AOL LLC v. Tang Tang
Claim Number: FA0911001293229
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 <cityguideaol.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 November 5, 2009; the National Arbitration Forum received a hard copy of the Complaint on November 5, 2009.
On November 5, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <cityguideaol.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 6, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 26, 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@cityguideaol.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 16, 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.
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 <cityguideaol.com> domain name is confusingly similar to Complainant’s AOL CITY GUIDE mark.
2. Respondent does not have any rights or legitimate interests in the <cityguideaol.com> domain name.
3. Respondent registered and used the <cityguideaol.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, AOL LLC, provides services and general interest information on the Internet, including information related to travel. Complainant specifically offers information relating to travel and different cities throughout the world under its AOL City Guide. Complainant holds multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its AOL.COM mark (e.g. Reg. No. 2,325,291 issued March 7, 2000).
Respondent, Tang Tang, registered the <cityguideaol.com> domain name on October 25, 2005. The disputed domain name resolves to a website that features hyperlinks to travel-related services that Internet users interested in Complainant may find. Respondent also offered to sell the disputed domain name to Complainant for $800.00.
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 contends it has established rights in the
AOL.COM mark. Previous panels have found
that trademark registration with a federal trademark authority is sufficient to
establish rights in a mark.
Complainant claims Respondent’s <cityguideaol.com> domain name is confusingly similar to Complainant’s AOL.COM mark. The disputed domain name contains Complainant’s AOL.COM mark and adds the descriptive terms “city” and “guide,” which describe Complainant’s AOL city guide travel information services. The Panel finds the addition of descriptive terms fail to sufficiently distinguish the disputed domain name from Complainant’s mark. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (finding that by adding the term “security” to the complainant’s VANCE mark, which described the complainant’s business, the respondent “very significantly increased” the likelihood of confusion with the complainant’s mark); see also Marriott Int’l, Inc. v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that the respondent’s domain name <marriott-hotel.com> is confusingly similar to the complainant’s MARRIOTT mark). Therefore, the Panel finds Respondent’s <cityguideaol.com> domain name is confusingly similar to Complainant’s AOL.COM mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights and legitimate interests in the <cityguideaol.com> domain name. Previous panels have found that when a complainant makes a prima facie case in support of its allegations, the burden shifts to the respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the <cityguideaol.com> domain name. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). 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 Policy ¶ 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 Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”).
Respondent has
offered no evidence, and there is no evidence in the record, suggesting that
Respondent is commonly known by the <cityguideaol.com>
domain name. Complainant has not
consented to Respondent’s use of the disputed domain name. Complainant asserts that Respondent is not authorized
to use the AOL.COM mark. The WHOIS
information identifies Respondent as “Tang Tang,” which Complainant argues does
not relate to Complainant’s AOL.COM mark of the disputed domain name. Therefore, the Panel finds that Respondent
has not established rights or legitimate interests in the <cityguideaol.com> 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 the respondent failed to establish rights and legitimate interests in the
<emitmortgage.com> domain name as the respondent was not authorized to
register domain names featuring the complainant’s mark and failed to submit
evidence of that it is commonly known by the disputed domain name); see
also St. Lawrence Univ. v.
Nextnet Tech, FA 881234 (Nat.
Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate
interests in a disputed domain name where there was no evidence in the record
indicating that the respondent was commonly known by the disputed domain name).
Respondent’s <cityguideaol.com>
domain name resolves to a website
featuring hyperlinks to third-party products and services that may be of
interest to Internet users interested in Complainant’s travel information
services. Respondent likely receives
click-through fees from the hyperlinks.
The Panel finds Respondent’s use of a confusingly similar disputed
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). See Vance Int’l, Inc.
v. Abend, FA
970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a
pay-per-click website at a confusingly similar domain name does not represent a
bona fide offering of goods or
services or a legitimate noncommercial or fair use, regardless of whether or
not the links resolve to competing or unrelated websites or if the respondent
is itself commercially profiting from the click-through fees); see
also ALPITOUR S.p.A. v. balata inc, FA 888649 (Nat. Arb.
Forum Feb. 27, 2007) (finding that “using the confusingly similar
<viaggidea.com> domain name to operate a website that features links to
various commercial websites from which Respondent presumably receives referral
fees….is neither a bona fide offering of goods or services pursuant to
Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy
¶ 4(c)(iii).”).
In addition,
Respondent has offered to sell its <cityguideaol.com>
domain name for $800.00. Respondent
is attempting to sell the disputed domain name for more than its out-of-pocket
expenses. The Panel finds Respondent’s
offer to sell the confusingly similar disputed domain name is further evidence
Respondent lacks rights and legitimate interests in the disputed domain name
under Policy ¶ 4(a)(ii). See
Reese v. Morgan, FA 917029
(Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to
sell a contested domain name for more than its out-of-pocket costs provided
additional evidence that Respondent had no rights or legitimate interests in
the contested domain name); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8,
2007) (“An attempt by a respondent to sell a domain name to a complainant who
owns a trademark with which the domain name is confusingly similar for an
amount in excess of out-of-pocket costs has been held to demonstrate a lack of
legitimate rights or interests.”).
The Panel finds
Policy ¶ 4(a)(ii) has been satisfied.
Respondent attempted to sell the <cityguideaol.com> domain name to Complainant for more than Respondent’s out-of-pocket costs. Respondent requested $800.00 for the disputed domain name. The Panel finds that Respondent’s registration and use of the disputed domain name for the purpose of selling the disputed domain name to Complainant constitutes bad faith registration and use under Policy ¶ 4(b)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name); see also 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)).
Respondent’s <cityguideaol.com> domain name resolves to a
website featuring a hyperlink directory that includes hyperlinks to
travel-related products and services.
These products and services may be of interest to Complainant’s
customers and Internet users interested in Complainant’s information about
travel products and services. Internet
users may become confused as to Complainant’s sponsorship of and affiliation
with the disputed domain name and resolving website. Respondent attempts to profit from this confusion
through click-through fees. The Panel
finds this use constitutes bad faith registration and use pursuant Policy ¶
4(b)(iv). See T-Mobile
USA, Inc. v. utahhealth, FA
697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of
a domain name confusingly similar to a complainant’s mark to direct Internet
traffic to a commercial “links page” in order to profit from click-through fees
or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)); see also The Ass’n of Junior Leagues Int’l Inc. v. This
Domain Name My Be For
The Panel finds 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 <cityguideaol.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: December 16, 2009
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