AOL LLC v. Fatih YILDIZ
Claim Number: FA0803001158868
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 <openaim.com>, registered with Spot Domain LLC.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 7, 2008; the National Arbitration Forum received a hard copy of the Complaint on March 10, 2008.
On March 11, 2008, Spot Domain LLC confirmed by e-mail to the National Arbitration Forum that the <openaim.com> domain name is registered with Spot Domain LLC and that Respondent is the current registrant of the name. 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 March 12, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 1, 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 firstname.lastname@example.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 7, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant is a worldwide online service provider based in
Since 1997, Complainant has used the AIM service mark, which is registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,423,367, issued January 23, 2001).
Complainant’s AIM networks process billions of instant messages annually.
In 2006, Complainant began providing its OPEN AIM service, which allows website owners and developers to integrate AIM software into their websites.
Respondent registered the <openaim.com> domain name on November 28, 2007.
The disputed domain name currently resolves to an inactive website.
Respondent’s <openaim.com> domain name is confusingly similar to Complainant’s AIM mark.
Respondent does not have any rights to or legitimate interests in the <openaim.com> domain name.
Respondent registered and uses the <openaim.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has offered sufficient evidence of its rights in the AIM mark pursuant to Policy ¶ 4(a)(i) by virtue of its registration of the mark with the USPTO. 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.”
Respondent’s <openaim.com> domain name incorporates Complainant’s entire AIM mark, while merely adding the generic word “open” and the generic top-level domain “.com.” Under Policy ¶ 4(a)(i), the inclusion of a generic top-level domain is irrelevant to a Policy ¶ 4(a)(i) analysis. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of a domain name, such as “.net” or “.com”, does not affect the domain name for purposes of determining whether it is identical or confusingly similar to a competing mark). Moreover, the addition of a generic word to a disputed domain name fails to render the disputed domain name adequately distinct under Policy ¶ 4(a)(i), because Complainant’s mark remains the dominant feature of the disputed domain name. This is particularly true where, as here, the generic word relates to Complainant’s business. See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where a respondent’s domain name combines a complainant’s mark with a generic term that has an obvious relationship to that complainant’s business); see also Marriott Int’l, Inc. v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that a respondent’s domain name <marriott-hotel.com> is confusingly similar to a complainant’s MARRIOTT mark).
Therefore, the <openaim.com> domain name is confusingly similar to Complainant’s AIM mark pursuant to Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights to and legitimate interests in the <openaim.com> domain name. Complainant has therefore successfully made out a prima facie case supporting its allegations, so that the burden is shifted to Respondent to prove that it does nonetheless have rights to or legitimate interests in the contested domain name pursuant to Policy ¶ 4(a)(ii). See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under appropriate circumstances, the assertion by a complainant that a respondent has no right to or legitimate interest in a domain name is sufficient to shift the burden of proof to that respondent to demonstrate that such a right or legitimate interest exists).
And, because Respondent has failed to respond to the Complaint, we are free to conclude that it has no such rights or interests. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002):
Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).
We are nevertheless disposed to examine the record before us to determine whether there is any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name.
In this regard, we first note that there is no dispute that Respondent’s <openaim.com> domain name resolves to an inactive website with no discernible content other than an index to computerized file folders. In the circumstances, it is difficult to imagine a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii). We therefore conclude that Respondent’s inactive use of the disputed domain name indicates Respondent lack of rights to or legitimate interests in its domain pursuant to Policy ¶ 4(a)(ii). See Ziegenfelder Co. v. VMH Enter., Inc., D2000-0039 (WIPO Mar. 14, 2000) (finding that failure to provide a product or service or to develop a web site demonstrates that a respondent had not established rights to or legitimate interests in a domain name); see also TMP Int’l, Inc. v. Baker Enters., FA 204112 (Nat. Arb. Forum Dec. 6, 2003):
[T]he Panel concludes that Respondent's [inactive use] of the domain name does not establish rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).
Likewise, there is no evidence in the record, including the pertinent WHOIS domain name registration information, to suggest that Respondent is commonly known by the <openaim.com> domain name. Indeed, the registrant of the disputed domain name is listed as “Faith YILDIZ,” which bears no cognizable relation to the disputed domain name. Therefore, we conclude that Respondent lacks rights to and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003): “Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.” See also G.D. Searle & Co. v. Cimock, FA 126829 (Nat. Arb. Forum Nov. 13, 2003): “Due to the fame of Complainant’s mark there must be strong evidence that Respondent is commonly known by the disputed domain name in order to find that Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). However, there is no evidence on record, and Respondent has not come forward with any proof to establish that it is commonly known as CELEBREXRX or <celebrexrx.com>.”
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
Given that Respondent incorporated Complainant’s registered AIM mark in the disputed domain name, and that Respondent has failed to offer any evidence of plans to develop a corresponding website, we conclude that its inactive use of the disputed domain name and corresponding website is evidence of Respondent’s bad faith registration and use of the domain pursuant to Policy ¶ 4(a)(iii). See Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that a respondent made no use of a domain name or website that connects with that domain name, and that such inactive use of a domain name permits an inference of registration and use in bad faith); see also Mondich v. Brown, D2000-0004 (WIPO Feb. 16, 2000) (holding that a respondent’s failure to develop its website in a two year period raises an inference of registration in bad faith).
In addition, it appears that Respondent registered the <openaim.com> domain name with at least constructive knowledge of Complainant’s rights in the AIM service mark by virtue of Complainant’s prior registration of that mark with the United States Patent and Trademark Office. Registration of a confusingly similar domain name despite such constructive knowledge is, without more, evidence of bad faith registration and use of the domain name pursuant to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002).
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <openaim.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: April 17, 2008
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