national arbitration forum

 

DECISION

 

AOL Inc. v. Jamal Arabaty d/b/a yesmyname

Claim Number: FA1005001326928

 

PARTIES

Complainant is AOL Inc. (“Complainant”), represented by James R. Davis, of Arent Fox LLP, Washington D.C., USA.  Respondent is Jamal Arabaty d/b/a yesmyname (“Respondent”), New York, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <realtyaol.com> and <realestateaol.com>, registered with Wild West Domains, Inc.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on May 27, 2010.

 

On June 1, 2010, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <realtyaol.com> and <realestateaol.com> domain names are registered with Wild West Domains, Inc. and that Respondent is the current registrant of the names.  Wild West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, 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 June 7, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 27, 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@realtyaol.com and postmaster@realestateaol.com by e-mail.  Also on June 7, 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 July 2, 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 "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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <realtyaol.com> and <realestateaol.com> domain names are confusingly similar to Complainant’s AOL.COM mark.

 

2.      Respondent does not have any rights or legitimate interests in the <realtyaol.com> and <realestateaol.com> domain names.

 

3.      Respondent registered and used the <realtyaol.com> and <realestateaol.com> domain names in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, AOL Inc., offers different informational and computer related services on the Internet under its AOL.COM mark.  Some of Complainant’s Internet services include financial information, weather, sporting news, online shopping, and other topics of general interest.  Complainant holds multiple trademark registrations with the United States Patent and Trademark Office ("USPTO") for its AOL.COM mark (e.g., Reg. No. 2,325,291 issued March 7, 2000).

 

Respondent registered the <realtyaol.com> and <realestateaol.com> domain names on May 27, 2006.  The disputed domain names resolve to websites that contain hyperlinks to Internet informational services that compete with Complainant’s Internet informational services.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Complainant holds multiple trademark registrations with the USPTO for its AOL.COM mark (e.g., Reg. No. 2,325,291 issued March 7, 2000).  Previous panels have concluded that the holding a federal trademark by a complainant is sufficient to establish rights in said mark pursuant to Policy ¶ 4(a)(i).  See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO).  Thus, the Panel determines that Complainant’s trademark registration with the USPTO for its AOL.COM mark is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).

 

Complainant claims that Respondent’s <realtyaol.com> and <realestateaol.com> domain names are confusingly similar to Complainant’s AOL.COM mark.  The disputed domain names combine Complainant’s AOL.COM mark with the generic terms “realty,” “real,” and “estate.”  The Panel finds that the addition of generic terms does not remove the confusing similarity that the domain names have.  See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term) Consequently, the Panel holds that Respondent’s <realtyaol.com> and <realestateaol.com> domain names are confusingly similar to Complainant’s AOL.COM mark pursuant to Policy ¶ 4(a)(i).

 

The Panel finds Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

Complainant has alleged that Respondent does not have any rights and legitimate interests in any of the <realtyaol.com> and <realestateaol.com> domain names.  The burden shifts to Respondent to prove it does have 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 that Respondent does not have rights or legitimate interests in the <realtyaol.com> and <realestateaol.com> 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).

 

Respondent has failed to present any evidence that would demonstrate that Respondent is commonly known by the <realtyaol.com> and <realestateaol.com> domain names.  Due to this failure to present evidence, the Panel will examine the record to determine if it may find that Respondent is commonly known by the disputed domain names.  The WHOIS information identifies the domain name registrant as “Jamal Arabaty dba yesmyname,” which the Panel determines is not similar to the disputed domain names.  Moreover, Complainant provides evidence that Respondent is not licensed or permitted to use Complainant’s AOL.COM mark in a domain name.  Due to the evidence in the record and the lack of contrary evidence provided by Respondent, the Panel consequently finds that Respondent is not commonly known by the <realtyaol.com> and <realestateaol.com> domain names under Policy ¶ 4(c)(ii).  See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name); 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).

 

Complainant claims that Respondent uses the <realtyaol.com> and <realestateaol.com> domain names to resolve to website featuring hyperlinks to third-parties.  These third-parties compete with Complainant by offering Internet informational services similar to Complainant’s services.  Complainant contends that Respondent profits from these hyperlinks as the websites resolving from the disputed domain names are parked for Respondent’s commercial benefit.  The Panel finds Respondent’s use of the confusingly similar disputed domain names for this purpose is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain names pursuant to 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 Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).

 

The Panel finds Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

Respondent’s <realtyaol.com> and <realestateaol.com> domain names resolve to websites that contain lists of hyperlinks to third-parties.  Many of these third-parties directly compete with Complainant by offering similar Internet informational services.  Internet users that access Respondent’s website may use one of Complainant’s competitors’ services instead of Complainant solely due to Respondent’s intervention through its use of the confusingly similar disputed domain names.  Thus, the Panel concludes that Respondent’s use of the <realtyaol.com> and <realestateaol.com> domain names disrupts Complainant’s business, which constitutes bad faith registration and use of the disputed domain names under Policy ¶ 4(b)(iii).  See 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).”); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).

 

As the disputed domain names are confusingly similar to Complainant’s AOL.COM mark, Internet users may become confused as to Complainant’s sponsorship of or affiliation with the disputed domain names.  Complainant alleges that the hyperlinks featured on Respondent’s resolving websites are parked which implies that Respondent receives click-through fees from the aforementioned links.  The Panel determines that Respondent is attempting to profit from the confusion created among Internet users due to Respondent’s use of the confusingly similar <realtyaol.com> and <realestateaol.com> domain names.  The Panel finds Respondent’s use constitutes bad faith registration and use under Policy ¶ 4(b)(iv).  See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees.   Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also 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).

 

The Panel finds Policy ¶ 4(a)(iii) has been satisfied. 

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <realtyaol.com> and <realestateaol.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated:  July 13, 2010

 

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