AOL LLC v. George May a/k/a International Domain Registry a/k/a Australian Internet Inverstmenst Pty Ltd
Claim Number: FA0810001231100
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 <sydneyaol.com>, <aol-officialsite.com>, <mapquestltd.com>, <mapquestinc.com>, <mapquestptyltd.com>, <mapquest-officialsite.com>, <netscape-officialsite.com>, <instantmessenger-officialsite.com>, <winamp-officialsite.com>, <icq-officialsite.com>, <engadget-officialsite.com>, and <engadgets-officialsite.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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 24, 2008; the National Arbitration Forum received a hard copy of the Complaint on October 29, 2008.
On
On November 4, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 24, 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@sydneyaol.com, postmaster@aol-officialsite.com, postmaster@mapquestltd.com, postmaster@mapquestinc.com, postmaster@mapquestptyltd.com, postmaster@mapquest-officialsite.com, postmaster@netscape-officialsite.com, postmaster@instantmessenger-officialsite.com, postmaster@winamp-officialsite.com, postmaster@icq-officialsite.com, postmaster@engadget-officialsite.com, and postmaster@engadgets-officialsite.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 3, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <sydneyaol.com> and <aol-officialsite.com> domain names are confusingly similar to Complainant’s AOL mark. Respondent’s <mapquestltd.com>, <mapquestinc.com>, <mapquestptyltd.com>, and <mapquest-officialsite.com> domain names are confusingly similar to Complainant’s MAPQUEST mark. Respondent’s <netscape-officialsite.com> domain name is confusingly similar to Complainant’s NETSCAPE mark. Resondent’s <instantmessenger-officialsite.com> domain name is confusingly similar to Complainant’s INSTANT MESSANGER mark. Respondent’s <winamp-officialsite.com> domain name is confusingly similar to Complainant’s WINAMP mark. Respondent’s <icq-officialsite.com> domain name is confusingly similar to Complainant’s ICQ mark. Respondent’s <engadget-officialsite.com>, and <engadgets-officialsite.com> domain names are confusingly similar to Complainant’s ENGADGET mark.
2. Respondent does not have any rights or legitimate interests in the <sydneyaol.com>, <aol-officialsite.com>, <mapquestltd.com>, <mapquestinc.com>, <mapquestptyltd.com>, <mapquest-officialsite.com>, <netscape-officialsite.com>, <instantmessenger-officialsite.com>, <winamp-officialsite.com>, <icq-officialsite.com>, <engadget-officialsite.com>, and <engadgets-officialsite.com> domain names.
3. Respondent registered and used the <sydneyaol.com>, <aol-officialsite.com>, <mapquestltd.com>, <mapquestinc.com>, <mapquestptyltd.com>, <mapquest-officialsite.com>, <netscape-officialsite.com>, <instantmessenger-officialsite.com>, <winamp-officialsite.com>, <icq-officialsite.com>, <engadget-officialsite.com>, and <engadgets-officialsite.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, AOL LLC, is an
online service company that holds multiple trademark registrations with the
United States Patent and Trademark Office (“USPTO”) for its various marks in
relation to online services. The AOL
mark (Reg. No. 1,977,731) was issued on June 4, 1996. The MAPQUEST mark (Reg. No. 2,129,378) was issued
January 13, 1998. The NETSCAPE mark
(Reg. No. 2,027,552) was issued on December 31, 1996. The INSTANT MESSENGER mark (Reg. No.
3,310,193) was issued on October 16, 2007.
The WINAMP mark (Reg. No. 2,557,585) was issued on April 9, 2002. The ICQ mark (Reg. No. 2,411,657) was issued
on December 12, 2000. The ENGADGET mark
(Reg. No. 3,305,394) was issued on October 24, 2006.
Respondent registered the <mapquestltd.com>, <mapquestinc.com>, <mapquestptyltd.com>
domain names 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’s registrations of its marks with the USPTO are
sufficient to establish Complainant’s rights in the marks pursuant to Policy ¶
4(a)(i). See Innomed Techs., Inc. v. DRP Servs.,
FA 221171 (Nat. Arb. Forum
Respondent’s use of the generic top-level domain (“gTLD”) “.com” is irrelevant for the purpose of determining whether the disputed domain names are identical or confusingly similar to the mark pursuant to Policy ¶ 4(a)(i). See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”); 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 <sydneyaol.com> domain name includes the
AOL mark in its entirety and adds the geographic term “
The <mapquestltd.com>, <mapquestinc.com>,
and <mapquestptyltd.com> domain names incorporate Complainant’s
MAPQUEST mark and add abbreviations for various types of business organizations
to the end. “Ltd” is an abbreviation for
“Limited” which is a type of business firm owned by stockholders, each
having a restricted liability for the company's debts. “Inc.” is an
abbreviation for “Incorporated,” a type of business that forms a legal
corporation. “Pty” is an abbreviation
for “Proprietary,” which is a legal term denoting ownership. The addition of abbreviations of generic
terms to the MAPQUEST result in confusing similarity between the disputed
domain names and the mark pursuant to Policy ¶ 4(a)(i). See Arthur Guinness Son & Co. (
The <aol-officialsite.com>, <mapquest-officialsite.com>,
<netscape-officialsite.com>, <instantmessenger-officialsite.com>,
<winamp-officialsite.com>, <icq-officialsite.com>,
and <engadget-officialsite.com> domain names incorporate
Complainant’s AOL, MAPQUEST, NETSCAPE, INSTANT MESSANGER, WINAMP, ICQ, and
ENGADGET marks respectively and adds a hyphen and the generic phrase “official
site.” The addition of the hyphen is
irrelevant to the determination of confusing similarity pursuant to Policy ¶
4(a)(i). See Health Devices Corp. v.
The
<engadgets-officialsite.com> domain name includes Complainant’s
ENGADGET mark, adds an “s,” a hyphen, and the generic phrase “official
site.” As discussed in the preceeding paragraph,
the addition of the hyphen and the phrase “official site” to the mark results
in confusingly similarity pursuant to Policy ¶ 4(a)(i). The addition of the letter “s” does not
dispel this confusing similarity and the Panel finds the <engadgets-officialsite.com>
domain name confusingly similar to Complainant’s ENGADGET mark pursuant to
Policy ¶ 4(a)(i). See Nat’l Geographic Soc’y v. Stoneybrook Invs., FA
96263 (Nat. Arb. Forum Jan. 11, 2001) (finding that the domain name
<nationalgeographics.com> was confusingly similar to the complainant’s
NATIONAL GEOGRAPHIC mark); see also Cream Pie Club v. Halford, FA
95235 (Nat. Arb. Forum Aug. 17, 2000) (finding that “the addition of an ‘s’ to
the end of the complainant’s mark, ‘Cream Pie’ does not prevent the likelihood
of confusion caused by the use of the remaining identical mark. The domain name
<creampies.com> is similar in sound, appearance, and connotation”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i) with respect to each of the disputed domain names.
The initial burden under Policy ¶ 4(a)(ii) is on Complainant to prove that Respondent does not have any rights or legitimate interests in the disputed domain names. Once Complainant has made a prima facie case, the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to the directions provided in Policy ¶ 4(c). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”). The Panel finds that Complainant has presented a prima facie case, and the Panel now chooses to consider whether an evaluation of all the evidence demonstrates rights or legitimate interests for Respondent under Policy ¶ 4(c).
The Panel finds no evidence in the record suggesting that
Respondent is commonly known by any of the disputed domain names. Complainant asserts that Respondent has no
license or agreement with Complainant authorizing Respondent to use the any of its marks, and
the WHOIS information for each of the disputed domain names identifies Respondent
as “George May a/k/a International Domain
Registry a/k/a Australian Internet Investments Pty Ltd.” Thus, Respondent has not established rights
or legitimate interests in the disputed domain names under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum
Respondent is using all the disputed domain names except the <sydneyaol.com> domain name to resolve to websites listing
links to third-party sites, some of which compete with Complainant’s
business. Respondent’s is
using the disputed domain names, which are confusingly similar to Complainant’s
marks, to redirect Internet users
interested in Complainant’s products to third-party websites. These websites are both unrelated and in
competition with Complainant’s business.
The Panel finds this use is not a use in connection with a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i), or a noncommercial or
fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii). See TM Acquisition Corp. v.
Sign Guards, FA 132439 (Nat. Arb. Forum
No active use is being made of the <sydneyaol.com> domain name. The Panel finds this to be evidence that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See 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).”); see also Am. Home Prods. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or legitimate interests in the domain name <solgarvitamins.com> where the respondent inactively held the domain name).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel infers that Respondent registered and used the 12
disputed domain names to prevent Complainant from reflecting its marks in the
corresponding domain names. The Panel
finds the registration and use of 12 domain names that are confusingly similar
to Complainant’s marks is evidence of bad faith registration and use pursuant
to Policy ¶4(b)(ii).
See Harcourt,
Inc. v. Fadness, FA 95247 (Nat. Arb. Forum
Respondent is using the disputed domain names, which are confusingly similar to Complainant’s marks, to redirect Internet users to Respondent’s website that features links to third-party sites, some of which compete with Complainant’s business. The Panel finds that such use constitutes disruption and is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business); see also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”).
The Panel infers
that Respondent receives click-through fees for diverting Internet users to
third-party websites. Because
Respondent’s domain name is confusingly similar to Complainant’s marks, Internet users accessing Respondent’s
disputed domain names may become confused as to Complainant’s sponsorship of
the resulting website. Thus,
Respondent’s use of the disputed domain names constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum
Currently, Respondent is not using the <sydneyaol.com> domain name. This is further evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Body Shop Int’l PLC v. CPIC NET, D2000-1214 (WIPO Nov. 26, 2000) (finding bad faith where (1) the respondent failed to use the domain name and (2) it is clear that the respondent registered the domain name as an opportunistic attempt to gain from the goodwill of the complainant); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).
The Panel finds that Complainant has satisfied 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 <sydneyaol.com>, <aol-officialsite.com>, <mapquestltd.com>, <mapquestinc.com>, <mapquestptyltd.com>, <mapquest-officialsite.com>, <netscape-officialsite.com>, <instantmessenger-officialsite.com>, <winamp-officialsite.com>, <icq-officialsite.com>, <engadget-officialsite.com>, and <engadgets-officialsite.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: December 12, 2008
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