claim otherwise and
that he just coincidentally chose a business name that happens to coincide with
such a famous and distinctive mark as MAPQUEST.
12. Respondent
has no legitimate or good faith basis on which to claim rights to the MAPQUEST
mark. The United States PTO database
lists eight marks that incorporate the MAPQUEST or MAPQUEST.COM mark, every one
of which is owned by Complainant.
13. Respondent
registered the domain name at issue solely in a bad faith attempt to play off
the fame of that mark and confuse consumers into believing falsely that
Respondent is endorsed by or affiliated with Complainant or the MAPQUEST
service.
14. By
registering such a famous and unique mark as part of a domain name, Respondent
has prevented Complainant from using its mark in the domain <mapquest.biz>.
15. Given
the nature of the mark, MAPQUEST, Respondent cannot make a plausible good faith
claim that he is commonly known by that name.
Even if Respondent were to claim that he intends to use the domain in
connection with a company named “MAPQUEST,” such use would not be in good faith
and would not constitute a legitimate or bona fide use of the mark or domain.
16. Based
upon (1) the fame of the MAPQUEST mark; (2) the fact that Complainant owns
several federal trademark registrations for the MAPQUEST mark; (3) no
third-party federal trademark registrations exist for the MAPQUEST mark; and
(4) the distinctive quality of the famous MAPQUEST mark, Respondent cannot in
good faith claim that he had no knowledge of Complainant’s rights in its very
famous MAPQUEST mark, or that Complainant is commonly known by that name.
B.
Respondent
1. By default the extension of .BIZ on the
domain name would distinguish it to any individual or business as being
different from the trademark. Also, the term MAPQUEST has numerous meanings in
itself in the English languages which further indicates that the trademark and
the domain are not related nor are they identical in any way, shape or form. As
shown the two are not identical nor exactly the same in meaning, and the ground
for dispute has been proven to be false.
2. The Complainant has not allowed the
Respondent a reasonable timeframe to build a Website for the domain name at
issue. A reasonable timeframe would be a minimum of 12 months from the date
that the domain name was assigned to the Respondent which was on March 27,
2002. The 12-month criterion is based upon the average timeframe for developing
and building a functioning Website for an online business operating within the common
parameters of eCommerce. The Respondent's intent is to develop a Website that
will sell Antique and Rare Historical Maps. The domain name is a significant
component of this business endeavor…a reasonable timeframe to develop the
Website has not yet elapsed.
3. As such, the domain <mapquest.biz> was never used nor registered in bad faith.
Complainant is engaged in the business of
on-line information services, providing interactive access to geographical
information, map images and downloadable software programs, namely, consumer
oriented travel, business, education and entertainment applications since 1996
under the MAPQUEST and MAPQUEST.COM trademarks.
Complainant has maintained a Website to
promote its products, services and marks.
Respondent registered the disputed domain
name on March, 27 2002 and intends to develop a Website that will sell Antique
and Rare Historical Maps.
DISCUSSION
Paragraph 15(a) of the STOP 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 STOP Policy requires that the Complainant must prove each of the
following three elements to obtain an order that a domain name should be
transferred:
(1)
the domain name is identical to a trademark or
service mark in which the Complainant has rights; and
(2) the Respondent has no rights or legitimate interests
in respect of the domain name; and
(3)
the domain name has been registered or is being used in bad faith.
Due
to the common authority of the ICANN policy governing both the Uniform Domain
Name Dispute Resolution Policy (“UDRP”) and these STOP proceedings, the Panel
will exercise its discretion to rely on relevant UDRP precedent where
applicable.
Under
the STOP proceedings, a STOP Complaint may only be filed when the domain name
in dispute is identical to a trademark or service mark for which a Complainant
has registered an Intellectual Property (IP) claim form. Therefore, every STOP proceeding necessarily
involves a disputed domain name that is identical to a trademark or service
mark in which a Complainant asserts rights.
The existence of the “.biz” generic top-level domain (gTLD) in the disputed
domain name is not a factor for purposes of determining that a disputed domain
name is not identical to the mark in which the Complainant asserts rights.
Complainant
has established its rights in the MAPQUEST and MAPQUEST.COM marks through
registration with the United States Patent and Trademark Office and continuous
subsequent use at their Website.
The
disputed domain name incorporates Complainant's mark in its entirety and merely
adds the generic top level domain "BIZ." The use of a "BIZ" is insignificant when determining
whether a domain name and a mark are identical since the "BIZ" is a
required element in domain names. See
Pomellato S.p.A. v Tonetti, D2000-0493 (WIPO July 7, 2000)
(finding<pomellato.com> identical to Complainant's mark because the gTLD
"com" after the name POMELLATO is not relevant); see also Visit Am. Inc. v Visit Am., FA 95093
(Nat. Arb. Forum Aug.14, 2000) (finding that the "com" is part of the
Internet address and does not add source identity significance) The disputed
domain name is, thus, identical to Complainant's mark.
Accordingly,
the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
The Respondent has not demonstrated that he has any rights or legitimate interests in respect of the mark, “MAPQUEST,” or the domain name at issue. There are no allegations that Respondent has been commonly known as “Mapquest” or that he is licensed to use the Complainant’s registered trademarks for any purpose. Rather, it appears that any planned use of the domain name at issue, as articulated in the Response, would be an improper use under the circumstances. See William L. Lyon & Assocs., Inc. v. Yata, FA 103043 (Nat. Arb. Forum Mar. 21, 2002) finding the Respondent's "intent to trade [on] the goodwill of Complainant's mark, by attracting Internet users confused as to the likely affiliation between Complainant and Respondent's website" indicated the Respondent had no rights or legitimate interests pursuant to STOP Policy ¶ 4(c)(ii)); Credit Suisse Group o/b/o Winterthur Ins. Co. v. Pal-Ex Kft, FA 102971 (Nat.Arb. Forum Feb. 25, 2002) ("The use of another's trademark to attract users to Respondent's domain is not considered to be a bona fide offering of goods or services pursuant to STOP Policy ¶ 4(c)(ii)").
Accordingly,
the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
alleges that he registered and intends to use the disputed domain name for the
purpose of selling antique and rare maps.
Complainant uses its mark in connection with on line information
services providing interactive access to geographic information, map images,
etc. Thus, the Respondent’s intended use would disrupt the business of
Complainant by directing Internet users who intended to visit Complainant’s
website to competing websites. Such
behavior demonstrates bad faith under Policy ¶¶
4(b)(iii)
& (iv). See EBAY, Inc. v. MEOdesigns, D2000-1368 (Dec. 15, 2000) (finding
that the Respondent registered and used the domain name <eebay.com> in
bad faith where Respondent used the domain name to promote competing auction
sites); see also Puckett v. Miller,
D2000-0297 (WIPO June 12, 2000) (finding that Respondent has diverted business
from the Complainant to a competitor’s Website in violation of Policy ¶
4(b)(iii)); see also State Fair of Texas
v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad
faith under Policy ¶ 4(b)(iv) where the Respondent registered the domain name
<bigtex.net> to infringe on the Complainant’s goodwill and attract
Internet users to the Respondent’s Website).
Accordingly,
the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
DECISION
The
Complainant having established all three elements required under the STOP
Policy, the Panel concludes that the requested relief should be hereby granted
and the domain name <mapquest.biz>
is ordered transferred from the Respondent to the Complainant.
Dated the 24 of
June 2002
Jaime Delgado, Panelist
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