national arbitration forum

 

DECISION

 

AOL Inc. v. Dopici Nasrat

Claim Number: FA1006001331870

 

PARTIES

Complainant is AOL Inc. (“Complainant”), represented by James R. Davis, of Arent Fox LLP, Washington, D.C., USA.  Respondent is Dopici Nasrat (“Respondent”), Tonga.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <mapquestus.com>, <mapquestairport.com>, and <walletpp.com>, registered with DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM.

 

PANEL

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.

 

Sandra J. Franklin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on June 25, 2010.

 

On July 1, 2010, DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM confirmed by e-mail to the National Arbitration Forum that the <mapquestus.com>, <mapquestairport.com>, and <walletpp.com> domain names are registered with DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM and that Respondent is the current registrant of the names.  DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM has verified that Respondent is bound by the DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.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 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@mapquestus.com, postmaster@mapquestairport.com, and postmaster@walletpp.com.  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 6, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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.

 

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 <mapquestus.com> and <mapquestairport.com> domain names are confusingly similar to Complainant’s MAPQUEST.COM mark.

 

Respondent’s <walletpp.com> domain name is confusingly similar to Complainant’s WALLETPOP mark

 

2.      Respondent does not have any rights or legitimate interests in the <mapquestus.com>, <mapquestairport.com>, and <walletpp.com> domain names.

 

3.      Respondent registered and used the <mapquestus.com>, <mapquestairport.com>, and <walletpp.com> domain names in bad faith.

 

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

 

FINDINGS

Complainant, AOL Inc., uses the MAPQUEST.COM and WALLETPOP marks to provide travel and financial-related information and services on the Internet. Complainant holds trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the MAPQUEST.COM mark (e.g., Reg. No. 2,496,784 registered on October 9, 2001) as well as the WALLETPOP mark (e.g., Reg. No. 3,564,628 registered on January 20, 2009).

 

Respondent, Dopici Nasrat, registered the disputed <mapquestus.com> and <mapquestairport.com> domain names on November 4, 2009 and the <walletpp.com> domain name on October 22, 2009.  The disputed domain names resolve to directory websites that feature hyperlinks that connect Internet users to Complainant’s competitors.

 

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

 

The Panel finds Complainant’s numerous trademark registrations with the USPTO for the MAPQUEST.COM mark and the WALLETPOP mark sufficiently prove Complainant’s rights in these marks 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 Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations).  The Panel also finds Complainant need not own a trademark registration in the country in which Respondent operates to assert rights under Policy ¶ 4(a)(i).  See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).

 

Respondent’s <mapquestus.com> and <mapquestairport.com> domain names are confusingly similar to Complainant’s MAPQUEST.COM mark.  In each of the disputed domain names, Respondent fully incorporates Complainant’s mark and merely adds the letters “us,” which is common designation for the United States, and the descriptive term “airport,” which relates to Complainant’s travel services.  Following precedent, the Panel finds the addition of a string of letters or a descriptive term do not sufficiently differentiate a disputed domain name from a complainant’s mark.  See MFI UK Ltd. v. Jones, D2003-0102 (WIPO May 8, 2003) (finding the <mfiuk.com> domain name confusingly similar to the complainant’s MFI mark because the addition of the letters “UK” were merely a common designation for the United Kingdom); see also Am. Online, Inc. v. Amigos On Line RJ, FA 115041 (Nat. Arb. Forum Aug. 28, 2002) (finding that the <aolrj.com> domain name was confusingly similar to the complainant’s AOL mark because “…the addition of a string of indiscriminate letters to a famous mark in a second level domain does not differentiate the domain name from the mark.”); 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.”).  Therefore, the Panel finds Respondent’s <mapquestus.com> and <mapquestairport.com> domain names are confusingly similar to Complainant’s MAPQUEST.COM mark pursuant to Policy ¶ 4(a)(i).

 

Respondent’s <walletpp.com> domain name is also confusingly similar to Complainant’s WALLETPOP mark.  In Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005), the panel held that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i.”  Likewise, the panel in CEC Entertainment, Inc. v. Peppler, FA 104208 (Nat. Arb. Forum Mar. 21, 2002), determined that the <chuckcheese.com> domain name was confusingly similar to the complainant’s CHUCK E. CHEESE mark because the domain name only differed from the mark by one letter.  In addition, prior panels have found the attachment of a generic top-level domain (“gTLD”) to a complainant’s mark does not render the disputed domain name distinct from a mark.  See 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).  In the <walletpp.com> domain name, Respondent simply deletes the letter “o” from Complainant’s WALLETPOP mark and then adds the gTLD “.com” to the mark.  The Panel finds misspelling a mark and affixing a gTLD do not distinguish a disputed domain name from a mark.  Consequently, the Panel finds Respondent’s <walletpp.com> domain name is confusingly similar to Complainant’s WALLETPOP mark pursuant to Policy ¶ 4(a)(i).

 

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

 

Rights or Legitimate Interests

 

The Panel finds Complainant has established a prima facie case showing Respondent lacks rights and legitimate interests in the disputed domain names.  According to Policy ¶ 4(a)(ii), the burden then shifts to Respondent to demonstrate it has rights or legitimate interests in the disputed domain names.  Respondent’s failure to submit a Response is an indication that Respondent lacks rights or legitimate interests.  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 Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”).  However, this Panel will evaluate the record to determine whether Respondent possesses rights or legitimate interests under the Policy ¶ 4(c) factors.

 

Complainant claims it has not authorized or licensed Respondent to use its marks in any way.  The WHOIS information lists “Dopici Nasrat” as the registrant of the disputed domain names, which the Panel finds is not similar to <mapquestus.com>, <mapquestairport.com>, and <walletpp.com> domain names.  Respondent has not provided evidence that indicates it is commonly known by any of the disputed domain names.  Therefore, the Panel finds Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii).  See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also 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).

 

Complainant alleges Respondent uses the confusingly similar <mapquestus.com>, <mapquestairport.com>, and <walletpp.com> domain names to resolve to websites that display links to third-party websites, many of which compete with Complainant’s business.  Complainant further contends Respondent commercially benefits from this use through the receipt of click-through fees.  The Panel agrees with Complainant’s contentions and, therefore, finds Respondent does not use its disputed domain names to make 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 Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either 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 Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not 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), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites).

 

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

 

Registration and Use in Bad Faith

 

The Panel finds Respondent’s use of confusingly similar domain names to redirect Internet users seeking Complainant’s products and services to websites that offer links to Complainant’s competitors disrupts Complainant’s business.  Therefore, the Panel finds this behavior amounts to registration and use in bad faith pursuant to Policy ¶ 4(b)(iii).  See Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s 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 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)).

 

In addition, the Panel finds Respondent uses confusingly similar domain names to attempt to attract Internet users to its resolving websites so that Respondent can profit from their confusion in order to receive click-through fees.  Therefore, the Panel finds this behavior provides further evidence of registration and use in bad faith pursuant to Policy ¶ 4(b)(iv).  See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)); see also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).

 

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

 

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 <mapquestus.com>, <mapquestairport.com>, and <walletpp.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

Sandra J. Franklin, Panelist

Dated:  August 12, 2010

 

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