LLC v. Aleksandr Opanasenko
Complainant is AOL
LLC (“Complainant”), represented by James
R. Davis, of Arent Fox LLP, Washington, D.C., USA. Respondent is Aleksandr Opanasenko (“Respondent”), Ukraine.
REGISTRAR AND DISPUTED DOMAIN
The domain name at issue is <usa-mapquest.com>,
registered with Enom, 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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on November 12, 2009; the National
Arbitration Forum received a hard copy of the Complaint on November 13, 2009.
On November 12, 2009, Enom, Inc.
confirmed by e-mail to the National Arbitration Forum that the <usa-mapquest.com> domain name is
registered with Enom, Inc. and that Respondent is the current registrant of the
name. Enom, Inc. has verified that
Respondent is bound by the Enom, 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
On November 13, 2009, a Notification of
Complaint and Commencement of Administrative Proceeding (the "Commencement
Notification"), setting a deadline of December 3, 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 e-mail.
Having received no response from
Respondent, the National Arbitration Forum transmitted to the parties a
Notification of Respondent Default.
On December 9, 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 Respondent.
Complainant requests that the domain
name be transferred from Respondent to Complainant.
Complainant makes the following assertions:
<usa-mapquest.com> domain name is confusingly similar to
Complainant’s MAPQUEST mark.
does not have any rights or legitimate interests in the <usa-mapquest.com>
registered and used the <usa-mapquest.com> domain name in bad
Respondent failed to submit a Response in this proceeding.
Complainant, AOL, LLC, holds a trademark registration with
the United States Patent and Trademark Office (“USPTO”) for the MAPQUEST mark
(Reg. No. 2,129,378 issued January 13, 1998) in connection with online information
services providing interactive access to geographical information.
Respondent registered the <usa-mapquest.com>
domain name on May
18, 2007. 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
domain name has been registered and is being used in bad faith.
Identical and/or Confusingly Similar
The Panel finds that Complainant’s registration of its
MAPQUEST mark (Reg. No. 2,129,378 issued January 13, 1998) with the USPTO is
sufficient to establish Complainant’s rights in the mark pursuant to Policy ¶
4(a)(i). See Innomed
Techs., Inc. v. DRP Servs., FA 221171
(Nat. Arb. Forum Feb.
18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO
establishes Complainant's rights in the mark.”); see also Vivendi Universal Games v. XBNetVentures Inc.,
FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark
registrations establish Complainant's rights in the BLIZZARD mark.”). Further, registration of the mark in
Respondent’s country of business is not necessary to establish Complainant’s
rights in the mark under Policy ¶ 4(a)(i).
See Koninklijke KPN N.V. v.
Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not
require that the mark be registered in the country in which the respondent
operates; therefore it is sufficient that the complainant can demonstrate a
mark in some jurisdiction); see also KCTS Television Inc. v. Get-on-the-Web Ltd.,
D2001-0154 (WIPO Apr.
20, 2001) (holding that it does not matter for the purpose of
paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in
a country other than that of the respondent’s place of business).
The <usa-mapquest.com> domain name contains
Complainant’s MAPQUEST mark, the generic top-level domain “.com,” the
geographic identifier “usa,”
and a hyphen. The Panel finds that none
of these changes are sufficient to distinguish Respondent’s <usa-mapquest.com>
domain name from Complainant’s MAPQUEST mark and, therefore, the <usa-mapquest.com>
domain name is confusingly similar to the MAPQUEST mark under Policy ¶
4(a)(i). See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb.
Forum Sept. 27,
2002) (“[I]t is a well established principle that generic top-level
domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”); see also JVC Americas Corp. v. Macafee, CPR007 (CPR Nov. 10, 2000) (finding
that the domain name registered by the respondent, <jvc-america.com>, is
substantially similar to, and nearly identical to the complainant's JVC mark); see also Health Devices Corp. v. Aspen S T C,
FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such
as hyphens is irrelevant in the determination of confusing similarity pursuant
to Policy ¶ 4(a)(i).”);
The Panel finds that Complainant has satisfied Policy ¶
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 <usa-mapquest.com> domain
name. Complainant asserts that
Respondent has no license or agreement with Complainant authorizing Respondent
to use the MAPQUEST mark, and the WHOIS information identifies Respondent as
“Aleksandr Opanasenko.” 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 <usa-mapquest.com>
domain name, which is confusingly similar to Complainant’s MAPQUEST 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 legitimate 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).
The Panel finds that Complainant has satisfied Policy ¶
Registration and Use in Bad Faith
Respondent registered the disputed domain name on May 18, 2007. The Panel finds that Respondent is using the <usa-mapquest.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 <usa-mapquest.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).
The Panel finds that Complainant has satisfied Policy ¶
Having established all three elements required under the
ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <usa-mapquest.com>
domain name be TRANSFERRED from Respondent to Complainant.
A. Carmody, Esq., Panelist
Dated: December 23, 2009
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