AOL LLC v. Mustafa Yakin
Claim Number: FA0911001293620
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 <apquest.com>, registered with Onlinenic, 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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On November 12, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 2, 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 email@example.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
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 <apquest.com> domain name is confusingly similar to Complainant’s MAPQUEST.COM mark.
2. Respondent does not have any rights or legitimate interests in the <apquest.com> domain name.
3. Respondent registered and used the <apquest.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, AOL LLC, owns and uses the MAPQUEST.COM mark in
connection with providing Internet, wireless, and business mapping
applications. Complainant promotes its
MAPQUEST.COM mark on Complainant’s different websites. Complainant owns multiple trademark registrations
with the United States Patent and Trademark Office (“USPTO”) for its MAPQUEST.COM
mark (e.g., Reg. No. 2,496,784 issued
Respondent, Mustafa Yakin, registered the <apquest.com>
domain name on
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.
Respondent, Mustafa Yakin, registered the <apquest.com>
domain name on January 5, 2000. Previous
panels have found a complainant establishes rights in a mark at the date of the
trademark application with the USPTO.
Complainant filed an application for its MAPQUEST.COM mark with the
USPTO (e.g., Reg. No. 2,496,784 issued
Complainant claims Respondent’s <apquest.com> domain name is confusingly similar to Complainant’s MAPQUEST.COM mark. The disputed domain name simply subtracts the letter “m” from Complainant’s mark. The Panel finds the removal of a letter fails to sufficiently distinguish the disputed domain name from Complainant’s mark. See Granarolo S.p.A. v. Dinoia, FA 649854 (Nat. Arb. Forum Apr. 17, 2006) (finding that the <granarolo.com> domain name was confusingly similar to the complainant’s registered G GRANAROLO mark); see also 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). Therefore, the Panel finds Respondent’s <apquest.com> domain name is confusingly similar to Complainant’s MAPQUEST.COM mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged Respondent does not have rights or legitimate interests in the <apquest.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a sufficient 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 disputed 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 Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true 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 <apquest.com>
domain name. Complainant asserts that
Respondent is not authorized to use the MAPQUEST.COM mark. The WHOIS information identifies Respondent
as “Mustafa Yakin.” Therefore, the Panel
finds that Respondent has not established rights or legitimate interests in the
disputed domain name pursuant to 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 Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum
Respondent’s <apquest.com> domain name resolves
to a website featuring hyperlinks to Complainant’s competitors in the Internet,
wireless, and business mapping applications business. Respondent presumably receives click-through
fees from its use of the disputed domain name.
The Panel finds that the use is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or
legitimate noncommercial or fair use of the disputed domain name under Policy ¶
4(c)(iii). See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum
Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate
interests in the <bravoclub.com> domain name because the respondent was
merely using the domain name to operate a website containing links to various
competing commercial websites, which the panel did not find to be a use in
connection with a bona fide offering of goods or services pursuant to
Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶
4(c)(iii)); see also Skyhawke
Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant alleges Respondent’s use of the <apquest.com>
domain name is a part of a pattern
of bad faith use and registration.
Respondent has been a respondent in numerous UDRP proceedings in
which disputed domain names were transferred from Respondent to the
complainants in those cases. See Société Des Produits Nestlé Sa v.
Mustafa Yakin / Moniker Privacy Services, D2008 – 0016 (WIPO
Respondent is using the <apquest.com> domain name to resolve to a website featuring hyperlinks to third-parties that offer competing Internet, wireless, and business mapping applications. Internet users that would have used Complainant’s services may instead find a competitor of Complainant because of Respondent’s confusingly similar disputed domain name. The Panel finds this use of a disputed domain name that is confusingly similar to Complainant’s MAPQUEST.COM mark, constitutes disruption and evidences bad faith registration and use 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 confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
The Panel presumes Respondent receives click-through fees
for the use of the disputed domain name to redirect Internet users, interested
in Complainant, to Respondent’s website containing hyperlinks to Complainant’s
competitors. Internet users, interested
in Complainant and Complainant’s mapping application services, may become
confused as to Complainant’s sponsorship of and affiliation with the disputed
domain name and resolving website. Therefore,
the Panel finds Respondent’s use of the disputed domain name constitutes bad
faith registration and use under Policy ¶ 4(b)(iv). See
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 <apquest.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: December 23, 2009
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