AOL LLC v. Liquid SEO Limited
Claim Number: FA0911001294714
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 <enyadget.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 13, 2009; the National Arbitration Forum received a hard copy of the Complaint on November 17, 2009.
On November 16, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <enyadget.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 18, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 8, 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@enyadget.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 12, 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 <enyadget.com> domain name is confusingly similar to Complainant’s ENGADGET mark.
2. Respondent does not have any rights or legitimate interests in the <enyadget.com> domain name.
3. Respondent registered and used the <enyadget.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, AOL LLC, is a leading provider of Internet services. Complainant, through its predecessor-in-interest, has used the ENGADGET mark in connection with online journals and blogs in the fields of technology, computer, and consumer electronics. Complainant owns multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the ENGADGET mark (e.g., Reg. No. 3,232,307 issued April 24, 2007).
Respondent registered the <enyadget.com> domain name on July 22, 2009. Respondent’s disputed domain name resolves to a website displaying third-party links to websites offering products in the technology, computers, and consumer electronics fields in competition with Complainant.
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 owns multiple trademark registrations for the
ENGADGET mark with the USPTO (e.g., Reg. No. 3,232,307 issued April 24,
2007). The Panel finds that 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 the
complainants had established rights in marks where the marks were registered
with a trademark authority); 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).
Complainant argues that
Respondent’s <enyadget.com> domain name is confusingly
similar to Complainant’s ENGADGET mark pursuant to Policy ¶ 4(a)(i). Respondent’s disputed domain name contains a
misspelled version of Complainant’s mark, by inserting a “y” in place of a “g,”
and adds the generic top-level domain (“gTLD”) “.com.” The Panel finds common misspellings
fail to adequately distinguish the disputed domain name from Complainant’s
mark. See Internet Movie Database, Inc. v. Temme, FA 449837 (Nat.
Arb. Forum May 24, 2005) (finding that the respondent’s disputed domain names
were confusingly similar to the complainant’s mark because the disputed domain
names were common misspellings of the mark involving keys that were adjacent to
the current keys comprising the 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 the complainant's BELKIN
mark because the name merely replaced the letter “i” in the complainant's mark
with the letter “e”). In addition, the
Panel finds that the addition of a gTLD is irrelevant in distinguishing a
disputed domain name from a registered mark.
See Reese v. Morgan, FA 917029
(Nat. Arb. Forum Apr. 5, 2007) (finding that the mere 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 <enyadget.com> domain name is confusingly similar to Complainant’s ENGADGET
mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have rights or legitimate interests in the disputed 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). See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (finding that if the complainant satisfies its prima facie burden, “then the burden shifts to the respondent to show that it does have rights or legitimate interest in the subject domain names.”). 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. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“[Rule 14(b)] expressly provide[s] that the Panel ‘shall draw such inferences’ from the Respondent’s failure to comply with the rules ‘as it considers appropriate.”). 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).
Complainant contends that Respondent is not commonly known
by the disputed domain name
under Policy ¶ 4(c)(ii). The pertinent
WHOIS information for the disputed domain name identifies the registrant as
“Liquid SEO Limited,” and there is no other evidence in the record to suggest
that Respondent is otherwise commonly known by the disputed domain name. Thus,
the Panel concludes that Respondent is not commonly known by the disputed
domain name under 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 Coppertown Drive-Thru Sys., LLC v. Snowden, FA
715089 (Nat. Arb. Forum July 17, 2006) (concluding that the
respondent was not commonly known by the <coppertown.com> domain name
where there was no evidence in the record, including the WHOIS information,
suggesting that the respondent was commonly known by the disputed domain name).
Respondent is using the disputed domain name, which it registered on July
22, 2009, to display links advertising third-party websites in competition with
Complainant’s offering of online journals and blogs in the fields of
technology, computers, and consumer electronics. The Panel infers that Respondent is using the
disputed domain name to earn click-through fees, and thus finds that Respondent
has not made a bona fide offering of
goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair
use under Policy ¶ 4(c)(iii). See Wells Fargo & Co. v. Lin Shun Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that
using a domain name to direct Internet traffic to a website featuring pop-up
advertisements and links to various third-party websites is neither a bona
fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii) because the registrant
presumably receives compensation for each misdirected Internet user); see also Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that
the respondent was not using the domain names for a bona fide offering
of goods or services nor a legitimate noncommercial or fair use because the
respondent used the names to divert Internet users to a website that offered
services that competed with those offered by the complainant under its marks).
In addition, Respondent is taking advantage of Internet
users that are attempting to reach Complainant’s website by capitalizing on the
misspelling of Complainant’s ENGADGET mark. The Panel finds that Respondent’s engagement
in the practice of typosquatting is evidence that Respondent lacks rights and
legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See
Microsoft Corp. v. Domain Registration
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that Respondent intends to disrupt
Complainant’s business and take advantage of Complainant’s goodwill surrounding
its mark by displaying third-party links to Complainant’s competitors in the
fields of technology, computers, and consumer electronics. The Panel therefore finds that Respondent
engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Travant Solutions, Inc. v. Cole, FA 203177 (Nat. Arb. Forum Dec. 6, 2003) (“Respondent
registered and used the domain name in bad faith, pursuant to Policy ¶ 4(b)(iii),
because it is operating on behalf of a competitor of Complainant . . .”); see also
Respondent has created a likelihood of confusion for commercial
gain as to Complainant’s source and affiliation with the disputed domain name
and the resolving website. Respondent is
presumably monetarily benefiting through the receipt of referral fees accrued
when Internet users click on the competitive links. This constitutes evidence that Respondent has
registered and used the disputed domain name in bad faith under Policy ¶
4(b)(iv). See Asbury Auto. Group, Inc. v.
In addition, Complainant alleges that typosquatting is
itself evidence of bad faith registration and use under Policy ¶
4(a)(iii). The Panel agrees and finds
that Respondent’s disputed
domain name is merely a typosquatted version of Complainant’s ENGADGET mark,
and that such typosquatting constitutes bad faith registration and use under
Policy ¶ 4(a)(iii). See Microsoft Corp. v. Domain Registration
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 <enyadget.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: December 28, 2009
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