national arbitration forum

 

DECISION

 

AOL Inc. v. Fei Zhu

Claim Number: FA0912001300077

 

PARTIES

Complainant is AOL Inc. (“Complainant”), represented by James R. Davis, of Arent Fox LLP, Washington D.C., USA.  Respondent is Fei Zhu (“Respondent”), China.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <mapquesy.com> and <mapgues.com>, registered with Rebel.com.

 

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 December 22, 2009; the National Arbitration Forum received a hard copy of the Complaint on December 23, 2009.

 

On December 23, 2009, Rebel.com confirmed by e-mail to the National Arbitration Forum that the <mapquesy.com> and <mapgues.com> domain names are registered with Rebel.com and that Respondent is the current registrant of the names.  Rebel.com has verified that Respondent is bound by the Rebel.com 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 December 30, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 19, 2010 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@mapquesy.com and mapgues.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On January 26, 2010, 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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

Complainant holds multiple mark registrations with the United States Patent and Trademark Office (“USPTO”) for the MAPQUEST mark (including service mark Reg. No. 2,129,378, issued January 13, 1998) in connection with online information services providing interactive access to geographical information and map images.

 

Complainant has not licensed or otherwise authorized Respondent to use Complainant’s MAPQUEST mark. 

 

Respondent registered the <mapquesy.com> and <mapgues.com> domain names on April 30, 2004 and November 27, 2005, respectively. 

 

The disputed domain names resolve to websites featuring commercial links to third-party sites, some of which compete with the business of Complainant.

 

Respondent’s <mapquesy.com> and <mapgues.com> domain names are confusingly similar to Complainant’s MAPQUEST mark.

 

Respondent does not have any rights to or legitimate interests in the <mapquesy.com> and <mapgues.com> domain names.

 

Respondent has employed a common typographical error in forming the disputed <mapquesy.com> domain name. 

 

Respondent registered and uses the <mapquesy.com> and <mapgues.com> domain names in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

(1)   the domain names registered by Respondent are 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 names; and

(3)   Each of the same domain names was registered and is being used by Respondent in bad faith.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Complainant has established rights in the MAPQUEST service mark under Policy ¶ 4(a)(i) through its regsitration 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).

 

See also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether a complainant has registered its trademark in the country in which a respondent resides, because it is enough that it can establish rights in a mark in some jurisdiction). 

 

Complainant argues that Respondent’s <mapquesy.com> and <mapgues.com> domain names are confusingly similar to Complainant’s MAPQUEST mark pursuant to Policy ¶ 4(a)(i).  The <mapquesy.com> domain name merely replaces the letter “t” in Complainant’s mark with a letter adjacent to it on the QWERTY keyboard, “y.”  The <mapgues.com> name merely replaces the “q” in Complainant’s mark with a “g” and deletes the “t” from the mark.  Additionally, both domain names add the generic top-level domain (“gTLD”) “.com.”  The replacement of a letter in Complainant’s mark with one adjacent to it on the QWERTY keyboard creates a confusing similarity between the <mapquesy.com> domain name and Complainant’s mark.  See Internet Movie Database, Inc. v. Temme, FA 449837 (Nat. Arb. Forum May 24, 2005) (finding that a respondent’s disputed domain names were confusingly similar to a complainant’s mark because the disputed domain names were common misspellings of the mark involving keyboard keys that were adjacent to the keys comprising that complainant’s mark).  Additionally, the replacement of the “q” in Complainant’s mark with a “g” and the deletion of the “t” from the mark in Respondent’s <mapgues.com> domain name creates a confusing similarity by creating a domain name that is phonetically similar to Complainant’s MAPQUEST mark.  See Am. Online, Inc. v. Peppler, FA 103437 (Nat. Arb. Forum Feb. 22, 2002): “The word “quest” and “crest” are similar in sound and are phonetically similar and thus these two words may be considered confusingly similar.  Therefore, confusing similarity exists between <mapcrest.com> and Complainant’s MAP QUEST mark.” See also Am. Online, Inc. v. Triple E Holdings Ltd., FA 281584 (Nat. Arb. Forum July 15, 2004):

 

Words that are spelled differently but are phonetically similar do not negate the confusing similarity of Respondent’s domain name pursuant to Policy ¶ 4(a)(i).

 

Moreover, the addition of a gTLD is irrelevant for purposes of distinguishing between a disputed domain name and a mark.  See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007):

 

The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.

 

Therefore, pursuant to Policy ¶ 4(a)(i), the Panel finds that Respondent’s disputed domain names are both confusingly similar to Complainant’s MAPQUEST mark. 

 

Rights or Legitimate Interests

 

Complainant alleges that Respondent has no rights to or legitimate interests in the disputed domain names.  Once Complainant makes out a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it has rights to or legitimate interests in the disputed domain names.  See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008):

 

It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.

 

See also Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by a complainant, the burden then shifts to a respondent to demonstrate its rights or legitimate interests in a disputed domain name. 

 

Based on the arguments in the Complaint, the Panel finds that Complainant has established a prima facie case in support of its contentions and Respondent has failed to submit a Response to these proceedings.  Therefore, we are entitled to presume that Respondent has no rights to or legitimate interests in the disputed domain name.  See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002):

 

[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.

 

See also Eroski, So. Coop. v. Getdomains Ishowflat Ltd., D2003-0209 (WIPO July 28, 2003):

 

It can be inferred that by defaulting Respondent showed nothing else but an absolute lack of interest on the domain name.

 

Nevertheless, we will examine the record before us to determine, by reference to the principles set out in Policy ¶ 4(c), whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain names sufficient to satisfy the requirements of the Policy. 

 

We begin by noting that the pertinent WHOIS information for the disputed domain names lists the registrant only as “Fei Zhu.”  We also take note of Complainant’s allegation that Complainant has not licensed or otherwise authorized Respondent to use Complainant’s mark.  Respondent does not deny this allegation.  We are therefore constrained to conclude that Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii).  See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that a respondent was not commonly known by the <lilpunk.com> domain name where there was no evidence in the record, including the pertinent WHOIS information, showing that that respondent was commonly known by the domain name, taken in light of a complainant’s assertion that it did not authorize or license that respondent’s use of its mark in a domain name); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that a respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the relevant WHOIS information, suggesting that that respondent was commonly known by the disputed domain). 

 

We also observe that there is no dispute as to Complainant’s assertion to the effect that Respondent’s domain names resolve to websites featuring commercial links to third-party sites, some of which compete with the business of Complainant.  In the circumstances here presented, we are comfortable in presuming that Respondent receives pay-per-click fees from these linked websites.  We therefore conclude that Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or making a legitimate noncommercial or fair use of the disputed domain names pursuant to Policy ¶ 4(c)(iii).  See Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying links to third-party websites was 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 pursuant to Policy ¶ 4(c)(iii), where a respondent presumably earned “click-through” fees for each consumer it redirected to other websites); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding that a respondent was not using a disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by redirecting Internet users to a commercial search engine website with links to multiple websites that may be of interest to a complainant’s customers, the Respondent presumably earning “click-through fees” in the process). 

 

Finally under this heading, Complainant argues that Respondent has employed a typographical error in forming the <mapquesy.com> domain name.  Again, Respondent does not deny this assertion. We conclude therefore that Respondent’s behovior in forming this domain name constitutes typo-squatting, which is itself evidence that Respondent lacks rights to and legitimate interests in the <mapquesy.com> domain name.  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 disputed domain names where 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 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 Complainant's LTD COMMODITIES mark and this “‘typosquatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names”).

 

The Panel thus finds that the requirements of Policy ¶ 4(a)(ii) have been satisfied.

 

Registration and Use in Bad Faith

 

Respondent’s registration and use of the disputed domain names to link Internet users to websites featuring third-party links which are in competition with the business of Complainant constitutes disruption of Complainant’s business and therefore evidences bad faith registration and use of the subject domain names under 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 commercial links to the websites of a complainant’s business competitors represents bad faith registration and use of the domain under Policy ¶ 4(b)(iii)); see also Forum Apr. 9, 2007) (finding that a respondent registered and used a disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) where that respondent used the disputed domain to advertise goods and services of a complainant’s competitors, thereby disrupting that complainant’s business).

 

Additionally, Respondent’s use of the disputed domain names to attract Internet users attempting to access Complainant’s goods and services and to redirect them to the website resolving from the disputed domain name, presumably profiting from the receipt of click-through fees in the process, is evidence of bad faith pursuant to Policy ¶ 4(b)(iv).  See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that a respondent engaged in bad faith registration and use of disputed domain names pursuant to Policy ¶ 4(b)(iv) by using them to operate a commercial search engine with links to the products of a complainant and that complainant’s competitors); see also T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)).

 

As w have already concluded, Respondent has engaged in the practice of typo-squatting by using a common mistyping of Complainant’s MAPQUEST mark in forming its <mapquesy.com> domain name.  Typo-squatting is itself evidence of bad faith registration and use of a 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).

 

To the same effect, see also Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003).

For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied as to each of the contested domain names. 

 

DECISION

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 <mapquesy.com> and <mapgues.com> domain names be TRANSFERRED forthwith from Respondent to Complainant.

 

 

 

Terry F. Peppard, Panelist

Dated:  February 9, 2010

 

 

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