AOL LLC v. Daniel Cox a/k/a na
Complainant is AOL LLC (“Complainant”), represented by James
R. Davis, of Arent Fox LLP, Washington, D.C., USA. Respondent is Daniel Cox a/k/a na (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN
The domain name at issue is <mapqauest.com>, registered with M.G. Infocom Pvt. Ltd. d/b/a Mindgenies.
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.
James A. Carmody,
Esq., as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on October 30, 2009;
the National Arbitration Forum received a hard copy of the Complaint on November 3, 2009.
On November 3, 2009,
M.G. Infocom Pvt. Ltd. d/b/a Mindgenies
confirmed by e-mail to the National Arbitration Forum that the <mapqauest.com>
domain name is registered with M.G. Infocom Pvt.
Ltd. d/b/a Mindgenies and that Respondent is the current registrant of
the name. M.G. Infocom Pvt. Ltd. d/b/a Mindgenies has verified that
Respondent is bound by the M.G. Infocom Pvt.
Ltd. d/b/a Mindgenies 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 November 4, 2009,
a Notification of Complaint and Commencement of Administrative Proceeding (the
"Commencement Notification"), setting a deadline of November 24, 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
Having received no response from
Respondent, the National Arbitration Forum transmitted to the parties a
Notification of Respondent Default.
On December 2, 2009, pursuant to
Complainant's request to have the dispute decided by a single-member Panel, the
National Arbitration Forum appointed James A. Carmody, Esq., 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
Complainant requests that the domain
name be transferred from Respondent to Complainant.
Complainant makes the following assertions:
<mapqauest.com> domain name
is confusingly similar to Complainant’s MAPQUEST.COM mark.
does not have any rights or legitimate interests in the <mapqauest.com> domain name.
registered and used the <mapqauest.com>
domain name in bad faith.
Respondent failed to submit a Response in this proceeding.
On October 9, 2001, the United States Patent and Trademark
Office (“USPTO”) issued Complainant, AOL LLC, a
registration for the MAPQUEST.COM mark (Reg. No. 2,496,784) for use in
connection with its online map and directions website. Complainant also holds a registration of the
MAPQUEST.COM mark (Reg. No. TMA586,286 issued July 13, 2003)
with the Canadian Intellectual Property Office (“CIPO”).
On August 27, 2008, Respondent, Daniel Cox a/k/a na, registered the <mapqauest.com>
domain name. The disputed domain name
resolves to a website displaying links to third-party websites, some of which
compete directly with Complainant’s online mapping and directions services. The links on the resolving website include
“driving directions,” “map,” and “travel directions.”
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:
domain name registered by Respondent is identical or confusingly similar to a
trademark or service mark in which Complainant has rights; and
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
Identical and/or Confusingly Similar
The Panel finds that Complainant has established rights in
the MAPQUEST.COM mark pursuant to Policy ¶ 4(a)(i) via its registrations of the
mark with the USPTO (Reg. No. 2,496,784 issued Oct. 9, 2001) and CIPO (Reg. No.
TMA586,286 issued July 13, 2003). See AOL
LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (“Complainant
has established rights in the AIM mark through its use and federal trademark
registrations for purposes of Policy ¶ 4(a)(i).”); see also Lockheed Martin Corp. v. Hoffman, FA 874152 (Nat. Arb. Forum Jan. 31, 2007)
(finding that the complainant had sufficiently established rights in the SKUNK
WORKS mark through its registration of the mark with the USPTO).
domain name is a misspelling of Complainant’s MAPQUEST.COM mark. The disputed domain name adds the letter “a”
after the letter “q.” The letters “a”
and “q” are adjacent on a standard QWERTY keyboard. The Panel finds that such minor changes to
Complainant’s MAPQUEST.COM mark result in confusing similarity pursuant to
Policy ¶ 4(a)(i).
See Reuters Ltd. v. Global Net
2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name
which differs by only one letter from a trademark has a greater tendency to be
confusingly similar to the trademark where the trademark is highly
distinctive); see also Google, Inc. v. DktBot.org, FA
286993 (Nat. Arb. Forum Aug. 4, 2004) (“The
mere addition of a single letter to the complainant’s mark does not remove the
respondent’s domain names from the realm of confusing similarity in relation to
the complainant’s mark pursuant to Policy ¶ 4(a)(i).”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Rights or Legitimate Interests
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 name. 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 the disputed domain name. Complainant asserts that Respondent has no
license or agreement with Complainant authorizing Respondent to use the MAPQUEST.COM
mark, and the WHOIS information identifies Respondent as “Daniel Cox a/k/a na.” Thus, the Panel finds that Respondent has not
established rights or legitimate interests in any of the disputed domain names
under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi,
FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in
Respondent’s WHOIS information implies that Respondent is ‘commonly known by’
the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see
also Am. W. Airlines, Inc.
v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent
has registered the domain name under the name ‘Ilyoup Paik a/k/a David
Sanders.’ Given the WHOIS domain name
registration information, Respondent is not commonly known by the
[<awvacations.com>] domain name.”).
Respondent’s is using the <mapqauest.com>
domain name, which is confusingly similar to Complainant’s MAPQUEST.COM mark, to redirect Internet users interested in
Complainant’s services to third-party websites.
Some of these websites are 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 Dec. 31, 2002)
(finding that the respondent’s diversionary use of the complainant’s marks to
send Internet users to a website which displayed a series of links, some of
which linked to the complainant’s competitors, was not a bona fide
offering of goods or services); see also Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the
respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i)
or (iii) because the respondent used the domain name to take advantage of the
complainant's mark by diverting Internet users to a competing commercial site).
Additionally, typosquatting occurs when a respondent
purposefully includes typographical errors in the mark portion of a disputed
domain name to divert Internet users who commit those typographical
errors. The <mapqauest.com> domain name take advantage of Internet
users who mistype Complainant’s MAPQUEST.COM mark. The Panel finds that Respondent engaged in
typosquatting by misspelling Complainant’s mark in the disputed domain
name. This is further evidence that
Respondent does not have rights or legitimate interests in the disputed domain
names pursuant to Policy ¶ 4(a)(ii). See LTD
Commodities LLC v. Party Night, Inc., FA
165155 (Nat. Arb. Forum Aug. 14, 2003) (finding
that the <ltdcommadities.com>, <ltdcommmodities.com>,
and <ltdcommodaties.com> domain names were intentional misspellings
of the complainant's LTD COMMODITIES mark and this “‘typosquatting’ is evidence
that Respondent lacks rights or legitimate interests in the disputed domain
names”); see also 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’”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Respondent registered the disputed domain name on August 27, 2008. The Panel finds that Respondent is using the <mapqauest.com> domain name to
resolve to a website containing links to third-party websites that divert
Internet users to Complainant’s competitors such as “driving directions,”
“map,” and “travel directions.” The
Panel finds that this use is evidence of bad faith registration and use
pursuant to Policy ¶ 4(b)(iii). See
Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding
that the respondent has diverted business from the complainant to a
competitor’s website in violation of Policy ¶ 4(b)(iii));
see also EBAY, Inc. v. MEOdesigns,
D2000-1368 (WIPO Dec.
15, 2000) (finding that the respondent registered and used the
domain name <eebay.com> in bad faith where the respondent has used the
domain name to promote competing auction sites).
The website that resolves from the <mapqauest.com> domain name displays
links to websites related to and in direct competition with Complainant’s
business. The Panel infers that
Respondent received either pay-per-click fees or advertising fees for these
advertisements. Since the disputed
domain name is confusingly similar to Complainant’s marks, Internet users are
likely to become confused as to Complainant’s affiliation or sponsorship of the
disputed domain name and resolving website.
Respondent was seeking to profit from this confusion by hosting
advertisements on the resolving website.
The Panel finds that this use is evidence of bad faith registration and
use pursuant to Policy ¶ 4(b)(iv). See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use
of a domain name that incorporates another's mark with the intent to deceive
Internet users in regard to the source or affiliation of the domain name is
evidence of bad faith.”); see also Philip
Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that the
respondent’s registration of an infringing domain name to redirect Internet
users to banner advertisements constituted bad faith use of the domain name).
Panel finds that Respondent’s engagement in typosquatting is evidence that
Respondent registered and is using the <mapqauest.com>
domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Zone Labs,
Inc. v. Zuccarini, FA 190613 (Nat.
Arb. Forum Oct. 15, 2003) (“Respondent’s
registration and use of [the <zonelarm.com> domain name] that capitalizes
on the typographical error of an Internet user is considered typosquatting.
Typosquatting, itself is evidence of bad faith registration and use pursuant to
Policy ¶ 4(a)(iii).”); see also Dermalogica,
Inc. v. Domains to Develop, FA 175201 (Nat. Arb. Forum Sept.
22, 2003) (finding that the
<dermatalogica.com> domain name was a “simple misspelling” of the
complainant's DERMALOGICA mark which indicated typosquatting and
bad faith pursuant to Policy 4 ¶ (a)(iii)).
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 <mapqauest.com> domain name be TRANSFERRED
from Respondent to Complainant.
A. Carmody, Esq., Panelist
Dated: December 16, 2009
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