AOL Inc. v. Merlana Global Corporation c/o Domain Administrator
Claim Number: FA1001001304762
Complainant is AOL Inc. (“Complainant”), represented by James
R. Davis, of Arent Fox LLP,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <mapquesrt.com>, and <mapquesat.com>, registered with Enom, Inc.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 26, 2010; the National Arbitration Forum received a hard copy of the Complaint on January 27, 2010.
On January 26, 2010, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <mapquesrt.com>, and <mapquesat.com> domain names are registered with Enom, Inc. and that Respondent is the current registrant of the names. Enom, Inc. has verified that Respondent is bound by the Enom, 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 January 27, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 16, 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@mapquesrt.com, and postmaster@mapquesat.com by e-mail.
On February 2, 2010, the Forum received a correspondence from Respondent which stated “Merlana Corporation wishes to solve this dispute amicable and therefore agrees to transfer the domain without going into the dispute.” This correspondence does not represent a proper response under the Policy and Rules so this dispute will proceed as a default proceeding.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 25, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <mapquesrt.com>, and <mapquesat.com> domain names are confusingly similar to Complainant’s MAPQUEST.COM mark.
2. Respondent does not have any rights or legitimate interests in the <mapquesrt.com>, and < mapquesat.com> domain names.
3. Respondent registered and used the <mapquesrt.com>, and <mapquesat.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, AOL Inc., is an international provider of online mapping and travel services. Complainant owns multiple trademarks with the United States Patent and Trademark Office (“USPTO”) for the MAPQUEST (e.g., Reg. No. 2,129,378 issued January 13, 1998) and MAPQUEST.COM (e.g., Reg. No. 2,496,784 issued October 9, 2001) marks. Complainant also owns registrations with the European Union Office for Harmonization in the Internal Market (“OHIM”) for the MAPQUEST (Reg. No. 1,130,947 issued January 18, 2002) and MAPQUEST.COM (Reg. No. 1,130,137 issued on July 18, 2002) marks.
Respondent registered the <mapquesrt.com>, and <mapquesat.com> domain names on August 11, 2004. Respondent’s disputed domain names resolve to a website displaying third-party links offer mapping and travel assistance services in competition with Complainant’s mapping services.
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 has obtained multiple trademark registrations for MAPQUEST (e.g., Reg. No. 2,129,378 issued January 13, 1998), and MAPQUEST.COM (e.g., Reg. No. 2,496,784 issued October 9, 2001) marks with the USPTO. Complainant also has registrations with OHIM for the MAPQUEST (Reg. No. 1,130,947 issued January 18, 2002) and MAPQUEST.COM (Reg. No. 1,130,137 issued on July 18, 2002) marks. The Panel finds that Complainant has established rights in the MAPQUEST and MAPQUEST.COM marks for the purposes of Policy ¶ 4(a)(i) through its trademark registrations with the USPTO and the OHIM. See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world); see also Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the Policy ¶ 4(a)(i)).
Complainant argues that Respondent’s <mapquesrt.com>, and <mapquesat.com>
domain names are confusingly similar to
the Complainant’s MAPQUEST.COM mark pursuant to Policy ¶ 4(a)(i). Respondent’s disputed domain names both
contain common misspellings of Complainant’s mark by adding the letters ‘r,’
and ‘a,’ in the respective domain names.
The Panel finds that the disputed domain names containing misspellings
of the Complainant’s mark are not enough to distinguish them from the mark and
thereby creates a confusing similarity between the disputed domain names and
Complainant’s mark. 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).”). Therefore, the Panel finds that Respondent’s
disputed domain names are confusingly similar to Complainant’s MAPQUEST.COM mark
for purposes of Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent does not have any rights or legitimate interests in the disputed domain names. Complainant is required to make a prima facie case in support of these allegations. Once the Complainant has produced a prima facie case the burden shifts to the Respondent to show that they do have a right or legitimate interest 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 the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)). The Panel finds that the Complainant has produced a prima facie case. Due to the Respondent’s failure to respond to these proceedings, the Panel may assume Respondent does not have any rights or legitimate interests in the disputed domain names. See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name).
Complainant argues that Respondent is not commonly known by the disputed domain names, nor has Complainant given Respondent permission to use Complainant’s mark. The WHOIS information for the disputed domain names identifies Respondent as “Merlana Global Corp.,” and there is no further evidence on record showing that Respondent is commonly known by the disputed domain names. The Panel finds that without affirmative evidence of Respondent being commonly known by the disputed domain names, Respondent lacks rights and legitimate interests in the disputed domain names pursuant to 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 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).
Complainant also contends that Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services, nor is Respondent making a noncommercial or fair use of the disputed domain names. Complainant argues that Respondent is using the disputed domain names to resolve to a website that offers click-through links and advertisements for Complainant’s competitors in their mapping services market for financial gain. The Panel finds that Respondent’s use of the disputed names to redirect Internet users to Complainant’s competitors, presumably for financial gain, does not constitute 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). See Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks); see also ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be 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)).
Respondent is taking advantage of Internet users that are
trying to reach Complainant’s website by using common misspellings of the
Complainant’s MAPQUEST.COM mark. The
Panel finds that Respondent’s engagement in what is commonly referred to as
typosquatting is evidence that Respondent lacks any rights or legitimate
interests in the disputed domain names under Policy ¶ 4(a)(ii). See Microsoft Corp. v. Domain Registration
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant argues that Respondent’s use of the disputed
domain names to divert Internet users to competing mapping and travel websites,
presumably for commercial gain, disrupts Complainant’s business and is evidence
of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). The Panel finds that Respondent registered
and is using the disputed domain names in bad faith because Respondent is
intentionally diverting Internet users seeking Complainant’s website to the
websites of its competitors. See Tesco
Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13,
2007) (concluding that the use of a confusingly similar domain name to attract
Internet users to a directory website containing commercial links to the
websites of a complainant’s competitors represents bad faith registration and
use under Policy ¶ 4(b)(iii)); see
also
Complainant further alleges that Respondent’s use of the disputed domain names to intentionally attract Internet users for commercial gain is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). Complainant argues that Respondent’s disputed domain names create a likelihood of confusion between the disputed domain names and Complainant’s MAPQUEST.COM mark, and Respondent seeks to capitalize on that likelihood of confusion by making money on click-through fees paid by websites in competition with Complainant’s mapping services that are displayed on Respondent’s website. The Panel finds that Respondent has intentionally attempted to attract Internet users to its website for commercial gain and this use is evidence of bad faith and use 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 AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was commercially gaining from the likelihood of confusion between the complainant’s AIM mark and the competing instant messaging products and services advertised on the respondent’s website which resolved from the disputed domain name).
The Panel has already determined that Respondent has engaged
in typosquatting through misspelling Complainant’s MAPQUEST.COM mark in the
disputed domain name. This practice has
been found to constitute evidence by itself of bad faith registration and use
under Policy ¶ 4(a)(iii). See Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005) (finding that the respondent’s
registration and use of the <nextell.com> domain name was in bad faith
because the domain name epitomized typosquatting in its purest form); see also Microsoft Corp. v.
Domain Registration
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 <mapquesrt.com>, and <mapquesat.com> domain names be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: March 11, 2010
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