AOL LLC v. Private a/k/a NA NA
Claim Number: FA0809001225345
Complainant is AOL LLC (“Complainant”), represented by James
R. Davis, of Arent Fox LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <maoquest.com>, registered with Enom, 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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On September 29, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 20, 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@maoquest.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 <maoquest.com> domain name is confusingly similar to Complainant’s MAPQUEST mark.
2. Respondent does not have any rights or legitimate interests in the <maoquest.com> domain name.
3. Respondent registered and used the <maoquest.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, AOL LLC, uses the MAPQUEST mark to provide
services and general interest information on the Internet. Complainant registered the MAPQUEST mark with
the United States Patent and Trademark Office (“USPTO”) on
Respondent registered the <maoquest.com>
domain name 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.
Complainant asserts rights in the MAPQUEST mark by
evidencing its corresponding USPTO trademark registrations, which is one way to
establish rights in a mark under an analysis of the UDRP. Therefore, the Panel finds that Complainant
has established rights in the MAPQUEST mark pursuant to Policy ¶ 4(a)(i). See State
Farm Mut. Auto. Ins. Co. v. Malain, FA 705262 (Nat. Arb. Forum June 19,
2006) (“Complainant’s registrations with the United States Patent and Trademark
Office of the trademark, STATE FARM, establishes its rights in the STATE FARM
mark pursuant to Policy ¶ 4(a)(i).”); see
also Diners Club Int’l Ltd. v. Rulator Corp., FA 967678 (Nat. Arb. Forum
Under Policy ¶ 4(a)(i), Complainant must establish that the
disputed domain name is identical or confusingly similar to its MAPQUEST
mark. The disputed <maoquest.com> domain name contains a
slightly misspelled variation of Complainant’s mark by replacing the “p” with
an “o.” No other changes have been added
to the mark other than adding the generic top-level domain (“gTLD”) “.com,”
which is insignificant under an analysis of the Policy since all domain names
require a top-level domain. Being the
only word in the disputed domain name, Respondent’s misspelled version of
Complainant’s mark still leaves the impression that the disputed domain name is
or should be affiliated with Complainant, and this one-letter difference does
not distinguish the disputed domain name in any way. On this basis, the Panel concludes that
Respondent’s <maoquest.com>
domain name is confusingly similar to Complainant’s MAPQUEST mark pursuant to
Policy ¶ 4(a)(i). See Intelius, Inc. v. Hyn, FA
703175
(Nat. Arb. Forum July 5, 2006) (finding the <intellus.com> domain name to
be confusingly similar to the complainant’s INTELIUS mark because the domain
name differed from the mark by one letter and was visually similar); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat.
Arb. Forum
The Panel finds that Complainant has satisfied the
requirements of Policy ¶ 4(a)(i).
Complainant has alleged that Respondent lacks rights and legitimate interests in the <maoquest.com> domain name. Based upon the allegations made in the Complaint, the Panel finds that Complainant has established a prima facie case pursuant to Policy ¶ 4(a)(ii), thus shifting the burden of proof to Respondent. Since Respondent has not responded to the Complaint, the Panel will examine the record to determine if Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c). See Mason Cos., Inc. v. Chan, FA 1216166 (Nat. Arb. Forum Sept. 4, 2008) (“The Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the [disputed domain] name. Thus, the burden shifts to Respondent to demonstrate that it does have such rights or interests.”); 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).
Under Policy ¶ 4(c)(ii), a respondent can demonstrate that
it is commonly known by the disputed domain name in order to establish rights
or legitimate interests pursuant to Policy ¶ 4(a)(ii). In this case, however, Respondent cannot
succeed on this point. The WHOIS domain
name registration information for the <maoquest.com>
domain name identifies Respondent as “Private aka NA NA,” which provides no
help for Respondent. In addition,
Complainant has stated conclusively in its Complaint that Respondent is not
licensed or authorized to use Complainant’s MAPQUEST mark, or variations of
that mark. Therefore, based on the
evidence present in the record, the Panel concludes that Respondent is not
commonly known by the <maoquest.com>
domain name and lacks rights and legitimate interests pursuant to Policy ¶
4(c)(ii). See Tercent Inc. v. Lee Yi,
FA 139720 (Nat. Arb. Forum
Respondent’s use of the <maoquest.com> domain name is also a relevant point of analysis under Policy ¶¶ 4(c)(i) and (iii). Complainant evidenced in the record that Respondent is using the <maoquest.com> domain name to display a list of hyperlinks advertising various maps and related services. Complainant also provides maps and similar services under its MAPQUEST mark, so Respondent’s use of the disputed domain name is considered competitive with Complainant’s business. When an Internet user clicks on one of these posted links on the website resolving from the <maoquest.com> domain name, Respondent presumably earns click-through fees for the redirected Internet user. Thus, Respondent’s advertising of competitive products and services is an attempt to profit off of the goodwill associated with Complainant’s MAPQUEST mark. The Panel finds that this certainly does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it qualify as a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). The Panel accordingly holds that Respondent lacks rights and legitimate interests pursuant to these two Policy sections as well. See Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding that the respondent was not using a disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by redirecting Internet users to a commercial search engine website with links to multiple websites that may be of interest to the complainant’s customers and presumably earning “click-through fees” in the process); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (holding that using an identical or confusingly similar domain name to earn click-through fees via sponsored links to a complainant’s competitors does not represent 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)).
While the Panel has found for Complainant under the elements
of Policy ¶ 4(c), which means in this case that Complainant has satisfied
Policy ¶ 4(a)(ii), the Panel will make one additional finding in this section. As mentioned earlier, Respondent’s <maoquest.com> domain name is
comprised of a one-letter misspelling of Complainant’s mark by replacing the
“p” with an “o.” However, the Panel
notes that these two letters are adjacent to one another on a keyboard, which
makes it more likely that Internet users may mistakenly enter the disputed
domain name when typing the Internet address when they meant to find
Complainant’s website. Respondent is
therefore attempting to exploit a common typographical error potentially made
by Internet users. This fact provides a
sufficient basis to hold that Respondent lacks rights and legitimate interests
in the <maoquest.com> domain
name pursuant to Policy ¶ 4(a)(ii). See IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that
the respondent lacked rights and legitimate interests in the disputed
domain names because it “engaged in the practice of typosquatting
by taking advantage of Internet users who attempt to access Complainant's
<indymac.com> website but mistakenly misspell Complainant's mark by
typing the letter ‘x’ instead of the letter ‘c’”); see also Microsoft Corp. v.
Domain Registration
The Panel has found a sufficient basis to conclude that Policy ¶ 4(a)(ii) has been satisfied, and analysis of its elements support a finding in favor of Complainant under this section of the Policy.
The record has established that Respondent’s use of the <maoquest.com> domain name to offer various maps and related services competes with Complainant’s business. Thus, Respondent’s use has the potential to disrupt Complainant’s business by diverting customers to other suppliers advertised on Respondent’s website resolving from the <maoquest.com> domain name. This establishes Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) when the disputed domain name resolved to a website that displayed commercial links to the websites of the complainant’s competitors in the financial services industry).
Respondent’s confusingly similar <maoquest.com> domain name is also likely to cause
confusion among customers searching for Complainant’s products and services
promoted under the MAPQUEST mark. When
an Internet user reaches Respondent’s resolving website, he or she may believe,
and understandably so, that the website and advertised content is sponsored or
endorsed by, or affiliated with, Complainant when that is not the case. Respondent is attempting to profit from this
likelihood of confusion by accruing click-through fees for each redirected
Internet user. The Panel finds that such
registration and use of the <maoquest.com>
domain name equates to bad faith pursuant to Policy ¶ 4(b)(iv). See Asbury
Auto. Group, Inc. v.
Finally, in the analysis of Policy ¶ 4(a)(ii), the Panel
found that Respondent engaged in typosquatting.
This fact in and of itself is sufficient to conclude that Respondent’s
registration and use of the <maoquest.com>
domain name was in bad faith pursuant to Policy ¶ 4(a)(iii). See Zone Labs, Inc.
v. Zuccarini, FA 190613 (Nat. Arb.
Forum
The foregoing analysis leads that Panel to conclude that
Policy ¶ 4(a)(iii) has been satisfied in favor of Complainant.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <maoquest.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: November 6, 2008
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