AOL Inc. v. Shiva Prasad
Claim Number: FA1006001332870
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 <techengadget.com>, registered with LIME LABS, LLC.
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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 30, 2010.
On July 6, 2010, LIME LABS, LLC confirmed by e-mail to the National Arbitration Forum that the <techengadget.com> domain name is registered with LIME LABS, LLC and that Respondent is the current registrant of the name. LIME LABS, LLC has verified that Respondent is bound by the LIME LABS, LLC 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 7, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 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@techengadget.com. Also on July 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 August 2, 2010 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (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 <techengadget.com> domain name is confusingly similar to Complainant’s ENGADGET mark.
2. Respondent does not have any rights or legitimate interests in the <techengadget.com> domain name.
3. Respondent registered and used the <techengadget.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, AOL Inc., holds trademark registrations for its ENGADGET mark with both the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,232,307 issued April 24, 2007) and the India Industrial Property Office (“IIPO”) (e.g., Reg. No. 1,676,766 issued April 16, 2008). Complainant uses its ENGADGET mark in connection with online journals and blogs in the fields of technology, computers, and consumer electronics and operates a website resolving from its <engadget.com> domain name.
Respondent, Shiva Prasad, registered the disputed domain name on March 24, 2010. The disputed domain name resolves to a website that makes prominent use of Complainant’s ENGADGET mark to display news stories about technology products, in direct competition with the services provided by Complainant. The website resolving from the disputed domain name also includes commercial advertisements that compete with Complainant.
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 asserts rights in its ENGADGET mark based on its trademark registrations of the mark with both the USPTO (e.g., Reg. No. 3,232,307 issued April 24, 2007) and the IIPO (e.g., Reg. No. 1,676,766 issued April 16, 2008). The Panel finds that Complainant’s registration of its ENGADGET mark with governmental trademark authorities is evidence of Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority).
Complainant asserts that Respondent’s <techengadget.com>
domain name is confusingly similar
to Complainant’s ENGADGET mark.
Respondent’s disputed domain name merely adds the descriptive term
“tech” and the generic top-level domain (“gTLD”) “.com” to the entirety of
Complainant’s mark. The Panel finds that
the addition of a descriptive term does not sufficiently distinguish a disputed
domain name from Complainant’s mark. See Am. Express Co. v.
MustNeed.com, FA 257901
(Nat. Arb. Forum June 7, 2004) (finding the respondent’s
<amextravel.com> domain name confusingly similar to Complainant’s AMEX
mark because the “mere addition of a generic or descriptive word to a
registered mark does not negate” a finding of confusing similarity under Policy
¶ 4(a)(i)); see
also Experian Info. Solutions, Inc.
v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that
several domain names incorporating the complainant’s entire EXPERIAN mark and
merely adding the term “credit” were confusingly similar to the complainant’s
mark. The Panel also finds that the
addition of a gTLD is irrelevant for the purposes of Policy ¶ 4(a)(i) analysis as a TLD is a required component of every
domain name. See Trip
Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007)
(concluding that the affixation of a gTLD to a domain name is irrelevant to a
Policy ¶ 4(a)(i) analysis); see also Nev. State Bank v. Modern Ltd. – Cayman Web
Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established
that the addition of a generic top-level domain is irrelevant when considering
whether a domain name is identical or confusingly similar under the
Policy.”). Consequently, the Panel finds
that Respondent’s <techengadget.com> domain name is confusingly similar to Complainant’s ENGADGET mark
pursuant to Policy ¶ 4(a)(i).
The Panel finds that
Complainant has satisfied Policy ¶ 4(a)(i).
Complainant contends that Respondent lacks rights and
legitimate interests in the <techengadget.com> domain name.
The Panel finds that Complainant has established a prima facie case in support of its contentions, as required by
Policy ¶ 4(a)(ii).
The burden of proof has been shifted to Respondent to prove that it does
have rights or legitimate interests in the disputed domain name. Respondent has not submitted a Response to
these proceedings and thus has submitted no evidence of any existing rights or
legitimate interests. The Panel can thus
infer that the allegations contained in Complainant’s Complaint are true. See 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)); see also Do
the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of
a respondent to come forward to [contest complainant’s allegations] is
tantamount to admitting the truth of complainant’s assertions in this
regard.”). Nevertheless, the Panel will
examine the record fully to determine whether, according to the factors in
Policy ¶ 4(c), Respondent has any rights or legitimate interests in the <techengadget.com>
domain name.
Complainant indicates that it has not licensed or authorized Respondent to use Complainant’s ENGADGET mark in a domain name. Additionally, the WHOIS information names the registrant of the disputed domain name as “Shiva Prasad.” The Panel concludes that the fact that the WHOIS information does not indicate that Respondent is not commonly known by the disputed domain name and along with Complainant’s arguments indicate that Respondent is not commonly known by the disputed domain name 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 M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant alleges that Respondent’s disputed domain name resolves to a website that features Complainant’s ENGADGET mark and displays news stories and commercial advertisements about technology products in direct competition with Complainant. The Panel finds that Respondent’s use of the <techengadget.com> domain name is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See 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); see also Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (holding that the respondent’s use of the contested domain name to maintain a commercial website with links to the products and services of the complainant’s competitors did not represent 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)).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds that Respondent’s registration and use of the confusingly similar disputed domain name to display both technology reviews and commercial advertisements similar to, and in competition with, those provided by Complainant is an attempt by Respondent to disrupt Complainant’s business. The Panel finds that this is evidence of Respondent’s bad faith pursuant to Policy ¶ 4(b)(iii). See Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website); see also Jerie v. Burian, FA 795430 (Nat. Arb. Forum Oct. 30, 2006) (concluding that the respondent registered and used the <sportlivescore.com> domain name in order to disrupt the complainant’s business under the LIVESCORE mark because the respondent was maintaining a website in direct competition with the complainant).
Complainant asserts that Respondent has registered and used
the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv). Complainant
alleges that Respondent is operating a commercial website that imitates
Complainant’s ENGADGET mark. Complainant
indicates that the content displayed on the resolving website directly competes
with Complainant’s technology news products and services. The Panel finds that Respondent’s confusingly
similar disputed domain name attempts to intentionally attract Internet users
to its website for Respondent’s own commercial gain. Therefore, the Panel finds that Respondent
registered and used the disputed domain name in bad faith pursuant to 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 the respondent was diverting Internet users searching for the complainant
to its own website and likely profiting); see
also Asbury Auto. Group,
Inc. v.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <techengadget.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: August 15, 2010
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