AOL Inc. v. Nadeem Qadir a/k/a Tan Kim Fong a/k/a Venta c/o Leonard Bogucki a/k/a Dotsan c/o R.S. Podar a/k/a Bladimir Boyiko
Claim Number: FA1005001322494
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 <aolld.com>, <blackvioces.com>, <mapqquest.com>, <mapqueat.com>, <mapquestt.com>, <mapquuest.com>, <mmapquest.com>, <netcscape.com>, <netscae.com>, <neyscape.com>, <sompuserve.com>, <wwwal.com>, <wwwaolmail.com>, <aollovematch.com>, <aolteens.com>, <neetscape.com>, <netscaape.com>, <netsccape.com>, <newtscape.com>, and <ntescape.com>, registered with ENOM, INC., DOTREGISTRAR.
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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 3, 2010.
On May 3, 2010, ENOM, INC., DOTREGISTRAR confirmed by e-mail to the National Arbitration Forum that the <aolld.com>, <blackvioces.com>, <mapqquest.com>, <mapqueat.com>, <mapquestt.com>, <mapquuest.com>, <mmapquest.com>, <netcscape.com>, <netscae.com>, <neyscape.com>, <sompuserve.com>, <wwwal.com>, <wwwaolmail.com>, <aollovematch.com>, <aolteens.com>, <neetscape.com>, <netscaape.com>, <netsccape.com>, <newtscape.com>, and <ntescape.com> domain names are registered with ENOM, INC., DOTREGISTRAR and that Respondent is the current registrant of the names. ENOM, INC., DOTREGISTRAR has verified that Respondent is bound by the ENOM, INC., DOTREGISTRAR 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 May 11, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 1, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@aolld.com, postmaster@blackvioces.com, postmaster@mapqquest.com, postmaster@mapqueat.com, postmaster@mapquestt.com, postmaster@mapquuest.com, postmaster@mmapquest.com, postmaster@netcscape.com, postmaster@netscae.com, postmaster@neyscape.com, postmaster@sompuserve.com, postmaster@wwwal.com, postmaster@wwwaolmail.com, postmaster@aollovematch.com, postmaster@aolteens.com, postmaster@neetscape.com, postmaster@netscaape.com, postmaster@netsccape.com, postmaster@newtscape.com, and postmaster@ntescape.com. Also on May 11, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 7, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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" through submission of a Written Notice, as defined in Rule 1. 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:
While Respondent uses several
aliases, it is evident from the information provided in the Whois records and
other sources that a single person is responsible for the ownership and use of
the disputed domain names.
As an initial matter, a UDRP panelist already has held that a single person uses all the aliases identified in this complaint, as well as several other aliases. In 2009 a UDRP panelist concluded that “the disputed domain names are controlled by the same entity.” Microsoft Corporation v. Tan Kim Fong a/k/a Dong Wang a/k/a Ali Aziz a/k/a Nadeem Qadir a/k/a Bladimir Boyiko a/k/a NA Dotsan a/k/a Leonard Bogucki a/k/a Venta a/k/a The data in Bulkregister.com's WHOIS database is p a/k/a Registrate Co. a/k/a Cosmos1, NAF FA0906001265720 (July 14, 2009)
In addition, all but two of the
domain names at issue in this dispute share the same email address tankim@ownbox.com. That demonstrates that all those domain names
are owned and controlled by a single person.
Moreover, the two domain names that do not use the tankim@ownbox.com
email address can be linked to the same person.
The Whois records for
“Mmapquest.com” do not list the tankim@ownbox.com email address; however, they
do use the email address polto@ukr.net, i.e.,
the same email address shown in the Whois records for “MapQuuest.com,” a domain
name linked to tankim@ownbox.com
Similarly, the Whois records for
“wwwal.com” list Bladimir Boyiko as the registrant. Mr. Boyiko is also listed as the registrant
of the domain name that is linked to the other nineteen domain names at issue
in this complaint: “ownbox.com.” In addition, the UDRP arbitrator in The New York Times Company v. Nadeem Qadir
a/k/a Bladimir Boyiko a/k/a Cosmos1
held that a single person uses the aliases Bladimir Boyiko and Nadeem Qadir to
register and use infringing domain names.
NAF FA1003001313509 (Apr. 28, 2010).
Therefore, Mr.
Boyiko is affiliated with all the other domain names and aliases.
There also are substantial similarities between the
disputed domain names and how they are used.
For example, all of the disputed domain names are either misspellings of
AOL’s trademarks and domain names or combinations of an AOL trademark and a
generic word. In addition, the domain
names have been used to route to the same or similar pay-per-click Web sites
that generate revenue each time an unsuspecting visitors clicks on one of the
links.
It therefore is evident that a single person is using
the aliases Nadeem
Qadir, Tan Kim Fong, Venta, Dotsan, The data in Bulkregister.com’s WHOIS
database is p () and Bladimir Boyiko and has registered and used the domain
names at issue in this complaint.
1. Complainant AOL Inc. ("AOL")
owns rights to numerous names and marks, as well as corresponding trademark
registrations in the
-
AOL (
-
AOL.COM (
-
BLACK VOICES (
-
COMPUSERVE (
-
MAPQUEST (
-
MAPQUEST.COM (
-
NETSCAPE (
-
NETSCAPE.COM (
2. AOL uses BLACKVOICES.COM, COMPUSERVE.COM and its federally registered trademarks AOL.COM, MAPQUEST.COM and NETSCAPE.COM to provide information and services on the Internet. The AOL Marks are used extensively at these Web sites, which are a significant method of promoting AOL’s well-known services. As a result, consumers associate the AOL Marks, when used in domain names, with AOL and its services.
3. Long prior to Respondent’s registration of the domains at issue in this proceeding, AOL adopted and began using its marks in connection with various entertainment, computer, and Internet-related goods and services. The distinctive AOL Marks are used and promoted around the world in connection with providing a broad range of information and services over the Internet and through traditional media. AOL has used its famous and distinctive marks continuously and extensively in interstate and international commerce in connection with the advertising and sale of its goods and services.
4. AOL is a pioneer and global leader in the computer, entertainment and online services industries. The company has invested substantial sums of money in developing and marketing its products, services and world-famous marks.
5. Tens of millions of subscribers and users around the world access and use AOL’s services each day.
6. The AOL Marks have been and continue to
be widely publicized through substantial advertising throughout the
7. Sales under the AOL Marks exceed several billion dollars each year, and the general public has come to associate these marks with products and services of a high and uniform quality.
8. Because of these substantial advertising expenditures and sales, the distinctive AOL Marks have become famous among members of the purchasing public.
9. Many years after AOL’s adoption and first use of its marks, Respondent registered the infringing domain names “AOLld.com” “AOLLoveMatch.com” “AOLteens.com” “BlackVioces.com” “MapQquest.com” “MapQueat.com” “MapQuestt.com” “MapQuuest.com” “MmapQuest.com” “Neetscape.com” “Netcscape.com” “Netscaape.com” “Netscae.com” “Netsccape.com” “Newtscape.com” “Neyscape.com” “Ntescape.com” “Sompuserve.com” “wwwAL.com” and “wwwAOLmail.com” (collectively the “Infringing Domains”) with a bad faith intent to profit from the registration and use of the domains. Respondent’s actions are a clear and blatant violation of AOL’s intellectual property rights. Respondent’s bad faith actions demonstrate an utter disregard and contempt for AOL’s legal rights and ICANN’s Uniform Domain Name Dispute Resolution Policy.
10. The Infringing Domains are nearly identical and confusingly similar to the AOL Marks. Consumer confusion is particularly likely because Respondent has registered and is using domain names that are common misspellings of the legitimate AOL Marks and associated domain names. See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (merely misspelling or adding letters to marks does not create a distinct mark, but renders the domain name confusingly similar to Complainant’s marks). As set forth above, the AOL Marks are known around the world and consumers that come across the infringing domain names are likely to believe that AOL endorses or is affiliated with Respondent or his Web sites.
11. Respondent registered and uses the infringing domains with a bad faith intent to capitalize on AOL’s famous names and marks, and profit from the international and domestic goodwill that exist in the AOL Marks. As already noted, and more fully detailed below, Respondent’s infringement is willful and repetitive.
12. Respondent has no rights or legitimate interests in the subject domain names. Respondent is not licensed or authorized to use any of the AOL Marks, and Respondent is not named or commonly known as the AOL Marks. The following is evidence of Respondent’s bad faith registration and use of the Infringing Domains:
(a) Respondent’s bad faith registration of the domains is evidenced by the
fact that the Infringing Domains were registered long after AOL adopted and began using its marks, and after they had become famous among consumers. See Annex E for Whois Records. The fact that Respondent registered so many domain names that infringe upon AOL’s trademarks demonstrates that the domain names were registered in bad faith as part of a comprehensive scheme to collect infringing domain names to increase the likelihood that Respondent will attract Internet traffic from unknowing and unwitting Internet users. Therefore, the domains were registered in bad faith.
(b) Respondent’s
bad faith use of the Infringing Domains is shown by the commercial Web sites
that it has used with the domains.
Specifically, Respondent has routed or continues to route each of the
domain names to commercial Web sites that advertise and promote AOL’s services
and the services of many of its competitors.
(c) AOL attempted to resolve this matter by writing Respondent and seeking an amicable transfer of the domain names. At the time the letters were sent AOL did not know that Respondent was using aliases and hiding his true ownership of all the domain names at issue in this Complaint. Respondent did not respond to AOL’s mail. As a result of Respondent’s actions, AOL had no choice but to file this complaint to seek a transfer of the domain names.
(d) Respondent’s bad faith is further demonstrated by its significant pattern of cybersquatting. In addition to the domain names at issue in this proceeding, Respondent has lost numerous UDRPs. This pattern of infringing conduct constitutes a bad faith use pursuant to Paragraph 4(b)(ii) of the UDRP.
(e) Based upon (1) the fame of the AOL Marks; (2) AOL’s trademark registrations and prior common law rights; (3) Respondent’s significant pattern of infringing upon the AOL Marks and third party marks; (4) Respondent’s failure to respond to AOL’s correspondence; (5) the fact that the Infringing Domains are all misspellings of AOL’s Marks; and (6) Respondent’s use of the Infringing Domains to route to commercial Web sites, Respondent cannot in good faith claim that it had no knowledge of AOL’s rights in its famous names and marks. Furthermore, Respondent cannot claim in good faith that it made a legitimate noncommercial or fair use of the Infringing Domains, or that Respondent is commonly known as any of the AOL Marks.
B. Respondent failed to submit a Response in this proceeding.
Complainant, AOL Inc. provides information and services on the Internet. Complainant utilizes its many marks - AOL, MAPQUEST, NETSCAPE, BLACK VOICES, and COMPUSERVE – to market its information and services. Complainant holds multiple trademark registrations with the United States Patent and Trademark Office ("USPTO") for its AOL (e.g., Reg. No. 1,977,731 issued June 4, 1996), MAPQUEST (e.g., Reg. No. 2,129,378 issued January 12, 1998), NETSCAPE (e.g., Reg. No. 2,027,552 issued December 31, 1996), BLACK VOICES (e.g., Reg. No. 2,197,606 issued October 20, 1998), and COMPUSERVE marks (e.g., Reg. No. 1,654,785 issued August 27, 1991).
Respondent registered the <aolld.com>, <blackvioces.com>, <mapqquest.com>, <mapqueat.com>, <mapquestt.com>, <mapquuest.com>, <mmapquest.com>, <netcscape.com>, <netscae.com>, <neyscape.com>, <sompuserve.com>, <wwwal.com>, <wwwaolmail.com>, <aollovematch.com>, <aolteens.com>, <neetscape.com>, <netscaape.com>, <netsccape.com>, <newtscape.com>, and <ntescape.com> domain names no earlier than October 26, 2000. The disputed domain names resolve to websites that feature lists of hyperlinks that include links to Complainant and third-parties that compete with Complainant in the Internet information and services industry.
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.
In the instant proceedings, Complainant claims the entities which control the domain names at issue are effectively the same person and/or entity, which is operating under different several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” The Panel finds all of the disputed domain names, except for <mmapquest.com> and <wwwal.com> domain names, feature the same e-mail address in the WHOIS information. The <mmapquest.com> domain name features the same contact information, except for a change of e-mail address, as does the <mapquuest.com> domain name. The <wwwal.com> domain name’s WHOIS information identifies the domain name registrant as “Bladimir Boyiko,” whom previous panels have identified as the same entity as “Nadeem Qadir,” the domain name registrant of the <wwwaolmail.com> domain name. See New York Times Co. v. Nadeem Qadir a/k/a Bladimir Boyiko, FA 1313509 (Nat. Arb. Forum Apr. 28, 2010). The Panel concludes the domain name registrants are a single entity and, therefore, one Respondent for the purposes of these proceedings.
Respondent has not contradicted this claim.
Complainant owns multiple trademark registrations with the
USPTO for its AOL (e.g., Reg. No.
1,977,731 issued June 4, 1996), MAPQUEST (e.g.,
Reg. No. 2,129,378 issued January 12, 1998), NETSCAPE (e.g., Reg. No. 2,027,552 issued December 31, 1996), BLACK VOICES (e.g., Reg. No. 2,197,606 issued October
20, 1998), and COMPUSERVE marks (e.g.,
Reg. No. 1,654,785 issued August 27, 1991).
The Panel finds Complainant’s trademark registrations are sufficient
evidence Complainant has established rights in the marks pursuant to Policy ¶4(a)(i). See Miller
Brewing
Complainant alleges Respondent’s <aolld.com>, <wwwal.com>, <wwwaolmail.com>,
<aollovematch.com>, and <aolteens.com> domain
names are confusingly similar to Complainant’s AOL mark. The disputed domain names contain complete,
or nearly complete, versions of Complainant’s AOL mark (which is admittedly a
very short mark). Respondent adds the
letters “ld,” the prefix “www,” or the generic terms “love,” “match,” or
“teens” to the disputed domain names. The <wwwal.com> domain name removes the letter “o” from
Complainant’s mark. The Panel determines
the additions of letters, prefixes, and generic terms fail to adequately
distinguish the disputed domain names from Complainant’s AOL mark. See Kelson Physician Partners, Inc. v. Mason,
CPR003 (CPR 2000) (finding that <kelsonmd.com> is identical or
confusingly similar to the complainant’s federally registered service mark,
KELSON); see also Bank of Am.
Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that
the respondent’s domain name <wwwbankofamerica.com> is confusingly
similar to the complainant’s registered trademark BANK OF
Complainant argues Respondent’s <mapqquest.com>, <mapqueat.com>, <mapquestt.com>, <mapquuest.com>, and <mmapquest.com> domain names are confusingly similar to Complainant’s MAPQUEST mark. All of the disputed domain names contain misspelled versions of Complainant’s mark, by adding the letter “q,” “t,” “u,” or “m” and by replacing the letter “s” with the letter “a,” and simply add the gTLD “.com.” The Panel finds the inclusion of a misspelled version of Complainant’s mark even when coupled with the addition of a gTLD fails to sufficiently distinguish the disputed domain names from Complainant’s mark. See Am. Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that <oicq.net> and <oicq.com> are confusingly similar to the complainant’s mark, ICQ); see also Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”); 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 determines Respondent’s <mapqquest.com>, <mapqueat.com>, <mapquestt.com>, <mapquuest.com>, and <mmapquest.com> domain names are confusingly similar to Complainant’s MAPQUEST mark under Policy ¶4(a)(i).
Complainant claims Respondent’s <netcscape.com>, <netscae.com>, <neyscape.com>, <neetscape.com>, <netscaape.com>, <netsccape.com>, <newtscape.com>, and <ntescape.com> domain names are confusingly similar to Complainant’s NETSCAPE mark. Respondent’s disputed domain names feature misspelled versions of Complainant’s NETSCAPE mark. Respondent adds the letters “c,” “e,” “a,” or “w,” removes the letter “p,” replaces the letter “t” with the letter “y,” or transposes the letter “t” with the letter “e.” The Panel determines the misspellings of Complainant’s mark and the addition of a gTLD do not change the confusing similarity of the disputed domain names to Complainant’s mark. See Amazon.com, Inc. v. Ikhizamah, D2002-1168 (WIPO Mar. 17, 2003) (holding that the <zamazon.com> domain name was confusingly similar to the complainant’s AMAZON.COM mark); see also 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 Intelius, Inc. v. Hyn, FA 703175 (Nat. Arb. Forum July 5, 2006) (finding the <intellus.com> domain name to be confusingly similar to the complainant’s INTELIUS mark because the domain name differed from the mark by one letter and was visually similar); see also Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding <googel.com> to be confusingly similar to the complainant’s GOOGLE mark and noting that “[t]he transposition of two letters does not create a distinct mark capable of overcoming a claim of confusing similarity, as the result reflects a very probable typographical error”); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). The Panel holds Respondent’s <netcscape.com>, <netscae.com>, <neyscape.com>, <neetscape.com>, <netscaape.com>, <netsccape.com>, <newtscape.com>, and <ntescape.com> domain names are confusingly similar to Complainant’s NETSCAPE mark pursuant to Policy ¶4(a)(i).
Complainant contends Respondent’s <blackvioces.com> domain name is confusingly similar to Complainant’s BLACK VOICES mark. The disputed domain name transposes the letters “o” and “i” in Complainant’s mark and adds the gTLD “.com.” The Panel determines the use of a common misspelling of Complainant’s mark in the disputed domain name does not prevent the disputed domain name from being confusingly similar to Complainant’s mark. See Wyndham IP Corp. v. LaPorte Holdings, Inc., FA 373545 (Nat. Arb. Forum Jan. 17, 2005) (finding the <wynhdam.com> and <wyandham.com> domain names to be confusingly similar to the complainant’s WYNDHAM mark because the domain names merely transposed letters in the mark). The Panel further finds the addition of a gTLD is irrelevant under a Policy ¶4(a)(i) analysis. See Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”). The Panel concludes Respondent’s <blackvioces.com> domain name is confusingly similar to Complainant’s BLACK VOICES mark under Policy ¶4(a)(i).
Complainant asserts Respondent’s <sompuserve.com> domain name is confusingly similar to Complainant’s COMPUSERVE mark. The disputed domain name contains a common misspelling of Complainant’s mark, by replacing the letter “c” with the letter “s,” which the Panel finds is insufficient to adequately distinguish the disputed domain name. See Neuberger Berman Inc. v. Jacobsen, D2000-0323 (WIPO June 12, 2000) (finding that the respondent’s <newbergerberman.com> domain name was confusingly similar to the complainant’s NEUBERGER BERMAN mark despite the slight difference in spelling). Respondent also adds the gTLD “.com” which the Panel determines is irrelevant to a Policy ¶4(a)(i) analysis. See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). Therefore, the Panel holds Respondent’s <sompuserve.com> domain name is confusingly similar to Complainant’s COMPUSERVE mark pursuant to Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant claims Respondent does not have any rights or legitimate interests in any of the disputed domain names. The burden shifts to Respondent to prove it has rights or legitimate interests when Complainant makes a prima facie case in support of its allegations under Policy ¶4(a)(ii). The Panel finds Complainant made a sufficient prima facie case. Respondent’s failure to respond to the Complaint allows the Panel to infer Respondent does not have rights or legitimate interests in the disputed domain names. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain names under Policy ¶4(c). 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 Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence).
Complainant claims Respondent is not commonly known by the disputed domain names. The WHOIS information identifying the registrant of the domain names does not support a finding that Respondent is commonly known by the disputed domain names. Respondent has failed to provide any evidence in support of a finding Respondent is commonly known by the disputed domain name. Complainant asserts Respondent is not licensed or authorized to utilize Complainant’s AOL, MAPQUEST, NETSCAPE, BLACK VOICES, and COMPUSERVE marks. Due to the lack of affirmative evidence in the record, the Panel determines 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 M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant contends Respondent uses all of the disputed domain names to resolve to websites featuring hyperlinks to Complainant and Complainant’s competitors in the Internet information and services industries. Complainant argues Respondent attempts to commercially benefit from its use of the disputed domain names through the use of pay-per-click links from which Respondent receives click-through-fees. The Panel finds Respondent’s use of the confusingly similar disputed domain names for this purpose is not evidence of a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) or a legitimate noncommercial or fair use of the disputed domain names under Policy ¶4(c)(iii). See 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)); see also Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was 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)).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent’s registration and use of the disputed domain names constitutes a pattern of bad faith registration and use. Complainant alleges Respondent has been a respondent in previous UDRP proceedings in which domain names have been transferred from Respondent to the respective complainants. See Microsoft Corp. v. Tan Kim Fong a/k/a Dong Wang a/k/a Ali Aziz a/k/a Nadeem Qadir a/k/a Bladimir Boyiko a/k/a NA Dotsan a/k/a Leonard Bogucki a/k/a Venta a/k/a The data in Bulkregister.com’s WHOIS database is a/k/a Registrate Co. a/k/a Cosmos1, FA 1265720 (Nat. Arb. Forum July 14, 2009); see also New York Times Co. v. Nadeem Qadir a/k/a Bladimir Boyiko a/k/a Cosmos1, FA 1313509 (Nat. Arb. Forum Apr. 30, 2010). This raises a rebuttable presumption of bad faith registration and use.
Complainant claims Respondent’s disputed domain names resolve to websites containing a list of hyperlinks that includes links to Complainant’s websites and links to Complainant’s third-party competitors. The Panel finds Respondent’s use of the disputed domain names disrupts Complainant’s business as Internet users interested in Complainant’s Internet information and services may instead utilize a competitor’s information and services due to Respondent’s use of the confusingly similar disputed domain names. The Panel finds Respondent’s disruption of Complainant’s business constitutes bad faith registration and use 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 St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶4(b)(iii).”).
Complainant contends Respondent commercially benefits from Respondent’s use of the disputed domain names. The Panel infers Respondent receives click-through fees from the hyperlinks. Internet users may become confused as to Complainant’s affiliation with or sponsorship of the disputed domain names and Respondent is attempting to profit from that confusion. The Panel finds Respondent’s use of the confusingly similar disputed domain names to commercially benefit from Internet users’ confusion constitutes bad faith registration and use under 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 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)(iv) 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).
The Panel finds Policy ¶4(a)(iii) 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 <aolld.com>, <blackvioces.com>, <mapqquest.com>, <mapqueat.com>, <mapquestt.com>, <mapquuest.com>, <mmapquest.com>, <netcscape.com>, <netscae.com>, <neyscape.com>, <sompuserve.com>, <wwwal.com>, <wwwaolmail.com>, <aollovematch.com>, <aolteens.com>, <neetscape.com>, <netscaape.com>, <netsccape.com>, <newtscape.com>, and <ntescape.com> domain names be TRANSFERRED from Respondent to Complainant.
Dated: Friday, June 21, 2010
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[1] AOL’s ownership interest in the COMPUSERVE trademark registration is via the AOL joint venture Cranberry Properties, LLC.