national arbitration forum

 

DECISION

 

AOL LLC v. Chharavuth Chhit d/b/a Songha

Claim Number: FA0802001145899

 

PARTIES

Complainant is AOL LLC (“Complainant”), represented by Blake TR. Bertagna, of Arent Fox LLP, Washington, D.C., USA.  Respondent is Chharavuth Chhit d/b/a Songha (“Respondent”), Connecticut, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <aimwimzi.com>, <aimpagessex.com>, <aimpags.com>, <aimpagescustomize.com>, <aimcustomize.com>, <aimpagesgraphic.com>, <aimpaiges.com>, <aim-doll.com>, and <aimpagez.com>, registered with Spot Domain LLC.  The domain names at issue are <aimpages.org> and <aimpages.info> registered with Spot Domain LLC d/b/a Domainsite.com.

 

PANEL

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.

 

James A. Crary as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on February 15, 2008; the National Arbitration Forum received a hard copy of the Complaint on February 18, 2008.

 

On February 19, 2008, Spot Domain LLC confirmed by e-mail to the National Arbitration Forum that the <aimwimzi.com>, <aimpagessex.com>, <aimpags.com>, <aimpagescustomize.com>, <aimcustomize.com>, <aimpagesgraphic.com>, <aimpaiges.com>, <aim-doll.com>, and <aimpagez.com> domain names are registered with Spot Domain LLC and that Respondent is the current registrant of the names.  Spot Domain LLC has verified that Respondent is bound by the Spot Domain LLC 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 19, 2008, Spot Domain LLC d/b/a Domainsite.com confirmed by e-mail to the National Arbitration Forum that the <aimpages.org> and <aimpages.info> domain names are registered with Spot Domain LLC d/b/a Domainsite.com and that Respondent is the current registrant of the names.  Spot Domain LLC d/b/a Domainsite.com has verified that Respondent is bound by the Spot Domain LLC d/b/a Domainsite.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the Policy.

 

On February 22, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 13, 2008 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@aimwimzi.com, postmaster@aimpagessex.com, postmaster@aimpages.org, postmaster@aimpags.com, postmaster@aimpages.info, postmaster@aimpagescustomize.com, postmaster@aimcustomize.com, postmaster@aimpagesgraphic.com, postmaster@aimpaiges.com, postmaster@aim-doll.com, and postmaster@aimpagez.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On March 20, 2008 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Crary as Panelist.

 

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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <aimwimzi.com>, <aimpagessex.com>, <aimpages.org>, <aimpags.com>, <aimpages.info>, <aimpagescustomize.com>, <aimcustomize.com>, <aimpagesgraphic.com>, <aimpaiges.com>, <aim-doll.com>, and <aimpagez.com> domain names are confusingly similar to Complainant’s AIM mark.

 

2.      Respondent does not have any rights or legitimate interests in the <aimwimzi.com>, <aimpagessex.com>, <aimpages.org>, <aimpags.com>, <aimpages.info>, <aimpagescustomize.com>, <aimcustomize.com>, <aimpagesgraphic.com>, <aimpaiges.com>, <aim-doll.com>, and <aimpagez.com> domain names.

 

3.      Respondent registered and used the <aimwimzi.com>, <aimpagessex.com>, <aimpages.org>, <aimpags.com>, <aimpages.info>, <aimpagescustomize.com>, <aimcustomize.com>, <aimpagesgraphic.com>, <aimpaiges.com>, <aim-doll.com>, and <aimpagez.com> domain names in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, AOL LLC, is one of the largest and most well-known interactive online service providers with millions of subscribers in the United States.  One of Complainant’s flagship services is the “AOL Instant Messaging service,” or “AIM.”  During the quarter ending June 30, 2007, Complainant had 52 billion page views for the AOL network family of services with over 1.7 billion instant messages sent each day.  AIM is the number one messaging service in the United States.

 

Complainant has registered several tradenmarks for use in connection with the provision of these services including the AIM mark registered with the United States Patent and Trademark Office (“USPTO”) on January 23, 2001 (Reg. No. 2,423,367).

 

Respondent registered the <aimwimzi.com>, <aimpagessex.com>, <aimpages.org>, <aimpags.com>, <aimpages.info>, <aimpagescustomize.com>, <aimcustomize.com>, <aimpagesgraphic.com>, <aimpaiges.com>, <aim-doll.com>, and <aimpagez.com> domain names between April 20, 2006 and June 30, 2007.  Each of Respondent’s domain names resolve to websites that provide links to Complainant’s competitors.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Complainant asserts rights in the AIM mark through registration with the USPTO.  The Panel finds that Complainant has established rights in the mark pursuant to Policy ¶ 4(a)(i).  See Automotive Racing Products, Inc. v. Linecom, FA 836787 (Nat. Arb. Forum Dec. 21, 2006) (finding that the complainant’s federal trademark registration establishes rights under Policy ¶ 4(a)(i)); see also Lockheed Martin Corp. v. Hoffman, FA 874152 (Nat. Arb. Forum Jan. 31, 2007) (finding that the complainant had sufficiently established rights in the SKUNK WORKS mark through its registration with the USPTO).

 

Complainant contends that Respondent’s <aimwimzi.com>, <aimpagessex.com>, <aimpages.org>, <aimpags.com>, <aimpages.info>, <aimpagescustomize.com>, <aimcustomize.com>, <aimpagesgraphic.com>, <aimpaiges.com>, <aim-doll.com>, and <aimpagez.com> domain names are confusingly similar to Complainant’s AIM mark.  Each of Respondent’s domain names contain Complainant’s mark in its entirety and adds generic terms such as “wimzi,” “pages” or a variation thereof, “sex,” “customize,” “graphic” or “doll.”  Moreover, each of Respondent’s domain names contains the generic top-level domain (“gTLD”) “.com,” “.org,” or “.info.”  The Panel finds that these differences are not capable of distinguishing Respondent’s domain names from Complainant’s well-known AIM mark for purposes of Policy ¶ 4(a)(i).  See 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 Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied); see also 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).

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

Complainant contends that Respondent lacks all rights and legitimate interests in the <aimwimzi.com>, <aimpagessex.com>, <aimpages.org>, <aimpags.com>, <aimpages.info>, <aimpagescustomize.com>, <aimcustomize.com>, <aimpagesgraphic.com>, <aimpaiges.com>, <aim-doll.com>, and <aimpagez.com> domain names.  In instances such as this, where Complainant has made a prima facie case under Policy ¶ 4(a)(ii), the burden shifts to Respondent to set forth concrete evidence that it does possess rights or legitimate interests in the disputed domain names.  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”).

 

Complainant contends that Respondent is using the <aimwimzi.com>, <aimpagessex.com>, <aimpages.org>, <aimpags.com>, <aimpages.info>, <aimpagescustomize.com>, <aimcustomize.com>, <aimpagesgraphic.com>, <aimpaiges.com>, <aim-doll.com>, and <aimpagez.com> domain names to operate websites containing various sponsored links to websites featuring competing Internet services.  The Panel infers from Respondent’s use of the disputed domain names that it is collecting click-through fees for each Internet user redirected to competing commercial websites.  The Panel finds that Respondent’s operation of websites for the purpose of collecting click-through fees 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 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); 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).

 

Moreover, Respondent has submitted no evidence that it is either commonly known by the disputed domain names or authorized to register domain names featuring Complainant’s mark.  In the absence of such evidence, the Panel finds that Respondent has not established rights or legitimate interests pursuant to Policy ¶ 4(c)(ii).  See 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); 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 Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

Complainant contends that Respondent is using the <aimwimzi.com>, <aimpagessex.com>, <aimpages.org>, <aimpags.com>, <aimpages.info>, <aimpagescustomize.com>, <aimcustomize.com>, <aimpagesgraphic.com>, <aimpaiges.com>, <aim-doll.com>, and <aimpagez.com> domain names to operate websites that provides Internet users with links to various websites that offer competing Internet services.  The Panel finds that Respondent’s use of the disputed domain names constitutes a disruption of Complainant’s business and evinces bad faith pursuant to Policy ¶ 4(b)(iii).  See Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)); see also EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites).

 

Furthermore, Respondent’s use of the <aimwimzi.com>, <aimpagessex.com>, <aimpages.org>, <aimpags.com>, <aimpages.info>, <aimpagescustomize.com>, <aimcustomize.com>, <aimpagesgraphic.com>, <aimpaiges.com>, <aim-doll.com>, and <aimpagez.com> domain names will likely cause confusion as to Complainant’s sponsorship of and affiliation with the resulting websites.  The Panel finds that use of confusingly similar domain names for Respondent’s own commercial gain is additional evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See 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); see also Anne of Green Gable Licensing Auth., Inc. v. Internetworks, AF-0109 (eResolution June 12, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) because the respondent admittedly used the complainant’s well-known mark to attract users to the respondent's website).

 

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 <aimwimzi.com>, <aimpagessex.com>, <aimpages.org>, <aimpags.com>, <aimpages.info>, <aimpagescustomize.com>, <aimcustomize.com>, <aimpagesgraphic.com>, <aimpaiges.com>, <aim-doll.com>, and <aimpagez.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

James A. Crary Panelist

Dated:  April 2, 2008

 

 

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