AOL LLC v. X10 Wireless Technology, Inc.
Claim Number: FA0712001117832
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 <winampremote.com>, registered with Network Solutions, Inc.
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
On December 6, 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@winampremote.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 <winampremote.com> domain name is confusingly similar to Complainant’s WINAMP mark.
2. Respondent does not have any rights or legitimate interests in the <winampremote.com> domain name.
3. Respondent registered and used the <winampremote.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant and its predecessor-in-interest have
continuously used the WINAMP mark since 1997 in connection with computer
software for organizing, creating, playing, and using multimedia content and
other data files. Complainant promotes
and distributes the software through its website maintained at the
<winamp.com> domain name.
Additionally, Complainant owns registrations of the mark with the United
States Patent and Trademark Office (“USPTO”) (Reg. No. 2,734,590 issued
The <winampremote.com> domain name was
registered 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.
The Panel finds that Complainant has sufficiently
established its rights in the WINAMP mark through registration with the USPTO
pursuant to Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration
of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the
mark.”); see also Smart
Design LLC v. Hughes, D2000-0993 (WIPO Oct. 18, 2000) (holding that ICANN
Policy ¶ 4(a)(i) does not require the complainant to
demonstrate ‘exclusive rights,’ but only that the complainant has a bona
fide basis for making the complaint in the first place).
The <winampremote.com>
domain name contains Complainant’s WIPAMP mark in its entirety and then both
the generic term “remote” and the generic top-level domain (“gTLD”)
“.com.” It is well-established that the
inclusion of a gTLD and a generic term such as “remote,” does not distinguish a
disputed domain name from a mark.
Therefore, the Panel finds that the <winampremote.com>
domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶
4(a)(i). See
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); see
also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH,
D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain
name in dispute contains the identical mark of the complainant combined with a
generic word or term); see also Am. Int’l Group, Inc. v. Ling Shun Shing,
FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the
term “assurance,” to the complainant’s AIG mark failed to sufficiently
differentiate the name from the mark under Policy ¶ 4(a)(i) because the
appended term related directly to the complainant’s business).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii),
Complainant must first establish a prima
facie case that Respondent has no rights or legitimate interests in the
disputed domain name. See VeriSign Inc. v. VeneSign
No response was submitted to the Complaint. As a result, the Panel presumes that
Respondent has no rights or legitimate interests in the <winampremote.com>
domain name but will nonetheless consider the factors listed under Policy ¶
4(c). See Bank of Am. Corp. v. McCall, FA
135012 (Nat. Arb. Forum Dec. 31, 2002)
(“Respondent's failure to respond not only results in its failure to meet its
burden, but also will be viewed as evidence itself that Respondent lacks rights
and legitimate interests in the disputed domain name.”); see also BIC
Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000)
(“By not submitting a response, Respondent has failed to invoke any
circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any
rights or legitimate interests in the domain name”).
Nothing in Respondent’s WHOIS information or anything else
in the record indicates that Respondent is or ever was commonly known by the
disputed domain name. Moreover,
Respondent has never sought nor received permission from Complainant to use the
WINAMP mark in any way. Consequently,
the Panel finds that Respondent is not nor ever was commonly known by the
disputed domain name pursuant to Policy ¶ 4(c)(ii). See 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); see also 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).
The <winampremote.com> domain name is used to
promote and provide goods and services that are in direct competition with
those offered under Complainant’s mark.
The Panel finds that this is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to
Policy ¶ 4(c)(iii). See Computerized Sec. Sys.,
Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s
appropriation of [Complainant’s] SAFLOK mark to market products that compete
with Complainant’s goods does not constitute a bona fide offering of goods and
services.”); see also Coryn Group, Inc. v. Media
Insight, FA 198959 (Nat. Arb. Forum Dec.
5, 2003) (finding that the respondent was not using the domain names for a bona
fide offering of goods or services nor a legitimate noncommercial or fair
use because the respondent used the names to divert Internet users to a website
that offered services that competed with those offered by the complainant under
its marks).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
The disputed domain name resolves to a website offering
products and services in direct competition with those offered under the WINAMP
mark. The Panel assumes the purpose of
this is to disrupt Complainant’s business and is thus evidence that Respondent
registered and is using the <winampremote.com> domain name in bad
faith pursuant to Policy ¶ 4(b)(iii). See S. Exposure
v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum
Furthermore, Respondent’s promotion and selling of products
and services through the disputed domain name demonstrates that Respondent is
commercially benefiting from the disputed domain name’s confusingly similarity
with Complainant’s mark. As a result,
the Panel finds this to be additional evidence that Respondent registered and
is using the <winampremote.com> domain name in bad faith pursuant
to Policy ¶ 4(b)(iv).
See Amazon.com, Inc. v. Shafir, FA 196119 (Nat. Arb. Forum Nov. 10, 2003) (“As Respondent is using the domain name at issue
in direct competition with Complainant, and giving the impression of being
affiliated with or sponsored by Complainant, this circumstance qualifies as bad
faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iv).”); see also Computerized
Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding
that the respondent’s use of the <saflock.com> domain name to offer goods
competing with the complainant’s illustrates the respondent’s bad faith
registration and use of the domain name, evidence of bad faith registration and
use pursuant to Policy ¶ 4(b)(iv)).
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 <winampremote.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated:
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