AOL LLC v. Cory Gillenkirk
c/o Eastside Hosting
Claim Number: FA0711001110120
PARTIES
Complainant is AOL LLC (“Complainant”), represented by Blake
R. Bertagna, of Arent Fox PLLC,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <shoutcastpro.com> registered with Enom, Inc. and <shoutcastpro.net>, <shoutcastpro.info>, <shoutcastpro.org>, <shoutcastpro.biz>, <shoutcastempire.com>, <shoutcastempire.net>, <shoutcastempire.info>, and <shoutcastempire.org>
registered with Godaddy.com, Inc.
PANEL
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.
James A. Carmody, Esq., as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on
On
On
On December 3, 2007, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of December 26, 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@shoutcastpro.com, postmaster@shoutcastpro.net, postmaster@shoutcastpro.info, postmaster@shoutcastpro.org, postmaster@shoutcastpro.biz, postmaster@shoutcastempire.com, postmaster@shoutcastempire.net, postmaster@shoutcastempire.info, postmaster@shoutcastempire.org by e-mail.
A timely Response was received and determined to be complete on
On
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. The disputed domain names, <shoutcastpro.net>, <shoutcastpro.info>, <shoutcastpro.org>, <shoutcastpro.biz>, <shoutcastempire.com>, <shoutcastempire.net>, <shoutcastempire.info>, and <shoutcastempire.org> are confusingly similar to Complainant’s SHOUTCAST mark.
2. Respondent has no rights or legitimate interests in respect of the disputed domain names.
3. Respondent registered and is using the disputed domain names in bad faith.
B. Respondent
1. Respondent does not deny that the disputed domain names are confusingly similar to Complainant’s mark, but he contends that his websites are distinguishable from those of Complainant at the web page level.
2. Respondent claims rights and legitimate interests in the domain names at issue.
3. Respondent denies registration or use of the domain names at issue in bad faith.
FINDINGS
Complainant
AOL owns and has made extensive use of its
SHOUTCAST mark and owns U.S. Registration No. 2395779 for the mark, which
covers "downloadable computer software for use in transmitting and
playing audio streaming transmissions of music via a global computer
network" and "audio streaming transmission of music via a global
computer network." Complainant
also owns and uses <shoutcast.com> in connection with providing its
online services. The SHOUTCAST mark is used extensively at this website.
Respondent does not seriously dispute that
the domain names themselves closely resemble the SHOUTCAST mark, but he says
that he has placed a disclaimer on the sites to which the domain names resolve
disclaiming any association with AOL or <shoutcast.com>. Accordingly, Respondent claims that no web
surfer would be confused and think that AOL was the owner or sponsor of
websites resolving to the domain names at issue. Apparently, these sites are used by
Respondent to sell bandwidth and provide web hosting services. Complainant says that some of those services
are in direct competition with those it offers and that registration of the
domain names at issue was done in bad faith by Respondent to disrupt the
business of a competitor.
Complainant has never licensed or otherwise
authorized Respondent to use the SHOUTCAST mark for any purpose and Respondent
is not commonly known by that or any similar mark.
Respondent has made
an unsolicited offer to sell the disputed domain names to Complainant. It
appears from the Response that Respondent was unwilling to transfer the domain
names at issue to Complainant for simply his out of cost expenses related to
registration of the domains.
DISCUSSION
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.
Complainant has established rights
in the SHOUTCAST mark through registration with the United States Patent and
Trademark Office (“USPTO”) (Reg. No. 2,395,779 issued October 17,
2000). As a result, Complainant has
established its rights in the mark for the purposes of satisfying Policy ¶ 4(a)(i). See Vivendi Universal
Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum
Nov. 11, 2003) (“Complainant's federal trademark registrations establish
Complainant's rights in the BLIZZARD mark.”); see also Men’s Wearhouse, Inc.
v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under
Further, Respondent’s <shoutcastpro.com>, <shoutcastpro.net>, <shoutcastpro.info>, <shoutcastpro.org>, <shoutcastpro.biz>, <shoutcastempire.com>, <shoutcastempire.net>, <shoutcastempire.info>, and <shoutcastempire.org> domain names are confusingly similar to Complainant’s mark. Respondent’s disputed domain names include the Complainant’s SHOUTCAST mark in its entirety, adding the generic terms “pro” or “empire” and a generic top-level domain (“gTLD”) of either “.com,” “.net,” “.info,” “.org,” or “.biz.” The additions of a generic term and a gTLD are irrelevant in determining whether a domain name is confusingly similar to an established mark under Policy ¶ 4(a)(i). See Nikon, Inc. v. Technilab, Inc., D2000-1774 (WIPO Feb. 26, 2001) (holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name rather than upon the likelihood of confusion test under U.S. trademark law); see also Am. Online, Inc. v. Anytime Online Traffic Sch., FA 146930 (Nat. Arb. Forum Apr. 11, 2003) (finding that the respondent’s domain names, which incorporated the complainant’s entire mark and merely added the descriptive terms “traffic school,” “defensive driving,” and “driver improvement” did not add any distinctive features capable of overcoming a claim of confusing similarity); see also Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the addition of a gTLD, whether it be “.com,” “.net,” “.biz,” or “.org,” is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Respondent is not commonly known by any of
the disputed domain names or the SHOUTCAST mark. According to the WHOIS information listed for
the disputed domain names, Respondent registered the names under either the
name “Cory Gillenkirk” or “Eastside Hosting”. Respondent was never authorized
by Complainant to use the SHOUTCAST mark. Respondent does not have any rights or legitimate interests in the
disputed domain names pursuant
to Policy ¶ 4(c)(ii).
See Gallup,
Inc. v. Amish Country Store, FA
96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the
respondent does not have rights in a domain name when the respondent is not
known by the mark); see also Broadcom
Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001)
(finding no rights or legitimate interests because the respondent is not
commonly known by the disputed domain name or using the domain name in
connection with a legitimate or fair use); see
also Tercent Inc. v. Lee Yi,
FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s
WHOIS information implies that Respondent is ‘commonly known by’ the disputed
domain name” as one factor in determining that Policy ¶ 4(c)(ii)
does not apply).
Respondent currently utilizes the disputed domain names to resolve to a website which offers services that directly compete with Complainant. The use of the disputed domain names, which are confusingly similar to Complainant’s SHOUTCAST mark, to redirect Internet users to the commercial website of the Respondent is not a use in connection with either a bona fide offering of services or a legitimate noncommercial or fair use. Respondent’s use does not establish rights or legitimate interests in the disputed domain names sufficient to satisfy Policy ¶¶ 4(c)(i) or (iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Prudential Ins. Co. of Am. v. Stonybrook Invs., LTD, FA 100182 (Nat. Arb. Forum Nov. 15, 2001) (finding no rights or legitimate interests in the disputed domain name where the respondent was using the complainant’s mark to redirect Internet users to a website offering credit card services unrelated to those services legitimately offered under the complainant’s mark); see also U.S. Franchise Sys., Inc. v. Howell, FA 152457 (Nat. Arb. Forum May 6, 2003) (holding that the respondent’s use of the complainant’s mark and the goodwill surrounding that mark as a means of attracting Internet users to an unrelated business was not a bona fide offering of goods or services); see also Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb.18, 2000) (finding (i) the fact that the complainant has not licensed or otherwise permitted the respondent to use any of its trademarks, and (ii) the fact that the word TELSTRA appears to be an invented word, and as such is not one traders would legitimately choose unless seeking to create an impression of an association with the complainant, demonstrate that the respondent lacks rights or legitimate interests in the domain name).
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent has made an unsolicited offer to sell the disputed domain
names to Complainant. Such an offer for
sale is evidence of Respondent’s bad faith registration and use of the domain
names pursuant to Policy ¶ 4(b)(i). See Am.
Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000)
(finding that “general offers to sell the domain name, even if no certain price
is demanded, are evidence of bad faith”); see
also Little Six, Inc. v.
Domain For
Respondent is using the disputed domain names to operate commercial websites which offer services which compete with Complainant. Such use diverts Internet users seeking Complainant’s services to the websites of Respondent, thereby increasing traffic to Respondent’s commercial sites. Respondent’s use is likely to lead to confusion among Internet users as to Complainant’s sponsorship of or affiliation with the resulting websites. Such use may be found to be evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”); see also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
Accordingly, the
Panel finds that Policy ¶ 4(a)(iii) has been
satisfied.
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 <shoutcastpro.com>, <shoutcastpro.net>,
<shoutcastpro.info>, <shoutcastpro.org>, <shoutcastpro.biz>,
<shoutcastempire.com>, <shoutcastempire.net>, <shoutcastempire.info>,
and <shoutcastempire.org> domain names be TRANSFERRED
from Respondent to Complainant.
_
James A. Carmody, Esq., Panelist
Dated: January 14, 2008
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