AOL LLC v. Global Access c/o domain admin
Claim Number: FA0911001294098
PARTIES
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 <mapqeust.com>,
registered with Fabulous.com Pty Ltd.
PANEL
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.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically
on November 11, 2009; the National Arbitration Forum received a hard copy of
the Complaint on November 12, 2009.
On November 11, 2009, Fabulous.com Pty Ltd. confirmed by e-mail to the
National Arbitration Forum that the <mapqeust.com>
domain name is registered with Fabulous.com Pty Ltd. and that the Respondent is
the current registrant of the name.
Fabulous.com Pty Ltd. has verified that Respondent is bound by the
Fabulous.com Pty Ltd. 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 16, 2009, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of December 7, 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@mapqeust.com by e-mail.
A timely Response was received and determined to be complete on
December 7, 2009.
On December 10, 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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant alleges, among other things, that:
Complainant
owns the marks MAPQUEST and MAPQUEST.COM, which are used in connection with,
among other things, providing services and general interest information to the
public on the Internet.
Complainant owns numerous trademark
registrations for its MAPQUEST marks, including U.S. Registration No. 2,129,378
and Australian Registration No. 793155.
Complainant also owns numerous trademark registrations for its MAPQUEST.COM mark, including U.S. Registration Nos. 2523221 and 2523220, and Australian Reg. No. 793156.
The disputed domain name is confusingly similar and nearly identical to Complainant’s MAPQUEST and MAPQUEST.COM marks.
Respondent registered and uses the <mapqeust.com> domain name for the bad faith purpose of profiting from the goodwill Complainant has created in its MAPQUEST brand and mark by confusing and misleading unknowing consumers to Respondent’s commercial Web site which provides links to third party sites that compete with the business of Complainant and its MAPQUEST service.
Respondent is not licensed or otherwise authorized to register or use domain names that are confusingly similar or nearly identical to the MAPQUEST marks.
Respondent has no rights to or legitimate interests in respect to the <mapqeust.com> domain name.
Respondent registered the disputed domain name in bad faith and with actual knowledge of Complainant’s MAPQUEST marks and services.
B. Respondent
Respondent alleges, among other things, that:
Respondent did not register or use the subject domain name in bad
faith.
Respondent further recites as follows: “Respondent has no desire to
retain the Domain Name … [and] … Respondent desires to transfer the Domain Name
to Complainant.”
PRELIMINARY
ISSUE: DEFICIENT RESPONSE
Respondent’s Response was not
received by the National Arbitration Forum as a complete FAX copy prior to the
Response deadline established under the Policy. Thus the Response is not in full
compliance with ICANN Rule 5, which subjects Respondent to treatment as a
defaulting party. See Six Continents
Hotels, Inc. v. Nowak, D2003-0022 (WIPO Mar. 4, 2003) (holding that a
respondent’s failure to submit a hard copy of a response and its failure to
include with it any evidence to support a finding in its favor placed that
respondent in default of the Policy’s requirements, permitting a panel to draw
all appropriate inferences stated in the initiating complaint). However, the
Panel may, in its discretion, choose to accept and consider such a Response for
whatever value it may have. See J.W. Spear & Sons PLC v. Fun
League Mgmt., FA 180628 (Nat. Arb. Forum Oct. 17, 2003) (finding that,
where a respondent timely submitted a response electronically, but failed to
submit a hard copy of the response timely, “[t]he Panel
is of the view that given the technical nature of the breach and the need to
resolve the real dispute between the parties that this submission should be
allowed and given due weight”). In light
of all of the circumstances here presented, the Panel elects to accept the
Response as filed, and, in the interests of justice, to give it full
consideration as if it had been filed compliantly.
DISCUSSION
Paragraph 4(a) of the Policy requires that, in the ordinary course,
Complainant must prove each of the following to obtain from a Panel an order
that a domain name be transferred to it:
i.
the
domain name registered by Respondent is identical or confusingly similar to a
trademark or service mark in which Complainant has rights;
ii.
Respondent
has no rights to or legitimate interests in respect of the domain name; and
iii.
the
domain name has been registered and is being used in bad faith.
Notwithstanding the foregoing, 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.”
Further, Policy ¶ 3(a) provides for the transfer of a domain name registration upon the written instructions of the parties to a UDRP proceeding without the need for otherwise required findings and conclusions (see Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat. Arb. Forum Jan. 13, 2004; see also Disney Enterprises, Inc. v. Morales, FA 475191 (Nat. Arb. Forum Jun. 24, 2005)).
DECISION
Respondent’s Response does not contest the material allegations of the
Complaint, except as to Complainant’s assertion of bad faith registration and
use of the subject domain name, which it denies. In particular, Respondent does not contest
Complainant’s request that the disputed domain name be transferred to
Complainant. Rather Respondent expressly consents to such transfer. Thus the parties have effectively agreed in
writing to a transfer of the subject domain name from Respondent to Complainant
without the need for further proceedings.
Accordingly, it is Ordered that the <mapqeust.com>
domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: December 23, 2009
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