AOL Inc. v. John Michaels a/k/a 5050share
Claim Number: FA1002001308890
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.me>, registered with GoDaddy.com.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 19, 2010; the National Arbitration Forum received a hard copy of the Complaint on February 23, 2010.
On February 22, 2010, GoDaddy.com confirmed by e-mail to the National Arbitration Forum that the <mapquest.me> domain name is registered with GoDaddy.com and that Respondent is the current registrant of the name. GoDaddy.com has verified that Respondent is bound by the GoDaddy.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 February 23, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 15, 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.me by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 24, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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.me> domain name is identical to Complainant’s MAPQUEST mark.
2. Respondent does not have any rights or legitimate interests in the <mapquest.me> domain name.
3. Respondent registered and used the <mapquest.me> domain name 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 MAPQUEST mark to provide online services. Complainant holds trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the MAPQUEST mark (Reg. No. 2,129,378 issued January 13, 1998).
Respondent registered <mapquest.me> domain name on July 27, 2008. The disputed domain name does not resolve to an active website. Respondent has offered to sell the disputed domain name to Complainant for $10,000.
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 MAPQUEST mark through its registration of its MAPQUEST mark with the USPTO (e.g., Reg. No. 2,129,378 issued January 13, 1998). The Panel finds this registration with the USPTO sufficiently establishes Complainant’s rights in its mark under Policy ¶ 4(a)(i). 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).
Complainant alleges Respondent’s <mapquest.me>
domain name is identical to Complainant’s
MAPQUEST mark. The disputed domain name
is spelled the same as Complainant’s mark.
Respondent merely adds the
The Panel finds Policy ¶
4(a)(i) has been satisfied.
Complainant must make a prima facie case showing Respondent lacks rights or legitimate interests in the <mapquest.me> domain name under Policy ¶ 4(a)(ii). The burden then shifts to Respondent to prove it has rights or legitimate interests in the disputed domain name. 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 failed to respond, the Panel will evaluate the record to determine whether Respondent has rights or legitimate interests in the disputed domain names under Policy ¶ 4(c).
The WHOIS information lists the registrant as “John Michaels.” Thus, Respondent is not commonly known by the disputed domain name. Complainant asserts Respondent is not sponsored by or legitimately affiliated with Complainant in any way. Complainant also asserts it has not given Respondent permission to use Complaint’s mark in a domain name. Without evidence to the contrary, the Panel finds Respondent is not commonly known by the disputed domain name 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).
Furthermore, Respondent’s disputed domain name does not resolve to an active website. The Panel finds Respondent’s lack of use of the disputed domain name 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 George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name); see also Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”).
Finally, Respondent offered to sell the domain name <mapquest.me> to Complainant for $10,000. Therefore, the Panel finds Respondent’s offer to sell the disputed domain name to Complainant does not evidence rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“An attempt by a respondent to sell a domain name to a complainant who owns a trademark with which the domain name is confusingly similar for an amount in excess of out-of-pocket costs has been held to demonstrate a lack of legitimate rights or interests.”).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Respondent offered
to sell the confusingly similar <mapquest.me>
domain name to Complainant for
$10,000. The Panel finds Respondent’s
attempt to sell the disputed domain name to Complainant for more than its
out-of-pocket costs constitutes bad faith registration and use under Policy ¶
4(b)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and was
using the <gwbakeries.mobi> domain name in bad faith according to Policy
¶ 4(b)(i) where it offered it for sale for far more than its estimated
out-of-pocket costs it incurred in initially registering the disputed domain
name); see also Matmut v. Tweed, D2000-1183 (WIPO Nov.
27, 2000) (finding bad faith under Policy ¶ 4(b)(i) where the respondent stated
in communication with the complainant that it would be ready to sell the
<matmut.com> domain name registration for $10,000).
In addition, Respondent’s disputed domain name does not resolve to an active website. The Panel finds Respondent’s failure to make active use of the disputed domain name constitutes bad faith registration and use under Policy ¶ 4(b)(i). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Cruzeiro Licenciamentos Ltda. v. Sallen, D2000-0715 (WIPO Sept. 6, 2000) (finding that mere failure to make an active use of a domain name can qualify as bad faith if the domain name owner’s conduct creates the impression that the name is for sale).
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.me> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: March 29, 2010
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