AOL Inc. v. Serj
Claim Number: FA0912001300602
Complainant is AOL Inc. (“Complainant”), represented by James
R. Davis, of Arent Fox LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <mapquest-today.com>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 28, 2009; the National Arbitration Forum received a hard copy of the Complaint on December 29, 2009.
On December 30, 2009, Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com confirmed by e-mail to the National Arbitration Forum that the <mapquest-today.com> domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com and that Respondent is the current registrant of the name. Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com has verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.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 January 5, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 25, 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@mapquest-today.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 1, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 <mapquest-today.com> domain name is confusingly similar to Complainant’s MAPQUEST mark.
2. Respondent does not have any rights or legitimate interests in the <mapquest-today.com> domain name.
3. Respondent registered and used the <mapquest-today.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, AOL, LLC, operates an online geographical service. Complainant 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) and the MAPQUEST.COM mark (Reg. No. 2,523,220 issued December 25, 2001) in connection with online information services providing interactive access to geographical information.
Respondent registered the <mapquest-today.com>
domain name on
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.
The Panel finds that Complainant’s registration of its
MAPQUEST.COM mark (Reg. No. 2,523,220 issued December 25, 2001) 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
The disputed
domain name contains Complainant’s MAPQUEST.COM mark, a hyphen and the
generic term “today.” The Panel finds
that none of these changes are sufficient to distinguish Respondent’s <mapquest-today.com> domain name from
Complainant’s MAPQUEST.COM mark and, therefore, the disputed domain name is confusingly similar to the MAPQUEST.COM
mark under Policy ¶ 4(a)(i). See JVC Americas Corp. v. Macafee, CPR007 (CPR
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
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 demonstrate rights or
legitimate interests pursuant to Policy ¶ 4(c). See Compagnie Generale des Matieres Nucleaires
v. Greenpeace Int’l, D2001-0376 (WIPO
Respondent’s <mapquest-today.com> domain name resolved to a website displaying
Complainant’s mark, creating the impression Complainant was somehow affiliated
with the disputed domain name and its corresponding website. Thus, the Panel finds Respondent’s use of the
disputed domain name to pass itself off as Complainant 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 Am. Int’l
Group, Inc. v. Busby, FA 156251
(Nat. Arb. Forum May 30, 2003) (finding that the
respondent attempts to pass itself off as the complainant online, which is
blatant unauthorized use of the complainant’s mark and is evidence that the
respondent has no rights or legitimate interests in the disputed domain name); see also Crow
v. LOVEARTH.net, FA 203208 (Nat. Arb.
Forum Nov. 28, 2003) (“It is neither a bona fide offerings [sic] of goods or
services, nor an example of a legitimate noncommercial or fair use under Policy
¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to
a registered mark, attempts to profit by passing itself off as Complainant . .
. .”).
Furthermore, the WHOIS registrant information lists
Respondent as “Serj,” indicating
Respondent is not commonly known by the <mapquest-today.com>
domain name. Without evidence to the
contrary, the Panel finds that Respondent is not commonly known by the <mapquest-today.com> 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 Ian
Schrager Hotels, L.L.C. v. Taylor, FA
173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable
evidence to support the assertion that a respondent is commonly known by a
domain name, the assertion must be rejected).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s use of the confusingly similar<mapquest-today.com> domain name to resolve to a website displaying
Complainant’s mark presumably in an attempt to pass itself off as
Complainant. Complainant contends
Respondent is attempting to intentionally attract Internet users to its website
by creating a likelihood of confusion with Complainant’s MAPQUEST.COM mark.
Pursuant to Policy ¶ 4(b)(iv), the Panel finds this
use of the disputed domain name constitutes bad faith registration and
use. See DaimlerChrysler Corp.
v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that the
respondent’s use of the title “Dodgeviper.com Official Home Page” gave
consumers the impression that the complainant endorsed and sponsored the respondent’s
website); see also Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31,
2002) (“Respondent is using the domain name at issue to resolve to a website at
which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge
of Complainant’s business and trademarks. The Panel finds that this conduct is
that which is prohibited by Paragraph 4(b)(iv) of the
Policy.”)
The Panel finds 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 <mapquest-today.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: February 17, 2010
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