AOL LLC v. Jartel Inc.
Claim Number: FA0803001160150
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 <aimcall.com>, registered with Godaddy.com, 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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 11, 2008; the National Arbitration Forum received a hard copy of the Complaint on March 12, 2008.
On March 13, 2008, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <aimcall.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, Inc. 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 24, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 14, 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 18, 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 one of the largest online services providers in the world.
One of Complainant’s flagship services has been its instant messaging service AOL Instant Messenger, or AIM, a free online service that permits Internet users to communicate electronically in real time.
Complainant holds a registration for the AIM trademark with the United States Patent and Trademark Office (“USPTO”), (Reg. No. 2,423,368 issued January 23, 2001).
Respondent registered the <aimcall.com> domain name on January 19, 2005.
Respondent’s domain name resolves to a web page that displays Complainant’s AIM mark and provides links to websites of Complainant’s business competitors.
Respondent is not commonly known by the <aimcall.com> domain name.
Respondent’s domain name is confusingly similar to Complainant’s AIM mark.
Respondent does not have any rights to or legitimate interests in the disputed <aimcall.com> domain name.
Respondent registered and uses the <aimcall.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 trademark 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 alleges rights to in AIM mark based on its USPTO trademark registration. Under the Policy, registration of a mark with the pertinent government authority, such as the USPTO, confers rights in that mark on a complainant. Complainant has thus established rights to the AIM mark for purposes of 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 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.”
Complainant also alleges that the <aimcall.com> domain name is confusingly similar to its registered AIM mark. The disputed domain name incorporates Complainant’s mark in its entirety, and merely adds the generic term “call” and the generic top-level domain (“gTLD”) “.com.” The addition of generic words and gTLD do not eliminate the confusing similarity between the disputed domain name and Complainant’s mark. Therefore, Respondent’s <aimcall.com> domain name is confusingly similar to Complainant’s AIM mark pursuant to Policy ¶ 4(a)(i). See 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 Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000):
[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants . . . .
The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent does not have rights to or legitimate interests in the <aimcall.com> domain name. Once Complainant makes out a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have rights to or legitimate interests in its domain under Policy ¶ 4(a)(ii). 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.
Complainant has established a prima facie case pursuant to Policy ¶ 4(a)(ii). Because Respondent has not responded to the Complaint, we may presume that Respondent does not have rights to or legitimate interests in the disputed domain name. See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where a respondent fails to respond); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that a respondent’s failure to respond can be construed as an admission that it has no legitimate interest in contested domain names). However, we will nonetheless examine the record to determine if there is any basis for concluding that Respondent has such rights or interests within the contemplation of Policy ¶ 4(c).
We begin by noting that Complainant alleges, and Respondent does not deny, that Respondent is not commonly known by the <aimcall.com> domain name. Indeed, the pertinent WHOIS information identifies Respondent as “Jartel, Inc.”, and no other information in the record suggests that Respondent is commonly known by the disputed domain name. Therefore, we conclude that Respondent lacks rights to and legitimate interests in the <aimcall.com> domain name pursuant to Policy ¶ (c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating that the fact that “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also 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.”
We also observe that there is no dispute as to Complainant’s allegation that Respondent is using the <aimcall.com> domain name in connection with a website that promotes and provides links to third-party websites, including those of Complainant’s business competitors. We are entitled to presume that Respondent receives click-through fees for each redirected Internet user. Therefore, we conclude that the alleged use of Respondent’s <aimcall.com> domain name is not in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (finding that a respondent’s use of a domain name to operate a pay-per-click search engine, in competition with a complainant’s bsuiness, was not a bona fide offering of goods or services); see also Ultimate Elecs., Inc. v. Nichols, FA 195683 (Nat. Arb. Forum Oct. 27, 2003) (finding that a respondent's “use of the domain name (and Complainant’s mark) to sell products in competition with Complainant demonstrates neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the name”).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <aimcall.com> domain name to display links to Complainant’s business competitors, and Respondent presumably receives click-through fees for each redirected Internet user and is therefore attempting to gain commercially from the goodwill associated with Complainant’s AIM mark. Complainant alleges bad faith in Respondent’s registration and use of the disputed domain name because Respondent displays Complainant’s AIM and associated mark on its webpage. We conclude from this that Respondent registered and uses the <aimcall.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where a respondent registered and used a domain name confusingly similar to a complainant’s mark to attract users to a website sponsored by that respondent); see also TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where a respondent used a domain name, for commercial gain, to attract users to a competitor of a complainant); see also Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002):
Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.
For this reason, 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 <aimcall.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: April 30, 2008
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