AOL LLC v. Andy Balasis
Claim Number: FA0905001261562
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 <autoblognews.com>, registered with Godaddy.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 7, 2009; the National Arbitration Forum received a hard copy of the Complaint on May 8, 2009.
On May 7, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <autoblognews.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 May 11, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 1, 2009 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@autoblognews.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 8, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <autoblognews.com> domain name is confusingly similar to Complainant’s AUTOBLOG mark.
2. Respondent does not have any rights or legitimate interests in the <autoblognews.com> domain name.
3. Respondent registered and used the <autoblognews.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, AOL LLC,
operates one of the most widely-used interactive online services in the world
and each year millions of customers worldwide obtain services offered by
Complainant. Complainant acquired the
AUTOBLOG mark in 2005 and has subsequently used this mark in connection with
the advertising sale of its Internet-based services like automobiles. Complainant’s predecessor began using the
mark in commerce in 2004. Complainant
has invested significant amounts of money and resources to develop and market
the services provided under the AUTOBLOG mark.
Respondent registered the <autoblognews.com> domain name on July 18, 2007. The disputed domain name resolves to a website that is nearly identical to Complainant’s website and features content from Complainant’s website, which Respondent was not authorized to use. Respondent offered to sell the disputed domain name to Complainant.
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.
First, the Panel finds that Complainant need not hold a registration of the AUTOBLOG mark in order establish rights in that mark under Policy ¶ 4(a)(i) as long as Complainant can establish common law rights through a sufficient showing of secondary meaning. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)).
Complainant’s predecessor began using the AUTOBLOG mark in
2004. Complainant acquired this mark in
2005 and has continuously used the AUTOBLOG mark since that time to promote its
online service. In addition, Complainant has invested significant amounts of money
and resources to develop and market the services provided under the AUTOBLOG
mark. The Panel finds that these facts
provide a sufficient showing of secondary meaning, and thus Complainant has
established common law rights in the AUTOBLOG mark under Policy ¶ 4(a)(i). See
Respondent’s <autoblognews.com> domain name contains Complainant’s entire AUTOBLOG mark, adds the descriptive term “news,” and the generic top-level domain (“gTLD”) “.com.” The Panel finds that Respondent’s <autoblognews.com> domain name is confusingly similar to Complainant’s AUTOBLOG mark pursuant to Policy ¶ 4(a)(i) because none of these additions to Complainant’s mark sufficiently distinguish the disputed domain name from Complainant’s mark. See Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks”); see also Am. Online, Inc. v. Karandish, FA 563833 (Nat. Arb. Forum Nov. 2, 2005) (finding that the addition of the descriptive term “talk” to a registered mark does not sufficiently distinguish a domain name under Policy ¶ 4(a)(i)); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).
The Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
Initially, Complainant must make a prima facie showing that Respondent lacks rights and legitimate interests in the disputed domain name. The burden then shifts to Respondent and Respondent must establish that it has rights or legitimate interests in the disputed domain name. The Panel finds that Complainant has sufficiently made its prima facie showing under Policy ¶ 4(a)(ii). 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 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).”).
Respondent’s <autoblognews.com>
domain name
resolves to a website that is nearly identical to Complainant’s website
and features content from Complainant’s website, which Respondent was not
authorized to use. The Panel finds that
this use of the disputed domain name is not a bona fide offering of goods and services under Policy ¶ 4(c)(i) or
a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) because
Respondent is attempting to pass itself off as Complainant. See Kmart of
Furthermore, Respondent is listed in the WHOIS information
as “Andy Balasis,” which does not
indicate that Respondent is commonly known by the <autoblognews.com> domain name. Respondent has not
offered any evidence to indicate otherwise.
The Panel finds that Respondent is not commonly known by the disputed
domain name under Policy ¶ 4(c)(ii). See Braun Corp. v.
Loney, FA 699652 (Nat.
Arb. Forum July 7, 2006) (concluding that the respondent
was not commonly known by the disputed domain names where the WHOIS
information, as well as all other information in the record, gave no indication
that the respondent was commonly known by the disputed domain names, and the
complainant had not authorized the respondent to register a domain name
containing its registered mark); see also
M. Shanken Commc’ns v.
WORLDTRAVELERSONLINE.COM, FA
740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly
known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in
the record).
Finally, Respondent offered to sell the disputed domain name
to Complainant. The Panel finds that
such an offer is evidence that Respondent lacks rights and legitimate interests
in the <autoblognews.com> domain name under Policy ¶ 4(a)(ii) because of
Respondent’s apparent willingness to give up rights in the disputed domain
name. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb.
Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a
domain name to the complainant suggests that a respondent has no rights or
legitimate interests in that domain name under Policy ¶ 4(a)(ii)); see also Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098
(Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the
respondent’s apparent willingness to dispose of its rights in the disputed domain
name suggested that it lacked rights or legitimate interests in the domain
name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that
Respondent’s offer to sell the <autoblognews.com>
domain name to Complainant is
evidence of bad faith registration and use under Policy ¶ 4(b)(i). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the
disputed domain name registration for sale establishes that the domain name was
registered in bad faith under Policy ¶ 4(b)(i).”); see also Am. Online,
Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar.
16, 2000) (finding bad faith where the respondent offered domain names for
sale).
Respondent’s <autoblognews.com>
domain name
resolves to a website that is nearly identical in content to
Complainant’s website and features content from Complainant’s website, which
Respondent was not authorized to use.
The Panel finds that this use of the disputed domain name disrupts
complainant’s business and constitutes bad faith registration and used under
Policy ¶ 4(b)(iii) because Respondent is attempting to pass itself off as
Complainant. See Artistic Pursuit LLC v.
calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007)
(finding that the respondent’s registration and use of the disputed domain
name, which displayed a website virtually identical to the complainant’s
website, constituted bad faith pursuant to Policy ¶ 4(b)(iii)); see also Hewlett Packard Co. v. Full Sys.,
FA 94637 (Nat. Arb. Forum May 22, 2000) (finding that the respondent registered
and used the domain name primarily for the purpose of disrupting the business
of the complainant by offering personal e-mail accounts under the domain name
<openmail.com> which is identical to the complainant’s services under the
OPENMAIL mark).
Finally, the Panel finds
that the resolving website from disputed domain name that features
Complainant’s unauthorized content creates a likelihood of confusion as to
Complainant’s affiliation with the disputed domain name. Therefore, the Panel finds that such
likelihood of confusion constitutes bad faith registration and use under Policy
¶ 4(b)(iv). See Fanuc Ltd v. Mach. Control Servs., FA 93667 (Nat. Arb. Forum Mar.
13, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by creating a
likelihood of confusion with the complainant's mark by using a domain name
identical to the complainant’s mark to sell the complainant’s products); see also Fossil Inc. v. NAS, FA 92525
(Nat. Arb. Forum Feb. 23, 2000) (finding that the respondent acted in bad faith
by registering the <fossilwatch.com> domain name and using it to sell
various watch brands where the respondent was not authorized to sell the
complainant’s goods).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <autoblognews.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: June 22, 2009
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