AOL LLC v. Eric Larson
Claim Number: FA0911001295744
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 <envadget.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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 23, 2009; the National Arbitration Forum received a hard copy of the Complaint on November 24, 2009.
On November 23, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <envadget.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 24, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 14, 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@envadget.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 18, 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.
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:
Complainant holds mark
registrations with the United States Patent and Trademark Office (“USPTO”) for
the ENGADGET service mark (e.g., Reg. No. 3,232,307, issued April 24, 2007) in
connection with online journals, namely blogs in the fields of technology,
computers, and consumer electronics.
Respondent is not licensed or authorized to use
Complainant’s mark in any way.
Respondent, Eric Larson, registered
the disputed domain name on July 22, 2009.
The disputed domain name resolves to website offering services that are related to and in direct competition with those provided by Complainant.
Respondent’s <envadget.com> domain name is confusingly similar to Complainant’s ENGADGET mark.
Respondent does not have any rights to or legitimate interests in the <envadget.com>
domain name.
Respondent is using a small typographical error in the contested domain name, by substituting the letter “g” with the letter “v” in Complainant’s mark, to engage in an illicit practice called “typo-squatting.
Respondent has registered and uses the <envadget.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has established rights in the ENGADGET service mark under Policy ¶ 4(a)(i) through its registration of the mark with the USPTO. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007):
As
the [complainant’s] mark is registered with the USPTO, [the] complainant has
met the requirements of Policy ¶ 4(a)(i).
It is of no consequence that Complainant’s mark is
registered in the
Complainant asserts that Respondent’s <envadget.com> domain name is confusingly similar to Complainant’s ENGADGET service mark pursuant to Policy ¶ 4(a)(i). Respondent’s domain name is indeed confusingly similar to Complainant’s ENGADGET mark because Respondent’s domain name misspells Complainant’s mark by substituting the single letter “v” for the letter “g” and adding the generic top-level domain (“gTLD”) “.com.” The slight misspelling of Complainant’s mark made by Respondent in forming the disputed domain name creates a confusing similarity between the domain name and the mark. See Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to a complainant's BELKIN mark because the name merely replaced the letter “i” in that complainant's mark with the letter “e”); see also The Royal Bank of Scotland Grp. plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006):
The
Panel finds that merely by misspelling Complainants’ mark, Respondent has not
sufficiently differentiated the <privelage.com> domain name from the
PRIVILEGE mark under Policy ¶ 4(a)(i).
Similarly, the addition of a gTLD to a domain name is
irrelevant in distinguishing a disputed domain name from a competing mark. See Jerry Damson, Inc. v.
The
mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to
adequately distinguish the Domain Name from the mark.
See also 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).
Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant alleges that Respondent has no rights to or legitimate interests in the disputed domain name. Once Complainant makes out a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it nonetheless has rights to or legitimate interests in the disputed domain name. 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 AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (finding that once a 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.”).
Complainant has established a prima facie case in support of its contentions, while Respondent, for its part, has failed to submit a Response to these proceedings. We are therefore free to conclude that Respondent has no rights to or legitimate interests in the disputed domain name which are cognizable under the Policy. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002):
Because
Complainant’s Submission constitutes a prima
facie case under the Policy, the burden effectively shifts to
Respondent. Respondent’s failure to respond means that Respondent has not
presented any circumstances that would promote its rights or legitimate
interests in the subject domain name under Policy ¶ 4(a)(ii).
Nevertheless, we will examine the record before us, by reference to the tests set out in Policy ¶ 4(c), to determine if there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name.
We begin by observing that the pertinent WHOIS information lists the registrant only as “Eric Larson.” We also take note of Complainant’s allegation, which Respondent does not deny, that Respondent is not licensed or authorized to use Complainant’s mark in any way. There being no evidence to the contrary in the record, we are therefore forced to the conclusion that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that a respondent failed to establish rights to or legitimate interests in the <emitmortgage.com> domain name where that respondent was not authorized to register domain names featuring a complainant’s mark and failed to submit evidence that it was commonly known by the disputed domain name); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that a respondent was not commonly known by disputed domain names where the relevant WHOIS information, as well as all other information in the record, gave no indication that that respondent was commonly known by the disputed domains, and where a complainant had not authorized that respondent to register a domain name containing its registered mark).
We also note that there is no dispute as to Complainant’s assertion to the effect that Respondent’s domain name resolves to a website offering services that are related to and in direct competition with those provided by Complainant. Respondent’s use of the domain name, as alleged, is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommerical or fair use of the domain pursuant to Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003):
Respondent’s
demonstrated intent to divert Internet users seeking Complainant’s website to a
website of Respondent and for Respondent’s benefit is not a bona fide offering
of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii).
See also ALPITOUR S.p.A. v. balata inc, FA 888649
(Nat. Arb. Forum Feb. 27, 2007) (finding that “using the confusingly similar
<viaggidea.com> domain name to operate a website that features links to
various commercial websites from which Respondent presumably receives referral
fees….is neither a bona fide offering of goods or services pursuant to
Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy
¶ 4(c)(iii).”).
Finally under this head
of the Complaint, Complainant alleges, and Respondent does not deny, that
Respondent is using a typographical error, by substituting the letter “g” with
the letter “v” in Complainant’s mark to form the disputed domain name, to
engage in an illicit practice called typo-squatting. Typo-squatting is itself evidence that
Respondent lacks rights to and legitimate interests in the disputed domain name
under Policy ¶ 4(a)(ii). See IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that a
respondent lacked rights to 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’”); see also Microsoft Corp.
v. Domain Registration
The Panel therefore finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s registration and use of the disputed domain
name to link Internet users to websites featuring links to third-party sites which
are in competition with the business of Complainant constitutes a disruption of
Complainant’s business and therefore bad faith registration and use of the
disputed domain name pursuant to 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 contested domain
name to attract Internet users to a directory website containing links to the
websites of a complainant’s commercial competitors represents bad faith
registration and use of the domain under Policy ¶ 4(b)(iii)); see also David Hall Rare Coins v.
In the circumstances here presented, we may comfortably
presume that Respondent is using the disputed domain name to display links to
third-party competing websites and attempting to attract Internet users for
profit from the receipt of affiliate fees by creating a strong likelihood of
confusion with Complainant’s ENGADGET mark.
This behavior is evidence of bad faith registration and use of the
disputed domain name pursuant to Policy ¶ 4(b)(iv). See
Respondent is using the disputed domain name
to operate a website which features links to competing and non-competing
commercial websites from which Respondent presumably receives referral fees.
Such use for Respondent’s own commercial gain is evidence of bad faith
registration and use pursuant to Policy ¶ 4(b)(iv).
See also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that a respondent engaged in bad faith registration and use of a domain name that was confusingly similar to a complainant’s mark by employing it to offer links to third-party websites featuring services similar to those offered by that complainant).
As we have already concluded, Respondent has engaged in the practice of typo-squatting in the formation of the domain name at issue by intentionally misspelling Complainant’s ENGADGET mark. Typo-squatting is itself evidence of bad faith registration and use of the disputed domain name under Policy ¶ 4(a)(iii). See Bank of Am. Corp. v. Tak Ume domains for sale, FA 154528 (Nat. Arb. Forum May 19, 2003):
Respondent’s
registration and use of the disputed domain name demonstrates a practice
commonly referred to as ‘typosquatting.’
This practice diverts Internet users who misspell Complainant’s mark to
a website apparently owned by Respondent for Respondent’s commercial gain. ‘Typosquatting’ has been recognized as
evidencing bad faith registration and use under Policy ¶ 4(b)(iv).
See also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that a respondent engaged in typo-squatting, which is evidence of bad faith registration and use of a domain name under Policy ¶ 4(a)(iii)).
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <envadget.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: December 31, 2009
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