AOL Inc. v. phongphak kimthong
Claim Number: FA1005001327182
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 <bestmapquesteurope.com> and <bestmapquest.com>, registered with Melbourne IT, Ltd.
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 May 28, 2010.
On Jun 2, 2010, Melbourne IT, Ltd. confirmed by e-mail to the National Arbitration Forum that the <bestmapquesteurope.com> and <bestmapquest.com> domain names are registered with Melbourne IT, Ltd. and that Respondent is the current registrant of the names. Melbourne IT, Ltd. has verified that Respondent is bound by the Melbourne IT, Ltd. 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 3, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 23, 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@bestmapquesteurope.com and postmaster@bestmapquest.com. Also on June 3, 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 28, 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" 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:
Complainant uses the MAPQUEST service mark in connection with providing online services relating to, among other things, travel and cartography.
Complainant owns mark registrations with the United States Patent and Trademark Office (“USPTO”) and the European Union Office of Harmonization for the Internal Market (“OHIM”) for the MAPQUEST mark, including USPTO Reg. No. 2,129,378, issued January 13, 1998; USPTO Reg. No. 2,145,962, issued March 24, 1998; and OHIM Reg. No. 001130947, issued January 18, 2002.
Respondent registered the <bestmapquest.com> and <bestmapquesteurope.com> domain names on February 11, 2010.
Both of Respondent’s domain names resolve to websites displaying pay-per-click links to the websites of third-parties which offer mapping and directions services that compete with the business of Complainant.
Respondent’s <bestmapquesteurope.com> and <bestmapquest.com> domain names are confusingly similar to Complainant’s MAPQUEST mark.
Respondent does not have any rights to or legitimate interests in the domain names <bestmapquesteurope.com> and <bestmapquest.com>.
Respondent registered and uses the domain names <bestmapquesteurope.com> and <bestmapquest.com> in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain names registered by Respondent are confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of either of the domain names; and
(3) Each of the subject domain names has been 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 owns registrations with the USPTO and the OHIM
for the MAPQUEST mark. Complainant has thus
established rights in the MAPQUEST mark for purposes of Policy ¶ 4(a)(i), regardless of the location of Respondent’s residence
or business. See Automotive Racing Products, Inc. v. Linecom, FA 836787 (Nat. Arb.
Forum Dec. 21, 2006) (finding that a Complainant’s trademark registration established
its rights in a mark under Policy ¶ 4(a)(i)); see also Renaissance Hotel Holdings, Inc. v.
Renaissance
Respondent’s <bestmapquest.com>
and <bestmapquesteurope.com>
domain names are confusingly similar to Complainant’s MAPQUEST mark. Both domain names use Complainant’s full mark
and add the common generic term “best.”
Additionally, the <bestmapquesteurope.com>
domain name adds the geographic term “
common geographic
qualifiers or generic nouns can rarely be relied upon to differentiate the mark
if the other elements of the domain name comprise a mark or marks in which
another party has rights.
See also Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term “collection” to Complainant’s HARRY POTTER mark failed to distinguish the domain name from the mark).
Finally, the gTLD “.com” plays no role in differentiating
the disputed domain name from Complainant’s mark under Policy ¶ 4(a)(i). See Jerry Damson, Inc. v.
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 therefore finds that Respondent’s domain names <bestmapquest.com> and <bestmapquesteurope.com> are confusingly similar to Complainant’s MAPQUEST mark pursuant to Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights to and legitimate interests in the disputed domain names. Once Complainant has set forth a prima facie case under this head of the Complaint, the burden shifts to Respondent to demonstrate its rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that:
complainant must first
make a prima facie case that respondent lacks rights and legitimate interests
in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden
shifts to respondent to show it does have rights or legitimate interests.
From our review of the record, we are satisfied that Complainant has adequately established a prima facie case on the question of Respondent’s rights to or interests in the disputed domain names. Because Respondent has failed to respond to the allegations against it in this regard, we may presume that Respondent lacks rights to or legitimate interests in the disputed domain names. See 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 to the Complaint herein, we will analyze the record before us, by reference to the criteria set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by observing that Complainant asserts, and Respondent does not deny, that Respondent is not commonly known by the domain names <bestmapquest.com> and <bestmapquesteurope.com>. Moreover, the WHOIS information for the disputed domain names lists the registrant for both domain names only as “phongphak kimthong,” a name having no similarity to the disputed domain names. We conclude, therefore, that Respondent is not commonly known by the disputed domain names so as to have demonstrated rights to or legitimate interests in either of them under the provisions of Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating that the fact that “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that a respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the relevant WHOIS information, suggesting that that respondent was commonly known by the disputed domain name).
We also note that there is no dispute as to Complainant’s allegation to the effect that Respondent’s <bestmapquest.com> and <bestmapquesteurope.com> domain names resolve to websites displaying pay-per-click links to third parties offering services that compete with Complainant’s mapping and directions services. Respondent’s use of the disputed domain names in the manner alleged is not 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 Hewlett-Packard Co. v. Collazo, FA 144628 (Nat. Arb. Forum Mar. 5, 2003) (holding that a respondent’s use of the <hpcanada.com> domain name to post links to commercial websites and subject Internet users to pop-up advertisements was not a bona fide offering of goods or services or a legitimate non-commercial or fair use of that domain name); see also ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting a respondent’s contention of rights to and legitimate interests in the <bravoclub.com> domain name because that respondent was merely using the domain name to operate a website containing links to various commercial websites in competition with the business of a complainant, which the panel found not to be a use of the domain 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)).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s <bestmapquest.com> and <bestmapquesteurope.com> domain names resolve to websites advertising mapping services and directions websites that compete with the business of Complainant. Such activity disrupts Complainant’s business because Internet users seeking Complainant’s services will be diverted to sites featuring competing services. This disruption of Complainant’s business and diversion of Internet users to Complainant’s commercial competitors evidences bad faith registration and use of the contested domain names under Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that a respondent engaged in bad faith registration and use of domain names pursuant to Policy ¶ 4(b)(iii) by using the disputed domains to operate a commercial search engine with links to websites featuring the products of a complainant and of that complainant’s business competitors); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a contested domain name to attract Internet users to a directory website containing links to the websites of a complainant’s commercial competitors represents bad faith registration and use of the domain under Policy ¶ 4(b)(iii)).
It is evident that Respondent registered the <bestmapquest.com> and <bestmapquesteurope.com> domain names, which include Complainant’s MAPQUEST mark to capitalize on the fame of Complainant’s mark and to attract Complainant’s customer base. Once Internet users are thus diverted to Respondent’s resolving websites, Respondent is presumably compensated via click-through fees. Respondent’s efforts to mislead Internet users and attract Complainant’s business in order to receive commercial gain constitutes evidence of bad faith registration and use of the contested domain names under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where a respondent diverted Internet users searching for a complainant to its own website, likely profiting in the process); see also 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).
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 domain names <bestmapquesteurope.com> and <bestmapquest.com> be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: July 1, 2010
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