AOL Inc. v Silmaril Ltd aka Ibrahim Teoman Tutkun
Claim Number: FA1002001308201
Complainant is AOL Inc. (“Complainant”), represented by James R. Davis, of Arent Fox LLP, DC. Respondent is Silmaril Ltd a/k/a Ibrahim Teoman Tutkun (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <aolinstintmessenger.com>, <aimexpresss.com>, <aimdools.com, >, <icq7.net>, <mapqueust.com>, <mapquesp.com>, <mapquese.com>, <mapquesti.com>, <movieefone.com>, <netscaape.net>, <netscaspe.net>, <netsccape.net>, <nesscape.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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 16, 2010; the National Arbitration Forum received a hard copy of the Complaint on February 18, 2010.
On February 16, 2010, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <aolinstintmessenger.com>, <aimexpresss.com>, <aimdools.com>, <icq7.net>, <mapqueust.com>, <mapquesp.com>, <mapquese.com>, <mapquesti.com>, <movieefone.com>, <netscaape.net>, <netscaspe.net>, <netsccape.net>, and <nesscape.com> domain names are registered with Godaddy.com, Inc. and that Respondent is the current registrant of the names. 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 February 19, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 11, 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@aolinstintmessenger.com, postmaster@aimexpresss.com, postmaster@aimdools.com, postmaster@icq7.net, postmaster@mapqueust.com, postmaster@mapquesp.com, postmaster@mapquese.com, postmaster@mapquesti.com, postmaster@movieefone.com, postmaster@netscaape.net, postmaster@netscaspe.net, postmaster@netsccape.net, and postmaster@nesscape.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 18, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 <aolinstintmessenger.com> is confusingly similar to Complaint’s AOL mark.
Respondent’s <aimexpresss.com> and <aimdools.com> domain names are confusingly similar to Complaint’s AIM mark.
Respondent’s
<icq7.net> domain name is
confusingly similar to Complainant’s ICQ mark.
Respondent’s <mapqueust.com>, <mapquesp.com>, <mapquese.com>, and <mapquesti.com> domain names are
confusingly similar to Complainant’s MAPQUEST mark.
Respondent’s <movieefone.com> domain name is
confusingly similar to Complainant’s MOVIEFONE mark.
Respondent’s <netscaape.net>, <netscaspe.net>, <netsccape.net>, and <nesscape.com> domain names are confusingly similar to Complainant’s NETSCAPE mark.
2. Respondent does not have any rights or legitimate interests in the <aolinstintmessenger.com>, <aimexpresss.com>, <aimdools.com>, <icq7.net>, <mapqueust.com>, <mapquesp.com>, <mapquese.com>, <mapquesti.com>, <movieefone.com>, <netscaape.net>, <netscaspe.net>, <netsccape.net>, and <nesscape.com> domain names.
3. Respondent registered and used the <aolinstintmessenger.com>, <aimexpresss.com>, <aimdools.com>, <icq7.net>, <mapqueust.com>, <mapquesp.com>, <mapquese.com>, <mapquesti.com>, <movieefone.com>, <netscaape.net>, <netscaspe.net>, <netsccape.net>, and <nesscape.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, AOL Inc., operates a variety of online businesses. As part of these businesses, Complainant uses its AOL, AIM, ICQ, MAPQUEST, MOVIEFONE, and NETSCAPE marks to provide various entertainment, computer, and Internet-related goods and services. Complainant has registered these marks with the United States Patent and Trademark Office (“USPTO”): (1) AOL (Reg. No. 1,977,731 issued June 14, 1996); (2) AIM (Reg. No. 2,423,367 issued January 23, 2001); (3) ICQ (Reg. No. 2,411,657 issued December 12, 2000); MAPQUEST (Reg. No. 2,129,378 issued January 13, 1998); (4) MOVIEFONE (Reg. No. 2,822,672 issued March 16, 2004); and (5) NETSCAPE (Reg. No. 2,027,552 issued December 31, 1996).
Respondent registered the disputed domain names on the following dates: (1) <aolinstintmessenger.com> registered on July 11, 2004; (2) <aimexpresss.com> registered on February 27, 2004; (3) <aimdools.com> registered on February 27, 2004; (4) <icq7.net> registered on May 30, 2004; (5) <mapqueust.com> registered on May 30, 2004; (6) <mapquesp.com> registered on December 23, 2003; (7) <mapquese.com> registered on February 14, 2004; (8) <mapquesti.com> registered on April 17, 2004; (9) <movieefone.com> registered on April 16, 2004; (10) <netscaape.net> registered on February 13, 2004; (11) <netscaspe.net> registered on February 19, 2004; (12) <netsccape.net> registered on May 30, 2004; (13) and <nesscape.com> registered on January 14, 2005. The disputed domain names each resolve to websites displaying pay-per-click advertising and links to 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.
A complainant establishes rights in a mark through registration of the mark with a governmental trademark authority. Complainant has provided evidence of its registration of the following marks with the USPTO: (1)AOL (e.g., Reg. No. 1,977,731 issued June 14, 1996); (2) AIM (e.g., Reg. No. 2,423,367 issued January 23, 2001); (3) ICQ (e.g., Reg. No. 2,411,657 issued December 12, 2000); MAPQUEST (e.g., Reg. No. 2,129,378 issued January 13, 1998); (4) MOVIEFONE (e.g., Reg. No. 2,822,672 issued March 16, 2004); and (5) NETSCAPE (e.g., Reg. No. 2,027,552 issued December 31, 1996). See AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Therefore, the Panel finds Complainant has established rights in its AOL, AIM, MAPQUEST, MOVIEFONE, and NETSCAPE marks pursuant to Policy ¶ 4(a)(i).
Complainant alleges Respondent’s <aolinstintmessenger.com> is confusingly similar to Complainant’s AOL
mark. Respondent’s disputed domain name
adds the misspelled word “instant” and the word “messenger” to Complainant’s
mark. Respondent also adds the generic
top-level domain (“gTLD”) “.com” to Complainant’s mark. None of these changes
prevent a finding of confusingly similar.
See Victoria’s Secret v. Zuccarini, FA 95762
(Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and
adding letters to words, a respondent does not create a distinct mark but
nevertheless renders the domain name confusingly similar to the complainant’s
marks); see also Disney Enters. Inc. v. McSherry, FA 154589 (Nat.
Arb. Forum June 17, 2003) (finding the
<disneyvacationvillas.com> domain name to be confusingly similar to
Complainant’s DISNEY mark because it incorporated Complainant’s entire famous
mark and merely added two terms to it); 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
Respondent’s disputed domain name is confusingly similar to Complainant’s AOL
mark pursuant to Policy ¶ 4(a)(i).
Complainant alleges Respondent’s <aimexpresss.com> and <aimdools.com>
domain names are confusingly similar to Complainant’s AIM mark. Respondent’s disputed domain names add
misspelled words to Complainant’s mark.
Respondent also adds the gTLD “.com” to Complainant’s mark. The Panel finds that Respondent’s alterations
do not distinguish these disputed domain names from Complainant’s mark. See Victoria’s Secret v.
Zuccarini, supra; Reese v. Morgan, supra. Therefore, the
Panel finds Respondent’s disputed domain name is confusingly similar to
Complainant’s AIM mark pursuant to Policy ¶ 4(a)(i).
Complainant alleges Respondent’s
<icq7.net> domain name is
confusingly similar to Complainant’s ICQ mark.
Respondent adds a numeral after Complainant’s mark. Respondent also adds the gTLD “.net” to
Complainant’s mark. The Panel finds that
these changes do not prevent a finding of confusingly similar. See Am. Online, Inc. v.
Complainant alleges Respondent’s <mapqueust.com>, <mapquesp.com>, <mapquese.com>, and <mapquesti.com> domain names are
confusingly similar to Complainant’s MAPQUEST mark. Each of the disputed domain names either adds
a letter to or replaces a letter in Complainant’s mark. Respondent also adds the gTLD “.com” to
Complainant’s mark. The Panel finds that
these disputed domain names are confusingly similar to Complainant’s mark. See
Complainant alleges Respondent’s <movieefone.com> domain name is
confusingly similar to Complainant’s MOVIEFONE mark. Respondent adds an “e” to Complainant’s
mark. Respondent also adds the gTLD
“.com” to Complainant’s mark. The Panel
finds that Respondent’s alterations do not distinguish these disputed domain
names from Complainant’s mark. See
Complainant alleges Respondent’s <netscaape.net>, <netscaspe.net>, <netsccape.net>, and <nesscape.com> domain
names are confusingly similar to Complainant’s NETSCAPE mark. Each of the
disputed domain names adds a letter to Complainant’s mark. Respondent also adds the gTLDs “.net” or
“.com” to Complaint’s mark. None of
these changes prevent a finding of confusingly similar. See
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Pursuant to Policy ¶ 4(a)(ii), Complainant must make a prima facie case showing Respondent lacks rights or legitimate interests in the <aolinstintmessenger.com>, <aimexpresss.com>, <aimdools.com>, <icq7.net>, <mapqueust.com>, <mapquesp.com>, <mapquese.com>, <mapquesti.com>, <movieefone.com>, <netscaape.net>, <netscaspe.net>, <netsccape.net>, and <nesscape.com> domain names. The burden then shifts to Respondent to prove it has rights or legitimate interests in the disputed domain names. The Panel may view Respondent’s failure to submit a Response as evidence that Respondent lacks rights or legitimate interests. 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 Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also 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.”). Although Respondent has failed to respond, the Panel will examine the record to determine if Respondent has rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c).
The WHOIS information does not indicate that Respondent is commonly known by the disputed domain names. Complainant asserts Respondent is not sponsored by or legitimately affiliated with Complainant in any way. Complainant also has not given Respondent permission to use Complainant’s marks in a domain name. Without evidence to the contrary, the Panel finds Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). See 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); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Respondent’s disputed domain names each resolve to websites
that list links to other websites and links to Complainant’s competitors. Respondent likely receives click-through fees
from each Internet user redirected to these third-party websites. The Panel finds Respondent’s use of the
disputed domain names does not constitute a bona
fide offering of goods and services under Policy ¶ 4(c)(i) or a legitimate
noncommercial fair use under Policy ¶ 4(c)(iii). See
Computer Doctor Franchise Sys., Inc. v.
Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) (finding that the
respondent’s website, which is blank but for links to other websites, is not a
legitimate use of the domain names); see
also Jerry
Damson, Inc. v.
Respondent’s use of the <mapqueust.com>, <mapquesp.com>, <mapquese.com>, <mapquesti.com>, <movieefone.com>, <netscaape.net>, <netscaspe.net>, <netsccape.net>, and <nesscape.com>
constitutes typosquatting. The Panel
finds that Respondent’s use of domain names that are common misspellings of the
MAPQUEST, MOVIEFONE, and NETSCAPE marks to redirect Internet users seeking
Complainant’s website is further evidence that Respondent lacks rights or
legitimate interests pursuant to Policy ¶ 4 (a)(ii). See Microsoft Corp. v. Domain Registration
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds Respondent’s use of the disputed domain names to redirect Internet users to websites that list links to third-party websites, including links to Complainant’s competitors, disrupts Complainant’s business and constitutes registration and use in bad faith 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 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 Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors).
The Panel finds Respondent use of confusingly similar domain names to attract Internet users seeking Complainant’s services and then diverting them websites containing links to third-party competing websites is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). Respondent presumably profits from this use through the receipt of click-through fees, which the Panel finds constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See 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)); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).
Finally, Respondent has engaged in typosquatting through its used <mapqueust.com>, <mapquesp.com>, <mapquese.com>, <mapquesti.com>, <movieefone.com>, <netscaape.net>, <netscaspe.net>, <netsccape.net>, and <nesscape.com>, which are common misspellings of Complainant’s MAPQUEST, MOVIEFONE, and NETSCAPE marks. Therefore, the Panel finds Respondent’s use of the disputed domain names constitutes bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See The Vanguard Group, Inc. v. IQ Mgmt. Corp., FA 328127 (Nat. Arb. Forum Oct. 28, 2004) (“By engaging in typosquatting, [r]espondent has registered and used the <vangard.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).”); see also Nat’l Ass’n of Prof’l Baseball League, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … is the intentional misspelling of words with [the] intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of itself evidence of bad faith.”).
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 <aolinstintmessenger.com>, <aimexpresss.com>, <aimdools.com>, <icq7.net>, <mapqueust.com>, <mapquesp.com>, <mapquese.com>, <mapquesti.com>, <movieefone.com>, <netscaape.net>, <netscaspe.net>, <netsccape.net>, and <nesscape.com> domain names be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: April 1, 2010
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