AOL Inc. v. Domain Gems
Claim Number: FA1001001301617
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 <aimxpress.com>, registered with Spot Domain Llc.
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 January 5, 2010; the National Arbitration Forum received a hard copy of the Complaint on January 7, 2010.
On January 7, 2010, Spot Domain Llc confirmed by e-mail to the National Arbitration Forum that the <aimxpress.com> domain name is registered with Spot Domain Llc and that Respondent is the current registrant of the name. Spot Domain Llc has verified that Respondent is bound by the Spot Domain Llc 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 8, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 28, 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@aimxpress.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 4, 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 <aimxpress.com> domain name is confusingly similar to Complainant’s AIM EXPRESS mark.
2. Respondent does not have any rights or legitimate interests in the <aimxpress.com> domain name.
3. Respondent registered and used the <aimxpress.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, AOL Inc., holds a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the AIM EXPRESS mark (Reg. No. 2,665,694 issued December 24, 2002) in connection with various entertainment, computer and Internet related goods and services.
Respondent, Domain Gems,
registered the <aimxpress.com> domain name on February 13, 2008.
The disputed domain name resolves to a commercial website with
third-party links to many of Complainant’s competitors.
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 asserts rights in its AIM EXPRESS mark through its holding of a trademark registration for the AIM EXPRESS mark with the USPTO (Reg. No. 2,665,694 issued December 24, 2002). The Panel finds that Complainant has established rights in the AIM EXPRESS mark under Policy ¶ 4(a)(i) through its trademark registration 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 Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Complainant argues that Respondent’s <aimxpress.com> domain name is confusingly
similar to Complainant’s AIM EXPRESS mark pursuant to Policy ¶ 4(a)(i). Respondent’s disputed domain name is
confusingly similar to Complainant’s AIM EXPRESS mark because Respondent’s
disputed domain name merely deletes the letter “e” from the second word in
Complainant’s mark and adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that the deletion of the
letter “e” from Complainant’s mark creates a confusing similarity between
Complainant’s mark and the disputed domain name. See
Pfizer
Inc. v. BargainName.com, D2005-0299
(WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was
confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted
the letter “i”); see also Hallelujah Acres, Inc. v. Manila Indus.,
Inc., FA 805029 (Nat. Arb. Forum Nov. 15, 2006) (holding that the
respondent’s <hacrs.com> domain name was confusingly similar to the
complainant’s HACRES mark because it omitted the letter “e” from the mark and
added the generic top-level domain “.com”).
The Panel also finds that the addition of a gTLD to a registered mark is
irrelevant in distinguishing 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.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent has no 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 it has rights or legitimate interests in the disputed
domain name pursuant to Policy ¶ 4(a)(ii).
Based on the arguments made 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. 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 Hanna-Barbera Prods., Inc. v.
Entm’t Commentaries,
FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must
first make a prima facie case that the respondent lacks rights and
legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before
the burden shifts to the respondent to show that it does have rights or
legitimate interests in a domain name).
Nevertheless, the Panel will examine the record to determine if
Respondent has rights or legitimate interests in the disputed domain name
pursuant to Policy ¶ 4(c).
The WHOIS information lists the registrant as “Domain Gems.” Respondent is not authorized or licensed to use Complainant’s mark. Without evidence in the record to the contrary, the Panel finds 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 the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also 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).
Respondent’s <aimxpress.com>
domain name
was registered on February 13, 2008. The
disputed domain name resolves to a commercial website with third-party links to
many of Complainant’s competitors. The
Panel finds that Respondent is not using the disputed domain name 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 name pursuant to Policy ¶ 4(c)(iii). See Tesco
Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat.
Arb. Forum Feb.
13, 2007) (finding that the respondent was not using the
<tesco-finance.com> domain name in connection with a bona fide offering
of goods or services or a legitimate noncommercial or fair use by maintaining a
web page with misleading links to the complainant’s competitors in the
financial services industry); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding
that the 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 the complainant’s customers and presumably earning “click-through
fees” in the process).
The Panel finds that Policy ¶
4(a)(ii) has been satisfied.
The Panel finds that Respondent’s registration and use of
the disputed domain name to link Internet users to websites featuring
third-party links to Complainant’s competitors constitutes a disruption of
Complainant’s business and constitutes bad faith registration and use under
Policy ¶ 4(b)(iii). See
The Panel finds that Respondent’s use of the disputed domain
name to intentionally attract Internet users attempting to access Complainant’s
goods and services and redirect them to the disputed domain name and profit
from the receipt of click-through fees is evidence of bad faith pursuant to
Policy ¶ 4(b)(iv).
See Zee
TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006)
(finding that the respondent engaged in bad faith registration and use by using
a domain name that was confusingly similar to the complainant’s mark to offer
links to third-party websites that offered services similar to those offered by
the complainant); see also
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 <aimxpress.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: February 17, 2010
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