AOL Inc. v. Navigation Catalyst Systems, Inc.
Claim Number: FA1006001331497
Complainant is AOL
Inc. (“Complainant”), represented by James
R. Davis, of Arent Fox LLP, Washington D. C. Respondent is Navigation Catalyst Systems, Inc (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <mobileaim.com>,
registered with BASIC FUSION, INC.
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 June 23, 2010.
On July 2, 2010, BASIC FUSION, INC. confirmed by e-mail to the National Arbitration Forum that the <mobileaim.com> domain name is registered with BASIC FUSION, INC. and that Respondent is the current registrant of the name. BASIC FUSION, INC. has verified that Respondent is bound by the BASIC FUSION, 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 July 8, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 28, 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@mobileaim.com by e-mail. Also on July 8, 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 August 3, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <mobileaim.com> domain name is confusingly similar to Complainant’s AIM mark.
2. Respondent does not have any rights or legitimate interests in the <mobileaim.com> domain name.
3. Respondent registered and used the <mobileaim.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, AOL Inc., provides information and services on the Internet, including mobile instant messaging services. Complainant offers its instant messaging services under its AIM mark. Complainant holds multiple trademark registrations with the United States Patent and Trademark Office ("USPTO") for its AIM mark (e.g., Reg. No. 2,423,367 issued January 23, 2001).
Respondent, Navigation Catalyst Systems, Inc., registered the <mobileaim.com> domain name on February 27, 2004. The disputed domain name resolves to a hyperlink directory website that features hyperlinks to third-party companies that offer competing instant messaging products. Respondent receives a click-through fee each time an Internet user clicks on one of the hyperlinks.
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 alleges that it has established rights in its
AIM mark. Previous panels have found
that a complainant may establish rights in a mark for Policy ¶ 4(a)(i) purposes by registering a mark with a federal trademark
agency. See Miller Brewing
Complainant argues that Respondent’s <mobileaim.com> domain name is confusingly similar to Complainant’s AIM mark. Previous panels have held that a disputed domain name is confusingly similar when a domain name contains a complainant’s mark in its entirety and simply combines the mark with a term that describes the business of the complainant and a generic top-level domain (“gTLD”). See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business); see also Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”); 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). The disputed domain name incorporates Complainant’s AIM mark in its entirety and combines Complainant’s mark with the descriptive term “mobile,” which describes Complainant’s mobile instant messaging business, and the gTLD “.com.” Based on the precedent established by prior panels and the evidence in the record, this Panel concludes that Respondent’s <mobileaim.com> domain name is confusingly similar to Complainant’s AIM mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant has alleged Respondent does not have rights or legitimate interests in the <mobileaim.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a sufficient prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain name. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name 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 asserts that Respondent is not commonly known by the <mobileaim.com> domain name. Prior panels have determined that a respondent is not commonly known by a disputed domain name if the respondent fails to respond to the complainant’s allegations, the WHOIS information does not indicate that the respondent is commonly known by the disputed domain name, and the complainant contends that the respondent was not licensed to use the complainant’s mark. See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response); 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). In this case, Respondent has failed to provide any evidence that would support a finding that Respondent is commonly known by the <mobileaim.com> domain name. The WHOIS information indicates that the domain name registrant is “Navigation Catalyst Systems, Inc.,” which the Panel finds is not similar to the <mobileaim.com> domain name. Moreover, Complainant claims that Respondent is not licensed to utilize Complainant’s AIM mark. Thus, the Panel holds that Respondent is not commonly known by the <mobileaim.com> domain name according to Policy ¶ 4(c)(ii).
According to Complainant, Respondent uses the <mobileaim.com> domain name to resolve to a hyperlink directory website. Complainant argues that Respondent’s use of the disputed domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Past panels have concluded that a respondent’s use of a disputed domain name to host a hyperlink directory website containing hyperlinks to a complainant’s competitors is not a bona fide offering of goods or services or a legitimate noncommercial of fair use of the domain name. See Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute 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).”); see also Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks). The hyperlink directory found on the website resolving from the <mobileaim.com> domain name contains third-party hyperlinks to Complainant’s competitions in the Internet information and services business, as well as the instant messaging business. Respondent receives click-through fees from the aforementioned hyperlinks. Consequently, the Panel determines that Respondent’s use of the <mobileaim.com> domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the <mobileaim.com> domain name pursuant to Policy ¶ 4(c)(iii).
The Panel finds the elements of Policy ¶ 4(a)(ii) are satisfied.
Complainant contends that Respondent’s use of the <mobileaim.com> domain name disrupts Complainant’s Internet information and services business, including its instant messaging business. Previous panels have determines that a respondent disrupts a complainant’s business if Internet users interested in a complainant’s products may purchase similar products of a competitor due to a respondent’s use of a confusingly similar disputed domain name. 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).”). In this case, Respondent uses the <mobileaim.com> domain name to resolve to a website featuring a list of third-party hyperlinks. These third-party hyperlinks resolve to Complainant’s competitors in the Internet information and services business, including the instant messaging business. Internet users interested in Complainant’s Internet information, services, or instant messaging products may purchase the same products from a competitor of Complainant because of Respondent’s use of the confusingly similar disputed domain name to host a list of hyperlinks to competitors of Complainant. Based on this analysis, the Panel finds that Respondent’s use of the <mobileaim.com> domain name disrupts Complainant’s business, which constitutes bad faith registration and use under Policy ¶ 4(b)(iii).
Complainant argues that Respondent has attempted to create
confusion among Internet users in order to commercially profit from its use of
the disputed domain name, which constitutes bad faith registration and
use. Prior panels have found that a
respondent is attempting to profit from Internet users’ confusion when a
respondent utilizes a confusingly similar disputed domain name to host a
hyperlink list from which the respondent receives click-through fees. See
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 <mobileaim.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: August 16, 2010
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