AOL Inc. v. ye tian quan a/k/a telecom
Claim Number: FA1007001334134
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 <winamp.mobi>, registered with Go Canada Domains 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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 8, 2010.
On July 09, 2010, Go Canada Domains Inc. confirmed by e-mail to the National Arbitration Forum that the <winamp.mobi> domain name is registered with Go Canada Domains Inc. and that Respondent is the current registrant of the name. Go Canada Domains Inc. has verified that Respondent is bound by the Go Canada Domains 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 9, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 29, 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@winamp.mobi by e-mail. Also on July 9, 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.
Respondent failed to file with the National Arbitration Forum within the time allowed a response to the Complaint meeting the requirements of the Policy. However, on July 14, 2010, Respondent communicated with the National Arbitration Forum via e-mail, the essential assertions of which communication, which oppose the demand of the Complaint, are summarized below. Having received no compliant response from Respondent, the National Arbitration Forum thereafter transmitted to the parties a Notification of Respondent Default.
On August 9, 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 "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:
Complainant offers computer media players and related services through its WINAMP applications.
Complainant owns trademark registrations for its WINAMP mark with the United States Patent and Trademark Office ("USPTO") (including Reg. No. 2,557,585, issued April 9, 2002) and the Chinese State Administration for Industry and Commerce (“SIPO”) (including Reg. No. 5920241, issued December 14, 2009).
Respondent is not commonly known by the disputed domain name, and Complainant has not authorized or licensed Respondent to use its WINAMP mark in any way.
Respondent registered the <winamp.mobi> domain name on June 3, 2010.
Respondent’s domain name resolves to a website that displays a list of third-party hyperlinks to competing media players.
Respondent receives click-through fees for visits by Internet users to the links posted on Respondent’s website.
Respondent’s domain name is also listed for sale at auction at the third-party <godaddy.com> website with an asking price of $5,000.
Respondent also offered to sell the domain name to Complainant after Complainant sent a cease-and-desist letter to Respondent.
Respondent’s <winamp.mobi> domain name is identical to Complainant’s WINAMP trademark and service mark.
Respondent does not have any rights to or legitimate interests in the <winamp.mobi> domain name.
Respondent registered and uses the <winamp.mobi> domain name in bad faith.
B. Respondent makes the following assertions, unaccompanied by supporting proof:
Respondent obtained the contested domain name legitimately.
The domain name is comprised of very common word elements.
Complainant has no right to claim ownership of this domain name.
Complainant is attempting to create a monopoly as to this domain name.
(1) the domain name registered by Respondent is identical to a trademark and service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was 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 has established rights in its WINAMP mark under Policy ¶ 4(a)(i) through its trademark registrations with the USPTO and SIPO. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007):
As
the [complainant’s] mark is registered with the USPTO, complainant has met the
requirements of Policy ¶ 4(a)(i).
See also Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding that a complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”).
The <winamp.mobi> domain name is substantively identical to Complainant’s WINAMP mark because a generic-top level domain (“gTLD”) “.mobi” does not distinguish the domain name from Complainant’s mark. See Starkey v. Bradley, FA 874575 (Nat. Arb. Forum Feb. 12, 2007):
The
suffix .mobi should be treated the same way as .com and should be ignored when
comparing the mark and the disputed domain name.
See also George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding
that the <gwbakeries.mobi> domain name was identical to the GW BAKERIES
mark under Policy ¶ 4(a)(i)).
Therefore, the Panel finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(i).
Complainant alleges that Respondent does not have rights to or legitimate interests in the <winamp.mobi> domain name pursuant to Policy ¶ 4(a)(ii). Complainant is required to produce a prima facie case in support of this allegation. Once Complainant satisfies this requirement, the burden of proof shifts to Respondent to show that it does have rights to or legitimate interests in the 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.
Complainant has satisfied its prima facie burden under Policy ¶ 4(a)(i), and the burden of proof has therefore been transferred to Respondent. However, Respondent’s failure to respond to this proceeding in compliance with the requirements of the Policy, and its failure, in particular, to show evidentiary support for its assertions in opposition to the Complaint, allows the Panel to accept as true the allegations of the Complaint. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000):
Given
Respondent’s failure to submit a substantive answer in a timely fashion, the
Panel accepts as true all of the allegations of the complaint.
Nevertheless, we will examine the evidence on record, 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 <winamp.mobi> domain name which are cognizable under the Policy.
We begin by observing that Complainant alleges, and Respondent does not deny, that Respondent is not commonly known by the disputed domain name and that Complainant has not authorized or licensed Respondent to use its WINAMP mark in any way. Moreover, the WHOIS information for the contested domain name identifies the registrant only as “ye tian quan c/o telecom”, which does not resemble the disputed domain name. On this record, we are constrained to conclude that Respondent is not commonly known by the <winamp.mobi> domain name so as to have demonstrated that it has rights to or legitimate interests in the contested domain under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that a respondent was not commonly known by disputed domain names where the relevant WHOIS information, as well as all other information in the record, gave no indication that that respondent was commonly known by the disputed domain names, and where a complainant had not authorized that respondent to register a domain name containing its registered mark); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that a respondent was not commonly known by either of the domain names <shoredurometer.com> and <shoredurometers.com> where the pertinent WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that that respondent was commonly known by either of the domain names).
Complainant also contends, without objection from Respondent, that Respondent is using the <winamp.mobi> domain name to display third-party hyperlinks to competing media player applications, and that Respondent receives click-through fees for visits by Internet users to the links posted on Respondent’s website. Respondent’s use of the contested domain name as alleged is not a use in connection with 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 Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that a respondent’s use of domain names confusingly similar to a complainant’s WAL-MART mark to divert Internet users seeking that complainant’s goods and services to websites competing with the business of that complainant did 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 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 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), where a respondent presumably received “click-through” fees for each consumer it redirected to those websites).
Complainant also alleges that Respondent has attempted to sell the disputed domain name to the general public for an asking price of $5,000. The indicated sum is presumptively in excess of the cost of acquisition of the subject domain name. Further, Complainant contends that, after Complainant sent a cease-and-desist letter to Respondent, Respondent offered to sell the domain name to Complainant. Respondent does not deny these assertions. In the circumstances here presented, we conclude that Respondent’s attempts to sell the <winamp.mobi> domain name both to Complainant and the general public is evidence that Respondent does not have rights to or legitimate interests in the domain name pursuant to Policy ¶ 4(a)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that a respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided evidence that that respondent had no rights or legitimate interests in a contested domain name); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007):
An
attempt by a respondent to sell a domain name to a complainant who owns a
trademark with which the domain name is confusingly similar for an amount in
excess of out-of-pocket costs has been held to demonstrate a lack of legitimate
rights or interests.
Therefore, the Panel finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
Respondent has attempted to sell the <winamp.mobi> domain name both to
Complainant and to the general public for more than Respondent’s out-of-pocket
expenses in acquiring the domain name.
This evidence that Respondent registered and is using the domain name in
bad faith pursuant to 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 Wrenchead.com, Inc. v. Hammersla, D2000-1222 (WIPO Dec. 12, 2000) (finding that offering a domain name for sale at an auction site is evidence of bad faith registration and use of the domain by a respondent).
Respondent is using the disputed domain name to resolve to a
website displaying third-party links to competing media player and music
applications. This has the effect of diverting
customers seeking Complainant’s WINAMP application to the products of
Complainant’s competitors, and is therefore evidence of Respondent’s bad faith
registration and use of the contested domain name under Policy ¶ 4(b)(iii). See 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)); see also 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 a
disputed domain name to operate a commercial search engine with links to the
websites of a complainant’s competitors).
Respondent receives click-through fees from the visits of Internet users to the websites resolving from the third-party links displayed on its website. Such use of the domain name for commercial gain is further evidence of Respondent’s bad faith registration and use within the meaning of the Policy. See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that a respondent engaged in bad faith registration and use of a domain name by using it to offer links to third-party websites featuring services similar to those offered by a complainant); see also Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that a respondent’s use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith where that respondent presumably benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites).
For all of these reasons, the Panel finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(iii).
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 <winamp.mobi> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: August 16, 2010
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