AOL LLC v. Ravindra Bala
Claim Number: FA0809001224757
Complainant is AOL LLC (“Complainant”), represented by James
R. Davis of Arent Fox LLP,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <aolww.com>, <aimmoney.com>, <onlineaim.com>, and <aimhb.com>, registered with Godaddy.com, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically September 16, 2008; the National Arbitration Forum received a hard copy of the Complaint September 17, 2008.
On September 17, 2008, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <aolww.com>, <aimmoney.com>, <onlineaim.com>, and <aimhb.com> domain names are registered with Godaddy.com, Inc. and that Respondent is the current registrant of the names. Godaddy.com, Inc. 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 September 19, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 9, 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@aolww.com, postmaster@aimmoney.com, postmaster@onlineaim.com, and postmaster@aimhb.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 17, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain name that Respondent registered, <aolww.com>, is confusingly similar to Complainant’s AOL mark; and the domain names <aimmoney.com>, <onlineaim.com>, and <aimhb.com>, are confusingly similar to Complainant’s AIM mark.
2. Respondent has no rights to or legitimate interests in the <aolww.com>, <aimmoney.com>, <onlineaim.com>, and <aimhb.com> domain names.
3. Respondent registered and used the <aolww.com>, <aimmoney.com>, <onlineaim.com>, and <aimhb.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, AOL LLC, provides various entertainment, computer, and Internet-related goods and services. Complainant primarily markets its offerings under the AOL mark, which is registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,977,731 issued June 4, 1996). Complainant also offers instant messaging and other related services under the AIM mark, which is also registered with the USPTO (Reg. No. 2,423,368 issued January 23, 2001).
Respondent registered the <aimmoney.com> domain name January 8, 2003, the <onlineaim.com> domain name March 7, 2003, the <aolww.com> domain name March 26, 2003, and the <aimhb.com> domain name July 15, 2008. The disputed domain names do not resolve to any active websites, but instead indicate: “This domain is for sale.”
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."
Given 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 will draw such inferences as the Panel 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 Complainant to 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.
Complainant registered both its AOL and AIM marks with the
USPTO. This registration confers rights
in the marks to Complainant pursuant to Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes,
FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the
MICROSOFT mark through registration of the mark with the USPTO.”); see also Reebok Int’l Ltd. v.
Respondent’s <aolww.com> and <aimhb.com> domain names contain Complainant’s AOL and AIM marks, respectively, and add the letters “ww” and “hb.” These added letters do not distinguish the disputed domain names from Complainant’s marks. By the same token, Respondent’s <aimmoney.com> and <onlineaim.com> domain names contain Complainant’s AIM mark in its entirety and add the generic words “money” and “online.” Again, Complainant’s mark remains the dominant portion of these disputed domain names and addition of the generic terms does not add any distinctive characteristics. Each of the disputed domain names also adds the generic top-level domain (“gTLD”) “.com,” but this addition is irrelevant to this analysis since a top-level domain is required of all domain names. Therefore, the Panel finds that Respondent’s <aolww.com>, <aimmoney.com>, <onlineaim.com>, and <aimhb.com> domain names are confusingly similar to Complainant’s AOL and AIM marks, respectively, pursuant to Policy ¶ 4(a)(i). See Kelson Physician Partners, Inc. v. Mason, CPR003 (CPR 2000) (finding that <kelsonmd.com> is identical or confusingly similar to the complainant’s federally registered service mark, KELSON); see also Broadcom Corp. v. Domain Depot, FA 96854 (Nat. Arb. Forum Apr. 23, 2001) (finding the <broadcomonline.com> domain name is confusingly similar to the complainant’s BROADCOM mark); see also Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”).
The Panel finds that Complainant satisfied the elements of
ICANN Policy ¶ 4(a)(i).
Complainant alleged that Respondent lacks rights and legitimate interests in the disputed domain names. Based upon the allegations made in the Complaint, the Panel finds that Complainant made a prima facie showing pursuant to Policy ¶ 4(a)(ii), thus shifting the burden of proof to Respondent. Although Respondent did not respond to the Complaint, the Panel nonetheless examines the record to determine if Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c). See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interest in the subject domain names.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
The WHOIS domain name registration information for each of the disputed domain names identifies Respondent as “Ravindra Bala.” Respondent provided no affirmative evidence indicating it may be commonly known by the disputed domain name. The Panel therefore finds that Respondent lacks rights and legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip’t as the registrant of the disputed domain name and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there is no evidence in the record indicating that the respondent is commonly known by the disputed domain name).
Respondent has made no use of the disputed domain names other than to offer them for sale. Passive holding is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (finding that the respondent’s non-use of the <abc7chicago.mobi> domain name since its registration provided evidence that the respondent lacked rights and legitimate interests in the disputed domain name); see also U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (finding that a respondent had no rights or legitimate interests in a confusingly similar domain name where it had failed to use it).
In Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003), the panel stated that “Respondent’s apparent willingness to dispose of its rights in the <madd.com> domain name suggests that it lacks rights or legitimate interests in the domain name.” The Panel reaches the same conclusion in this case, especially since Respondent has not otherwise used the disputed domain names in any manner. The Panel therefore finds that Respondent’s offer to sell the disputed domain names provides further evidence that Respondent lacks rights and legitimate interests pursuant to Policy ¶ 4(a)(ii). See also Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests where the respondent registered the domain name with the intention of selling its rights).
The Panel finds that Complainant satisfied the elements of
ICANN Policy ¶ 4(a)(ii).
The fact that Respondent has made no active use of the disputed domain names other than to offer them for sale permits the Panel to make an inference that Respondent registered the disputed domain names with the primary intent of selling them for an amount in excess of its out-of-pocket costs. These circumstances support findings of bad faith registration and use pursuant to Policy ¶ 4(b)(i). See Globosat Programadora Ltda v. Artmidia Comunicação Criação E Arte Ltda., D2000-0605 (WIPO Sept. 13, 2000) (“[T]he fact that almost all the domain names registered by the the respondent or the Administrative Contact for these domains are inactive and redirected to a site apparently dedicated to the commerce of domain names, force this Panelist to consider that . . . . Respondent has registered the domain names primarily for the purpose of selling, renting or otherwise transferring the domain names registration to the Complainant or to a Complainant's competitor for valuable consideration.”); see also Educ. Testing Serv. v. TOEFL, D2000-0044 (WIPO Mar. 16, 2000) (finding that a general offer of sale combined with no legitimate use of the domain name constitutes registration and use in bad faith).
Respondent’s failure to use the disputed domain names also constitutes bad faith registration and use in and of itself pursuant to Policy ¶ 4(a)(iii). See Disney Enters. Inc. v. Meyers, FA 697818 (Nat. Arb. Forum June 26, 2006) (holding that the non-use of a disputed domain name for several years constitutes bad faith registration and use under Policy ¶ 4(a)(iii)); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that inactive use of a domain name permits an inference of registration and use in bad faith).
The Panel finds that Complainant satisfied the elements of
ICANN 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 <aolww.com>, <aimmoney.com>, <onlineaim.com>, and <aimhb.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: October 30, 2008.
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