AOL Inc. v. Purple Bucquet
Claim Number: FA1007001334349
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 <autosaol.com>, <televisionaol.com>, and <aolsongs.com>, registered with PBC Domain Manager.
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 9, 2010.
On July 13, 2010, PBC Domain Manager confirmed by e-mail to the National Arbitration Forum that the <autosaol.com>, <televisionaol.com>, and <aolsongs.com> domain names are registered with PBC Domain Manager and that Respondent is the current registrant of the name. PBC Domain Manager has verified that Respondent is bound by the PBC Domain Manager 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 14, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 2, 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@autosaol.com, postmaster@televisionaol.com, and postmaster@aolsongs.com by e-mail. Also on July 14, 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 11, 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant provides online services and Internet-related services, including information about automobiles, music, and television.
Complainant holds registrations with the United States Patent and Trademark Office (“USPTO”) for its AOL service mark (including Reg. No. 1,977,731, issued June 4, 1996).
Respondent is not commonly known by the <autosaol.com>, <televisionaol.com>, and <aolsongs.com> domain names.
Respondent is not authorized or licensed to use Complainant’s AOL mark.
Respondent registered the <autosaol.com>, <televisionaol.com>, and <aolsongs.com> domain names no earlier than July 9, 2006.
The disputed domain names resolve to websites that feature lists of hyperlinks to Complainant’s competitors in the marketing of Internet information services.
Respondent has been a respondent in other UDRP proceedings in which disputed domain names were transferred to various complainants.
Respondent’s <autosaol.com>, <televisionaol.com>, and <aolsongs.com> domain names are confusingly similar to Complainant’s AOL mark.
Respondent does not have any rights to or legitimate interests in the <autosaol.com>, <televisionaol.com>, and <aolsongs.com> domain names.
Respondent registered and uses the <autosaol.com>, <televisionaol.com>, and <aolsongs.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
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 AOL mark under
Policy ¶ 4(a)(i) based on its service mark
registrations with the USPTO.
Complainant is not required to register its mark in the country where Respondent resides, it being sufficient that Complainant has rights in its mark in some jurisdiction. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether a complainant has registered its trademark in the country of a respondent’s residence).
Respondent’s <autosaol.com>, <televisionaol.com>, and <aolsongs.com> domain names are confusingly similar to Complainant’s AOL mark. In forming the contested domain names from Complainant’s mark, Respondent has merely added one of the descriptive terms “auto,” “television,” or “songs,” which describe Complainant’s Internet information services, together with the generic top-level domain (“gTLD”) “.com”. The addition of a descriptive term and a gTLD fails to distinguish the disputed domain names from Complainant’s mark under the Policy. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (finding that by adding the term “security” to a complainant’s VANCE mark, which described that complainant’s business, a respondent “very significantly increased” the likelihood of confusion with the mark); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark).
Consequently, the Panel concludes that Respondent’s domain names <autosaol.com>, <televisionaol.com>, and <aolsongs.com> are confusingly similar to Complainant’s AOL mark pursuant to Policy ¶ 4(a)(i).
Complainant must establish prima facie that Respondent does not have rights to or legitimate interests in the <autosaol.com>, <televisionaol.com>, and <aolsongs.com> domain names. The burden then shifts to Respondent to prove that it does have rights to or legitimate interests in the domains. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), finding that:
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.
Complainant has made out a sufficient prima facie case under this head of the Complaint. Respondent’s failure to respond to the Complaint allows us to infer that Respondent does not have rights to or legitimate interests in any of the disputed domain names. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond to the allegations in a complaint filed under the Policy allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence of record). However, we will examine the record before us, in light of the considerations 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 any of the disputed domain names 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 <autosaol.com>, <televisionaol.com>, and <aolsongs.com> domain names. Complainant further asserts, without objection from Respondent, that Respondent is not authorized or licensed to use Complainant’s AOL mark. Moreover, the pertinent WHOIS information identifies the registrant of the domain names only as “Purple Bucquet,” which does not resemble any of the contested domain names. On this record, we are constrained to conclude that Respondent is not commonly known by the <autosaol.com>, <televisionaol.com>, and <aolsongs.com> domain names so as to have demonstrated that it has rights to or legitimate interests in any of them pursuant to Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding that a respondent had no rights to or legitimate interests in a disputed domain name where there was no evidence in the record indicating that that respondent was commonly known by the disputed domain name); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that a respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the relevant WHOIS information, suggesting that that respondent was commonly known by the disputed domain name).
We also note that there is no dispute as to Complainant’s assertion that Respondent’s <autosaol.com>, <televisionaol.com>, and <aolsongs.com> domain names resolve to websites that contain links to the websites of Complainant’s business competitors. Respondent’s use of the disputed domain names as alleged is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain names pursuant Policy ¶ 4(c)(iii). See Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007):
Respondent is using the …[contested]…
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 Wal-Mart Stores, Inc. v. Power of Choice
Holding
The Panel therefore finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent has been a respondent in other UDRP proceedings in which disputed domain names were transferred to various complainants. See Atlantic Southeast Airlines, Inc. v. Purple Bucquet, FA 1326434 (Nat. Arb. Forum June 30, 2010); see also RGH Enterprises, Inc. v. Purple Bucquet, FA 1325215 (Nat. Arb. Forum July 8, 2010); further see Charlotte Russe Merchandising, Inc. v. Purple Bucquet c/o Purple, FA 1319965 (Nat. Arb. Forum June 3, 2010). These prior proceedings provide evidence that Respondent’s use of the disputed domain names constitutes bad faith registration and use under Policy ¶ 4(b)(ii). See Nat’l Abortion Fed’n v. Dom 4 Sale, Inc., FA 170643 (Nat. Arb. Forum Sept. 9, 2003) (finding bad faith pursuant to Policy ¶ 4(b)(ii) because, among other things, a respondent had several adverse decisions against it in previous UDRP proceedings, which established a pattern of cybersquatting); see also Sport Supply Group, Inc. v. Lang, D2004-0829 (WIPO Dec. 10, 2004):
[Respondent]
registered the …[contested]… domain name in order to
prevent [Complainant] from reflecting its … Mark in a corresponding domain
name. The pattern of such conduct is
established, inter alia, by the public decisions of two different UDRP
proceedings [against] Respondent.
In addition, Respondent uses the <autosaol.com>, <televisionaol.com>, and <aolsongs.com> domain names to resolve to websites featuring links to the websites of third-party providers of Internet information services that compete with Complainant’s business. Respondent’s use of the disputed domain names in this manner disrupts Complainant’s Internet information services business by redirecting potential customers from Complainant to Complainant’s competitors, and thus constitutes bad faith registration and use of the domains pursuant to 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 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 …[business]… to competing websites, Respondent has engaged in bad
faith registration and use [of a disputed domain name] pursuant to Policy ¶
4(b)(iii).
Finally, in the circumstances here presented, we may safely presume that Respondent profits each time an Internet user clicks on one of the aforementioned hyperlinks. And, because each of the contested domain names is confusingly similar to Complainant’s AOL service mark, Internet users who visit the websites resolving from the subject domains may become confused as to the possibility of Complainant’s sponsorship of, or affiliation with, the <autosaol.com>, <televisionaol.com>, and <aolsongs.com> domain names and resolving websites. Respondent’s attempt thus to profit from that confusion constitutes evidence of bad faith registration and use of the disputed domain names under Policy ¶ 4(b)(iv). 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 that was confusingly similar to a complainant’s mark by using it to offer links to third-party websites featuring services similar to those offered by that complainant); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that a respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using disputed domain names to operate a commercial search engine with links to websites featuring the products of a complainant and that complainant’s competitors, as well as by diverting Internet users to several other domain names) .
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
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 <autosaol.com>, <televisionaol.com>, and <aolsongs.com> domain names be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard , Panelist
Dated: August 20, 2010
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