AOL LLC v. Marcelos Vainez
Claim Number: FA0911001292644
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 <4ngadget.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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 2, 2009; the National Arbitration Forum received a hard copy of the Complaint on November 4, 2009.
On November 3, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <4ngadget.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 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 postmaster@4ngadget.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 2, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant is a leading provider of Internet services.
Through its predecessor-in-interest, Complainant has used the ENGADGET service mark in connection with online journals and blogs in the fields of technology, computers, and consumer electronics.
Complainant owns multiple mark registrations with the United States Patent and Trademark Office (“USPTO”) for the ENGADGET service mark (e.g., Reg. No. 3,232,307, issued April 24, 2007).
Complainant asserts that Respondent is not authorized to use the ENGADGET mark.
Respondent registered the <4ngadget.com> domain name on July 22, 2009.
Respondent’s disputed domain name resolves to a website that displays third-party links to website offering products in the technology, computers, and consumer electronics industries in competition with the business of Complainant.
Respondent’s <4ngadget.com> domain name is confusingly similar to Complainant’s ENGADGET mark.
Respondent does not have any rights to or legitimate interests in the <4ngadget.com> domain name.
Respondent registered and uses the <4ngadget.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has established rights in the ENGADGET mark for
purposes of Policy ¶ 4(a)(i) through its trademark
registration with the USPTO. See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb.
Forum July 12, 2006) (finding that a complainant established rights in marks
where the marks were registered with a trademark authority); see also
Complainant argues that Respondent’s <4ngadget.com> domain name is confusingly similar to Complainant’s ENGADGET service mark pursuant to Policy ¶ 4(a)(i). Respondent’s domain name contains a misspelled version of Complainant’s mark, by inserting a “4” in place of an “e,” and adds the generic top-level domain (“gTLD”) “.com.” Respondent’s misspelling of Complainant’s mark in forming the disputed domain name fails to distinguish the domain name from the mark for purposes of the Policy. See Internet Movie Database, Inc. v. Temme, FA 449837 (Nat. Arb. Forum May 24, 2005) (finding that a respondent’s disputed domain names were confusingly similar to a complainant’s mark because the disputed domains were common misspellings of the mark involving keyboard keys adjacent to the keys comprising that complainant’s mark); see also Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to a complainant's BELKIN mark because the name merely replaced the letter “i” in that complainant's mark with the letter “e”).
Moreover, the addition of a gTLD is irrelevant in distinguishing the disputed domain name from Complainant’s mark. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003):
The
addition of a top-level domain is irrelevant when establishing whether or not a
mark is identical or confusingly similar, because top-level domains are a
required element of every domain name.
Therefore, the Panel finds that Respondent’s <4ngadget.com> domain name is confusingly similar to
Complainant’s ENGADGET mark pursuant to Policy ¶ 4(a)(i).
Complainant alleges that Respondent does not have rights to or legitimate interests in the disputed domain name. Complainant is required to produce a prima facie case in support of its allegations, at which point the burden shifts to Respondent to prove that it possesses rights to or legitimate interests in the disputed domain name. See 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.
Complainant has adequately established a prima facie case. Respondent’s failure to respond to the
allegations of the Complaint 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) so that we may presume that
Respondent lacks any such rights or interests. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002):
[B]ased on Respondent's failure to respond,
it is presumed that Respondent lacks all rights and legitimate interests in the
disputed domain name.
We will nonetheless examine the record before us to
determine whether there is in it any basis for concluding that Respondent
possesses rights to or legitimate interests in the disputed domain name under the
tests set out in Policy ¶ 4(c).
We begin by observing that Respondent has offered no evidence, and there is no evidence in the record, suggesting that it is commonly known by the disputed domain name. In addition, Complainant asserts, and Respondent does not deny, that Respondent is not authorized to use the ENGADGET mark. Finally, the pertinent WHOIS information identifies registrant only as “Marcelos Vainez.” Therefore, we conclude that Respondent has not established rights to or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that a respondent failed to establish rights to or legitimate interests in the <emitmortgage.com> domain name where that respondent was not authorized to register domain names featuring a complainant’s mark and failed to submit evidence that it was commonly known by the disputed domain name); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding that a respondent had no rights to or legitimate interests in a disputed domain name where there was no evidence in the record indicating that that respondent was commonly known by the disputed domain).
We also note that Respondent’s use of the disputed domain name constitutes typo-squatting. The domain name contains a common typographical error and misspelling of Complainant’s ENGADGET mark. Thus Respondent’s use of the disputed domain name to redirect Internet users seeking Complainant’s online journals and blogs in the fields of technology, computers, and consumer electronics fails to establish rights or interests pursuant to Policy ¶ 4(a)(ii). See IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that a respondent lacked rights to and legitimate interests in 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 Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (concluding that by registering the <microssoft.com> domain name, a respondent had “engaged in typosquatting, which provides additional evidence that [the] respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”).
The Panel therefore finds that Policy ¶ 4(a)(ii) has been satisfied.
There is no dispute as to Complainant’s assertion to the effect that Respondent’s domain name resolves to a website featuring links to websites of Complainant’s business competitors in the computer and technology industry. The domain likely attracts Internet users who are attempting to access Complainant’s website. Those Internet users are then redirected to the websites of Complainant’s business competitors. We conclude, therefore, that Respondent’s use of the disputed domain name, as alleged, constitutes a disruption of Complainant’s business, which is evidence of bad faith registration and use of the domain under Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a contested domain name to attract Internet users to a directory website containing links to the websites of a complainant’s commercial competitors represents bad faith registration and use of the domain under Policy ¶ 4(b)(iii)); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007):
[B]y
redirecting Internet users seeking information on Complainant’s educational
institution to competing websites, Respondent has engaged in bad faith
registration and use pursuant to Policy ¶ 4(b)(iii).
Where, as here, Respondent is using a disputed domain name to divert
Internet users to a website which displays links to commercial websites
competing with business of Complainant, we may presume that Respondent is
collecting click-through fees and thus profiting by creating a likelihood of
confusion between Complainant’s ENGADGET mark and the confusingly similar
disputed domain name. Respondent’s use
of the disputed domain name in this manner is evidence of its bad faith
registration and use of the disputed domain pursuant to Policy ¶ 4(b)(iv). See Zee TV USA, Inc.
v. Siddiqi, FA 721969
(Nat. Arb. Forum July 18, 2006) (finding that a respondent
engaged in bad faith registration and use of a domain by using one that was
confusingly similar to a complainant’s mark to offer links to third-party
websites offering services similar to those offered by that complainant); see also Univ. of Houston Sys. v.
Salvia Corp., FA 637920 (Nat. Arb. Forum Mar.
21, 2006):
Respondent is using the disputed domain name
to operate a website which features links to competing and non-competing commercial
websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain
is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
We have already determined that Respondent is engaged in typo-squatting. This practice has been found to constitute evidence of bad faith registration and use of a contested domain name under Policy ¶ 4(a)(iii). See, e.g., Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005) (finding that a respondent’s registration and use of the <nextell.com> domain name was in bad faith because the domain name epitomized typo-squatting in its purest form). 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 a complainant's DERMALOGICA mark, which indicated typo-squatting and therefore bad faith pursuant to Policy 4 ¶ (a)(iii)).
We find, therefore, that Respondent is engaged in bad faith registration and use of the disputed domain name under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <4ngadget.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: December 16, 2009
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