AOL Inc. v. Private Registrations Aktien Gesellschaft Domain Admin
Claim Number: FA1002001308653
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 <aolbollywood.com>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicd.
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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 18, 2010; the National Arbitration Forum received a hard copy of the Complaint on February 22, 2010.
On February 24, 2010, Directi Internet Solutions Pvt. Ltd. d/b/a Publicd confirmed by e-mail to the National Arbitration Forum that the <aolbollywood.com> domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicd and that Respondent is the current registrant of the name. Directi Internet Solutions Pvt. Ltd. d/b/a Publicd has verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. D/B/A Publicd 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 26, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 18, 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@aolbollywood.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 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant has registered its AOL service mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,977,731, issued June 4, 1996).
Complainant uses the AOL mark in connection with its marketing of various computer services, including leasing access time to computer databases, computer bulletin boards, computer networks, and computerized research and reference materials.
Complainant operates numerous websites, including those resolving from the <aol.com> and <aol.in> domain names.
No license or other authorization has been given to Respondent to use the AOL mark.
Respondent registered the disputed domain name on July 27, 2008.
The disputed domain name resolves to a web directory with links to the websites of commercial third parties that include business competitors of Complainant.
Respondent’s <aolbollywood.com> domain name is confusingly similar to Complainant’s AOL service mark.
Respondent does not have any rights to or legitimate interests in the domain name <aolbollywood.com>.
Respondent registered and uses the <aolbollywood.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is 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 name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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.
Complainant’s registrations of its AOL service mark with the USPTO is sufficient to establish Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). See UnitedHealth Group Inc. v. Hassan, FA 947081 (Nat. Arb. Forum May 17, 2007) (finding “no difficulty” in holding that a complainant had established rights in its marks for purposes of Policy ¶ 4(a)(i) through its trademark registrations with the USPTO); 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, but only that it can establish rights in some jurisdiction).
Respondent’s <aolbollywood.com> domain name incorporates the dominant features of Complainant’s mark, and merely adds the geographic term “[b]ollywood” and the generic top-level domain “.com.” The disputed domain name is therefore confusingly similar to Complainant’s AOL mark. See Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Nat. Arb. Forum Nov. 18, 2005) (holding that the addition of both the word “advisors” and the gTLD “.com” did not sufficiently alter a disputed domain name to avoid a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the addition of geograhic terms, such as “cancun” to the end of the CHEAPTICKETS mark in the formation of the <cheapticketscancun.com>, <cheapticketscancun.biz>, <cheapticketscancun.net>, and <cheapticketscancun.org> domain names does not escape a finding of confusing similarity under Policy ¶ 4(a)(i)).
The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent has no rights to or legitimate interests in the disputed <aolbollywood.com> domain name. Once Complainant has made out a prima facie case in support of this proposition, the burden shifts to Respondent to show that it has rights to or legitimate interests in the disputed domain name, Complainant’s assertions to the contrary notwithstanding. 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.
Complainant has established a prima facie case under this head of the Policy, shifting the burden to the Respondent. In light of Respondent’s failure to respond to the proceedings, we are free to conclude that Respondent has no rights or interests in the disputed domain which are cognizable under the Policy. See G.D. Searle v Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002):
Respondent’s
failure to respond means that Respondent has not presented any circumstances
that would promote its rights or legitimate interests in the subject domain
name under Policy 4(a)(ii).
Nonetheless, we will examine the record before us to determine, by reference to the standards set out in Policy ¶ 4(c), whether there is in it any basis for concluding that Respondent has any such rights or interests.
We begin by observing that the WHOIS information for the <aolbollywood.com> domain name lists the registrant only as “Private Registrations Aktien Gesellschaft Domain Admin,” which does not resemble the disputed domain name. Moreover, Complainant asserts, and Respondent does not deny, that no license or other authorization has been given to Respondent to use the AOL mark. On this record, we are constrained to conclude that Respondent is not commonly known by the disputed domain name so as to acquire rights or interests in the domain under Policy ¶ 4 (c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that a respondent failed to establish rights or legitimate interests in the <emitmortgage.com> domain name where it was not authorized to register domain names featuring a complainant’s mark and failed to submit evidence that it was commonly know by the disputed domain name); see also Foot Locker Retail, Inc. v. Gibson, FA 139693 (Nat. Arb. Forum Feb. 4, 2003): “Due to the fame of Complainant’s FOOT LOCKER family of marks . . . and the fact that Respondent’s WHOIS information reveals its name to be ‘Bruce Gibson,’ the Panel infers that Respondent was not ‘commonly known by’ any of the disputed domain names prior to their registration, and concludes that Policy ¶ 4(c)(ii) does not apply to Respondent.”
We also note that there is no dispute as to Complainant’s allegation to the effect that the disputed domain name resolves to a web directory of commercial third parties that includes competitors of Complainant. Respondent’s use of the <aolbollywood.com> domain name as alleged is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that a respondent’s diversionary use of a complainant’s marks to send Internet users to a website which displayed links, some of which resolved to websites of that complainant’s business competitors, was not a bona fide offering of goods or services).
The Panel thus finds that Policy ¶ 4(a)(ii)
has been satisfied.
Complainant contends that Respondent is using the disputed domain name to link to third-party websites in competition with the business of Complainant. Respondent’s registration and use of the <aolbollywood.com> domain name in this fashion constitutes disruption of Complainant’s business and thus evidences bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(iii). See EthnicGrocer.com, Inc. v. Latingrocer.com, FA 94384 (Nat. Arb. Forum July 7, 2000) (finding bad faith registration and use of a contested domain name where a respondent’s websites pass users through to that respondent’s business site, which operates in competition with the business of a complainant); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that a respondent diverted business from a complainant to a competitor’s website within the meaning of Policy ¶ 4(b)(iii)).
The disputed domain name resolves to a web directory that contains links to third-party websites competing with the business of Complainant. The contested domain name is confusingly similar to Complainant’s service mark. Internet users interested in Complainant and Complainant’s related services, may therefore become confused as to the possibility of Complainant’s sponsorship of or affiliation with the resolving website. Presumably Respondent profits from this confusion by receiving referral fees for redirecting traffic to third-party websites. Respondent’s registration and use of the <aolbollywood.com> domain name in this manner constitutes as bad faith registration and use of the domain pursuant to Policy ¶ 4(b)(iv). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that a respondent’s use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith where that respondent presumably benefited commercially by receiving click-through fees for diverting Internet users to unrelated third-party websites); see also MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that a respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking a complainant’s website to its own site for commercial, that respondent likely profiting from this diversionary scheme).
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
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 <aolbollywood.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: April 9, 2010
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