AOL LLC v. Ying Chen
Claim Number: FA0908001281312
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 <mapquestchina.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 August 25, 2009; the National Arbitration Forum received a hard copy of the Complaint on August 26, 2009.
On August 25, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <mapquestchina.com> domain name is registered with Godaddy.com, Inc. and that the 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 August 26, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 15, 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 firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on September 14, 2009.
Complainant filed a timely Additional Submission on September 16, 2009. Respondent submitted a timely Additional Submission on September 17, 2009.
On September 8, 2009, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant AOL LLC (“AOL”) contends that <mapquestchina.com> is
confusingly similar and nearly identical to its MAPQUEST and MAPQUEST.COM
marks. The only difference between <mapquestchina.com>
and AOL’s trademarks is the addition of the geographic suffix “
Respondent has no rights or legitimate interests in respect to <mapquestchina.com>. Respondent is not named MAPQUEST and AOL has not licensed or otherwise authorized Respondent to use the MAPQUEST marks or imitations of those marks.
Respondent’s bad faith registration
is evidenced by the fact that he registered the domain name many years after
the MAPQUEST marks had become famous and well-known to consumers. Respondent has used <mapquestchina.com>
with a Web site called “Mapquest
Respondent Ying Chen contends that the disputed domain name is comprised of common and generic terms and thus cannot be deemed confusingly similar to Complainant’s marks.
Respondent argues the WHOIS information did not contain the correct information because Respondent was protecting his privacy.
Respondent alleges his use of the <mapquestchina.com> domain name is a legitimate
noncommercial or fair use. Respondent
contends the resolving website is a non-profit website which provides
Respondent also argues that the terms of the <mapquestchina.com> domain name are common and generic, and therefore, Complainant does not have an exclusive monopoly on the terms on the Internet.
Respondent contends he did not register the <mapquestchina.com> domain name for the purpose of selling the disputed domain name to Complainant. Respondent asserts that Complainant originally approached Respondent about the sale of the domain name. Respondent further alleges that when Respondent did offer to sell the disputed domain name, Respondent’s price reflected the costs associated with purchasing the disputed domain name and starting the resolving website.
Respondent alleges that he did not
have constructive and/or actual notice
of Complainant’s MAPQUEST mark.
Respondent asserts that the MAPQUEST mark is not a well known trademark
except for in the
Respondent contends that the <mapquestchina.com> domain name is comprised entirely of common terms that have many meanings apart from use in Complainant’s MAPQUEST mark. Moreover, Respondent contends that the registration and use of domain name comprising such common terms was not done in bad faith.
C. Additional Submissions
Complainant’s Additional Submission
Respondent falsely implies he used a WHOIS privacy service. In response to AOL’s allegations that Respondent used false contact information in the WHOIS records, Respondent alleges that this was “just a kind of privacy protection.” Respondent used false contact information in the WHOIS records and not a privacy service. The returned envelope filed with AOL’s UDRP complaint was sent to the false mailing address that Respondent used before AOL filed a complaint with the registrar.
AOL also recently learned that a
person using the name Kevin Kelly owns the domain name “boor.com” and is using
an incomplete mailing address in
Respondent uses AOL’s MAPQUEST mark
at his web site. Respondent alleges that
he chose the domain name <mapquestchina.com> because
it is comprised of three words that he “just pick[ed] up” from the
dictionary. This claim is refuted by Respondent’s
web site, which uses the unitary trademark MAPQUEST at the top of the
page. By calling his site Mapquest
AOL has properly alleged that
MAPQUEST is a famous mark. Respondent
concedes that consumers in the
Respondent’s Additional Submission
The incomplete or inaccurate WHOIS
information is a common situation on the network. One gets nothing from a paid privacy service. Respondent resides in
AOL owns the trademark MAPQUEST, and other marks that incorporate or are similar to MAPQUEST. AOL owns numerous trademark registrations for its MAPQUEST marks, including U.S. Registration No. 2,129,378. The marks are used in connection with, among other things, providing information and services related to travel and cartography.
AOL also owns and uses the mark MAPQUEST.COM in connection with providing online services. The MAPQUEST mark is used extensively at AOL’s Web sites, which are a significant method of promoting the MAPQUEST services.
Many years after AOL's adoption and first use of its MAPQUEST marks, and long after those marks became well-known and famous, Respondent registered the domain name <mapquestchina.com>.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”
Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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 has established rights
in the MAPQUEST mark. Complainant
contends the MAPQUEST mark is used extensively on Complainant’s websites and
that the services associated with the mark are provided and used
worldwide. Complainant provides maps of
Complainant contends the <mapquestchina.com> domain name is confusingly similar to Complainant’s MAPQUEST mark. Complainant alleges the disputed domain name contains Complainant’s MAPQUEST mark in its entirety, and simply includes the addition of the geographical term “china” and the generic top-level domain (“gTLD”) “.com.” Complainant argues the additions of a geographic term and a gTLD fail to adequately distinguish the disputed domain named from Complainant’s mark. The Panel finds the <mapquestchina.com> domain name is confusingly similar to Complainant’s MAPQUEST mark under Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the addition of geographic terms, such as “cancun” to the end of the CHEAPTICKETS mark in the <cheapticketscancun.com>, <cheapticketscancun.biz>, <cheapticketscancun.net>, and <cheapticketscancun.org> domain names, does not overcome a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) (“…it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.”); 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.”).
While Respondent contends that the <mapquestchina.com> domain name is comprised of common and generic terms and as such cannot be found to be confusingly similar to Complainant’s mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 7, 2007) (finding that because the complainant had received a trademark registration for its VANCE mark, the respondent’s argument that the term was generic failed under Policy ¶ 4(a)(i)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (“Respondent’s argument that each individual word in the mark is unprotectable and therefore the overall mark is unprotectable is at odds with the anti-dissection principle of trademark law.”).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See 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 UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first 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 interests in the subject domain names.”).
Complainant asserts that Respondent is in no way commonly
known by the <mapquestchina.com> domain
name. Complainant provides the WHOIS
information which lists Respondent as “Ying
Chen.” Complainant contends “Ying Chen” is not similar in any way to the <mapquestchina.com> domain
name or Complainant’s MAPQUEST mark.
Complainant further argues that Respondent has provided false WHOIS information
and uses the same e-mail address as “Kevin Kelly.” According to Complainant, Kevin Kelly resides
Complainant contends Respondent’s <mapquestchina.com> domain name resolves to a competing commercial website which provides travel-related and cartography services similar to services provided by Complainant through its MAPQUEST mark. Complainant alleges the resolving website falsely implies it is affiliated with Complainant. Previous panels have found that use of a disputed domain name to resolve to a competing website is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks); see also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services). Thus, the Panel finds Respondent’s use of the <mapquestchina.com> domain name is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii).
Complainant further argues Respondent attempted to sell the disputed domain name to Complainant multiple times for more than Respondent’s out-of-pocket expenses. The Panel finds such evidence of the offer to sell further demonstrates a lack of rights and legitimate interests under Policy ¶ 4(a)(ii). 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 Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s lack of rights and legitimate interests in the domain name is further evidenced by Respondent’s attempt to sell its domain name registration to Complainant, the rightful holder of the RED CROSS mark.”).
The Panel finds that the requirements of Policy ¶ 4(a)(ii) have been satisfied.
Complainant alleges Respondent has offered the <mapquestchina.com> domain name to Complainant for more than Respondent’s out-of-pocket expenses. Complainant contends Respondent offered the disputed domain name for $200.00 and $400.00. The Panel finds evidence of such an offer indicates bad faith registration and use pursuant to Policy ¶ 4(b)(i). See Neiman Marcus Group, Inc. v. AchievementTec, Inc., FA 192316 (Nat. Arb. Forum Oct. 15, 2003) (finding the respondent’s offer to sell the domain name for $2,000 sufficient evidence of bad faith registration and use under Policy ¶ 4(b)(i)): see also Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002) ("[w]hat makes an offer to sell a domain [name] bad faith is some accompanying evidence that the domain name was registered because of its value that is in some way dependent on the trademark of another, and then an offer to sell it to the trademark owner or a competitor of the trademark owner").
Complainant further contends that Respondent’s
use of the <mapquestchina.com> domain
name constitutes disruption of Complainant’s travel-related, cartography, and
advertising services business. The
disputed domain name resolves to a competing website that offers competing
cartography services, as well as travel-related information for the
geographical area of
Moreover, Complainant argues Respondent
commercially gains from Respondent’s use of the confusingly similar <mapquestchina.com>
domain name. Complainant
contends Internet users searching for Complainant and Complainant’s travel and
cartography services relating to
Additionally, Complainant alleges Respondent
had constructive and actual notice based on the notoriety of its MAPQUEST mark
and based on Complainant’s trademark registration. Complainant asserts Complainant’s
advertising expenditures and sales have made the MAPQUEST mark well-known. Complainant contends the MAPQUEST mark is
used extensively at Complainant’s other websites worldwide. Complainant argues that Respondent’s use of
the MAPQUEST mark on the resolving website shows Respondent’s knowledge of the
mark. Furthermore, Complainant asserts
that the resolving website is written in English, which shows Respondent has
knowledge of the English language and therefore likely had knowledge of
Complainant’s MAPQUEST mark. The Panel
finds Respondent had actual notice based on the notoriety of the MAPQUEST mark
and/or constructive notice based on Complainant’s USPTO trademark registration. See
Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002)
(“[T]here is a legal presumption of bad faith, when Respondent reasonably
should have been aware of Complainant’s trademarks, actually or
constructively.”); see also Yahoo!
Furthermore, Complainant alleges that Respondent provided false identification information in the WHOIS data. Complainant argues this false information provides proof of bad faith registration. The Panel finds that Respondent used falsified data in the WHOIS information and the domain name was registered in bad faith pursuant to Policy ¶ 4(a)(iii). See McDonald’s Corp. v. Holy See, FA 155458 (Nat. Arb. Forum June 27, 2003) (holding that the respondent’s use of falsified information when it registered the disputed domain name was evidence that the domain name was registered in bad faith, despite the respondent’ claim that such an action was necessary to protect it from a reprisal by the complainant); see also Home Dir., Inc. v. HomeDirector, D2000-0111, (WIPO Apr. 11, 2000) (finding that providing false or misleading information in connection with the registration of the domain name is evidence of bad faith).
The Panel finds that the elements of Policy ¶ 4(a)(iii) have 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 <mapquestchina.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.),
Dated: September 29, 2009
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