AOL Inc. v. Rampe Purda
Claim Number: FA1006001330828
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 <mapquedt.com>, registered with HEBEI GUOJI MAOYI (SHANGHAI) LTD d/b/a HEBEIDOMAINS.COM.
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.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 21, 2010 in both English and Finnish languages.
On June 21, 2010, HEBEI GUOJI MAOYI (SHANGHAI) LTD d/b/a HEBEIDOMAINS.COM confirmed by e-mail to the National Arbitration Forum that the <mapquedt.com> domain name is registered with HEBEI GUOJI MAOYI (SHANGHAI) LTD d/b/a HEBEIDOMAINS.COM and that Respondent is the current registrant of the name. HEBEI GUOJI MAOYI (SHANGHAI) LTD d/b/a HEBEIDOMAINS.COM has verified that Respondent is bound by the HEBEI GUOJI MAOYI (SHANGHAI) LTD d/b/a HEBEIDOMAINS.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 June 30, 2010, the Forum served the Finnish language Complaint and all Annexes, including a Finnish language Written Notice of the Complaint, setting a deadline of July 20, 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@mapquedt.com by e-mail. Also on June 30, 2010, the Finnish language 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 21, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (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.
Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the Finnish language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <mapquedt.com> domain name is confusingly similar to Complainant’s MAPQUEST.COM mark.
2. Respondent does not have any rights or legitimate interests in the <mapquedt.com> domain name.
3. Respondent registered and used the <mapquedt.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, AOL Inc., provides travel and mapping services to Internet users under its MAPQUEST.COM mark. Complainant owns several trademark registrations with the United States Patent and Trademark Office ("USPTO") for its MAPQUEST (e.g., Reg. No. 2,129,378 issued Jan. 13, 1998) and MAPQUEST.COM marks (e.g. Reg. No. 2,496,784 issued Oct. 9, 2001).
Respondent, Rampe Purda, registered the <mapquedt.com> domain name on September 6, 2007. Respondent’s disputed domain name resolves to a website that displays third-party links to online mapping and travel services in competition with Complainant. Respondent also has the disputed domain name listed for sale on the website <sedo.com> with the heading “make offer.”
Complainant submits evidence that Respondent has been the respondent in prior UDRP decisions where Respondent has been ordered to transfer the disputed domain names to the respective complainants. See Hewlett-Packard Dev. Co., L.P. v. Purda, FA 1298005 (Nat. Arb. Forum Feb. 2, 2010); see also Priceline.com, Inc. v. Purda, FA 1307268 (Nat. Arb. Forum March 30, 2010); see also Am. Express Mktg. & Dev. Corp. v. Purda, FA 1316160 (Nat. Arb. Forum May 20, 2010).
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 submits evidence to show that it owns trademark registrations with the USPTO for its MAPQUEST (e.g., Reg. No. 2,129,378 issued Jan. 13, 1998) and MAPQUEST.COM marks (e.g. Reg. No. 2,496,784 issued Oct. 9, 2001). The Panel finds that such evidence satisfies the requirements of Policy ¶ 4(a)(i) and that Complainant has established rights in its marks. 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 KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).
Complainant argues that the <mapquedt.com> domain name is confusingly similar to Complainant’s MAPQUEST.COM mark because it simply replaces the letter “s” with the letter “d” of Complainant’s mark. The Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s MAPQUEST.COM mark under Policy ¶ 4(a)(i) where the domain name is a misspelled version of Complainant’s mark by using the adjacent letter on the keyboard, “d,” to replace the letter “s” in Complainant’s mark. See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that misspelling words and adding letters on to words does not create a distinct mark but is nevertheless confusingly similar with the Complainant’s marks); see also The Royal Bank of Scotland Grp. plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (“The Panel finds that merely by misspelling Complainants’ mark, Respondent has not sufficiently differentiated the <privelage.com> domain name from the PRIVILEGE mark under Policy ¶ 4(a)(i).”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent does not have any rights and legitimate interests in the <mapquedt.com> domain name. Complainant is required to make a prima facie case in support of these allegations. Once Complainant has produced a prima facie case the burden shifts to Respondent to show that it does have rights and legitimate interests in the <mapquedt.com> domain name. 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.”); see also Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)). The Panel finds that the Complainant has produced a prima facie case. Due to the Respondent’s failure to respond to these proceedings, the Panel may assume Respondent does not have any rights or legitimate interests in the <mapquedt.com> domain name. See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name). However, the Panel will continue to analyze the evidence on record to determine if Respondent has rights and legitimate interests in the disputed domain name under Policy ¶ 4(c).
Complainant argues that Respondent is not commonly known by the <mapquedt.com> domain name, nor has Complainant given Respondent permission to use Complainant’s MAPQUEST.COM mark within a corresponding domain name. The WHOIS information for the disputed domain name identifies the registrant as “Rampe Purda” and there is no further evidence on record showing that Respondent is commonly known by the disputed domain name. The Panel finds that without affirmative evidence of Respondent being commonly known by the disputed domain name that Respondent lacks rights and legitimate interests in 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 IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name).
Complainant further contends that Respondent is not using the <mapquedt.com> domain name in connection with a bona fide offering of goods or services, nor is Respondent making a noncommercial or fair use of the disputed domain name. Complainant argues that Respondent is using the <mapquedt.com> domain name to resolve to a website that offers click-through links and advertisements for Complainant’s competitors in the online mapping and travel service market, presumably for financial gain. The Panel finds that Respondent’s use of the disputed name to redirect Internet users to Complainant’s competitors, presumably for financial gain does not constitute 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 Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not 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 Carey Int’l, Inc. v. Kogan, FA 486191 (Nat. Arb. Forum July 29, 2005) (holding that the respondent’s use of disputed domain names to market competing limousine services was not a bona fide offering of goods or services under Policy ¶ 4(c)(i), as the respondent was appropriating the complainant’s CAREY mark in order to profit from the mark).
Further, Complainant argues that Respondent has the <mapquedt.com> domain name listed for sale on the third-party website <sedo.com>. Complainant has submitted a screen shot of the webpage showing the disputed domain name for sale and requesting that an interested buyer make an offer for purchase. The Panel finds that Respondent’s attempt to sell the disputed domain name while inviting offers from the general public is further evidence that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“UDRP precedent is clear that auctioning domains does not constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use of domains.”); see also Skipton Bldg. Soc’y v. Colman, D2000-1217 (WIPO Dec. 1, 2000) (finding no rights in a domain name where the respondent offered the infringing domain name for sale and the evidence suggests that anyone approaching this domain name through the worldwide web would be "misleadingly" diverted to other sites).
Respondent is taking advantage of Internet users that are
trying to reach Complainant’s official <mapquest.com> website by using a
common misspelling of the Complainant’s MAPQUEST.COM mark. The Panel finds that Respondent’s use of a
commonly misspelled version of Complainant’s mark is further evidence that
Respondent lacks rights and legitimate interests in the disputed domain name
under Policy ¶ 4(a)(ii). See Microsoft Corp. v. Domain
Registration
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Complainant contends, and submits evidence to show, that
Respondent is attempting to sell the <mapquedt.com> domain name to
the highest bidder through the third-party website <sedo.com>. Complainant argues that Respondent’s
willingness to sell the disputed domain name is evidence that Respondent
registered and is using the disputed domain name in bad faith. The Panel finds that Respondent’s open offer
to accept bids for the purchase of the disputed domain name is evidence of
Respondent’s bad faith registration and use under Policy ¶ 4(b)(i). See Bank of
Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb.
Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name
registration for sale establishes that the domain name was registered in bad
faith under Policy ¶ 4(b)(i).”); see also Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web
Serv., FA 95685 (Nat. Arb. Forum
Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no
certain price is demanded, are evidence of bad faith”).
Complainant further alleges that Respondent has a pattern of registering domain names containing variations of well-known trademarks of others. Complainant submits evidence to show that Respondent has been the respondent in several previous UDRP cases in which Respondent was ordered to transfer the disputed domain names to the respective complainants. See Hewlett-Packard Dev. Co., L.P. v. Purda, FA 1298005 (Nat. Arb. Forum Feb. 2, 2010); see also Priceline.com, Inc. v. Purda, FA 1307268 (Nat. Arb. Forum March 30, 2010); see also Am. Express Mktg. & Dev. Corp. v. Purda, FA 1316160 (Nat. Arb. Forum May 20, 2010). Complainant contends that Respondent’s past trademark infringing domain name registrations in addition to the instant proceeding is evidence that Respondent registered and used the disputed domain name in bad faith. The Panel agrees and finds that Respondent’s continued registration and use of trademark infringing domain names is further evidence of Respondent’s bad faith registration and sue of the <mapquedt.com> domain name pursuant to Policy ¶ 4(b)(ii). See Sony Kabushiki Kaisha v. Anderson, FA 198809 (Nat. Arb. Forum Nov. 20, 2003) (finding a pattern of registering domain names in bad faith pursuant to Policy ¶ 4(b)(ii) when the respondent previously registered domain names incorporating well-known third party trademarks); see also Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants).
Complainant argues that Respondent’s use of the disputed domain name to divert Internet users to competing mapping and travel websites, presumably for commercial gain, disrupts Complainant’s business and is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). The Panel finds that Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) where Respondent is intentionally diverting Internet users seeking Complainant’s official <mapquest.com> website to the websites of its competitors in the online mapping and travel services industry. See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”); 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).
Complainant further alleges that Respondent’s use of the disputed domain name to intentionally attract Internet users to Respondent’s directory website for commercial gain is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). Complainant argues that Respondent’s disputed domain name creates a likelihood of confusion between the disputed domain names and Complainant’s MAPQUEST.COM mark, and Respondent seeks to capitalize on that likelihood of confusion by making money on click-through fees paid by websites in competition with Complainant’s mapping services that are displayed on Respondent’s website. The Panel finds that Respondent’s use of the <mapquedt.com> domain name indicates that Respondent has intentionally attempted to attract Internet users to its website for commercial gain and this use is evidence of bad faith registration and use pursuant to 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 AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was commercially gaining from the likelihood of confusion between the complainant’s AIM mark and the competing instant messaging products and services advertised on the respondent’s website which resolved from the disputed domain name).
The Panel has already determined that Respondent has engaged
in typosquatting through misspelling Complainant’s MAPQUEST.COM mark in the <mapquedt.com>
domain name. This practice has been
found by previous panels to constitute evidence itself of bad faith
registration and use under Policy ¶ 4(a)(iii). See Nat’l Ass’n of Prof’l Baseball League, Inc.
v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … is
the intentional misspelling of words with [the] intent to intercept and siphon
off traffic from its intended destination, by preying on Internauts who make
common typing errors. Typosquatting is
inherently parasitic and of itself evidence of bad faith.”); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb.
Forum June 23, 2003) (finding that the respondent engaged in typosquatting,
which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)).
The Panel finds
that 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 <mapquedt.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: July 29, 2010
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum