AOL LLC v. Zheng Hua
Complainant is AOL LLC (“Complainant”), represented by James
R. Davis, of Arent Fox LLP, Washington, D.C., USA. Respondent is Zheng Hua (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN
The domain name at issue is <engadfget.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 17, 2009;
the National Arbitration Forum received a hard copy of the Complaint on November 18, 2009.
On November 17, 2009,
Godaddy.com, Inc. confirmed by e-mail to
the National Arbitration Forum that the <engadfget.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
On November 19, 2009,
a Notification of Complaint and Commencement of Administrative Proceeding (the
"Commencement Notification"), setting a deadline of December 9, 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
Having received no response from
Respondent, the National Arbitration Forum transmitted to the parties a
Notification of Respondent Default.
On December 15, 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
Complainant requests that the domain
name be transferred from Respondent to Complainant.
Complainant makes the following assertions:
<engadfget.com> domain name
is confusingly similar to Complainant’s ENGADGET mark.
does not have any rights or legitimate interests in the <engadfget.com> domain name.
registered and used the <engadfget.com>
domain name in bad faith.
Respondent failed to submit a Response in this proceeding.
Complainant, AOL LLC, holds
several registrations of the ENGADGET mark (e.g., Reg. No. 3,232,607 issued Apr. 24, 2007) with the United States
Patent and Trademark Office (“USPTO”) for use in connection with its technology
Respondent, Zheng Hua,
registered the <engadfget.com>
domain name on May
28, 2009. The website
resolving from the disputed domain name displays links to third parties, some
of whom directly compete 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:
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
ENGADGET mark with the USPTO (Reg. No. 3,232,607 issued Apr. 24, 2007) 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 in Respondent’s country
of residence 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).
domain name adds the letter “f” between the “d” and “g” in Complainant’s
ENGADGET mark and the generic top-level domain (“gTLD”) “.com.” The addition of the gTLD is irrelevant to an
analysis 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.”). The letter “f” is
between the letters “d” and “g” on a standard QWERTY keyboard. Further, previous panels have found that the
difference of one letter between the disputed domain name and the mark creates
a confusingly similarity. See 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); see also Google, Inc. v.
DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the
complainant’s mark does not remove the respondent’s domain names from the realm
of confusing similarity in relation to the complainant’s mark pursuant to
Policy ¶ 4(a)(i).”). The Panel
finds that such minor changes to Complainant’s ENGADGET mark result in
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 <engadfget.com> 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 <engadfget.com>
domain name. Complainant asserts that
Respondent has no license or agreement with Complainant authorizing Respondent
to use the ENGADGET mark, and the WHOIS information identifies Respondent as “Zheng Hua.”
Thus, the Panel finds that Respondent has not established rights or
legitimate interests in the disputed domain name 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 <engadfget.com>
domain name, which is confusingly similar to Complainant’s ENGADGET 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 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
Additionally, typosquatting occurs when a respondent
purposefully includes typographical errors in the mark portion of a disputed domain
name to divert Internet users who commit those typographical errors. The <engadfget.com>
domain name takes advantage of Internet users who mistype Complainant’s ENGADGET
mark. The Panel finds that Respondent
engaged in typosquatting by misspelling Complainant’s mark in the disputed
domain name. This is further evidence
that Respondent does not have rights or legitimate interests in the disputed
domain name pursuant to Policy ¶ 4(a)(ii).
See LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (finding
that the <ltdcommadities.com>, <ltdcommmodities.com>,
and <ltdcommodaties.com> domain names were intentional misspellings
of the complainant's LTD COMMODITIES mark and this “‘typosquatting’ is evidence
that Respondent lacks rights or legitimate interests in the disputed domain
names”); see also IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that the
respondent lacked rights and legitimate interests in the disputed
domain names because it “engaged in the practice of typosquatting
by taking advantage of Internet users who attempt to access Complainant's
<indymac.com> website but mistakenly misspell Complainant's mark by
typing the letter ‘x’ instead of the letter ‘c’”).
The Panel finds that Complainant has satisfied Policy ¶
Registration and Use in Bad Faith
Respondent registered the disputed domain name on May 28, 2009,
several years after Complainant established rights in the ENGADGET mark for use
in connection with its technology blog.
The Panel finds that Respondent is using the <engadfget.com> domain name to resolve to a website
containing links to third-party websites that divert Internet users to
competing technology blogs. 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 <engadfget.com> domain name displays
links to websites both unrelated to and in direct competition with
Complainant’s business. The Panel infers
that Respondent receives either pay-per-click fees or advertising fees for
these advertisements. Since the disputed
domain name is confusingly similar to Complainant’s mark, 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).
Panel finds that Respondent’s engagement in typosquatting is evidence that
Respondent registered and is using the <engadfget.com>
domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Zone Labs, Inc.
v. Zuccarini, FA 190613 (Nat. Arb.
Forum Oct. 15,
2003) (“Respondent’s registration and use of [the
<zonelarm.com> domain name] that capitalizes on the typographical error
of an Internet user is considered typosquatting. Typosquatting, itself is
evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”); see also Dermalogica, Inc. v. Domains to Develop,
FA 175201 (Nat. Arb. Forum Sept. 22, 2003) (finding that the <dermatalogica.com> domain name
was a “simple misspelling” of the complainant's DERMALOGICA mark
which indicated typosquatting and bad faith pursuant to Policy 4 ¶ (a)(iii)).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the
ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <engadfget.com> domain name be TRANSFERRED
from Respondent to Complainant.
Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: December 29, 2009
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