AOL Inc. v. Joel Reed Parker
Claim Number: FA1008001339001
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 <joystuq.com>, registered with DomainPeople, 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 August 4, 2010.
On August 10, 2010, DomainPeople, Inc. confirmed by e-mail to the National Arbitration Forum that the <joystuq.com> domain name is registered with DomainPeople, Inc. and that Respondent is the current registrant of the name. DomainPeople, Inc. has verified that Respondent is bound by the DomainPeople, 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 August 11, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 31, 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@joystuq.com by e-mail. Also on August 11, 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 September 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 (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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant is an online service provider of entertainment, e-mail, news, and instant messaging products and services.
Complainant owns a registration for its JOYSTIQ service mark with the United States Patent and Trademark Office ("USPTO") (Reg. No. 3,246,051, issued May 29, 2007).
Complainant uses its JOYSTIQ mark to provide video and computer game information, products, and services to the general public.
Respondent registered the <joystuq.com> domain name on September 21, 2007.
This domain name resolves to Respondent’s <gameoftheblog.com> website that is a blog and game information site that competes with Complainant’s business offerings.
Respondent’s <joystuq.com> domain name is confusingly similar to Complainant’s JOYSTIQ mark.
Complainant has not licensed or otherwise authorized Respondent to use its mark in any way, and Respondent is not commonly known by the <joystuq.com> domain name.
Respondent does not have any rights to or legitimate interests in the <joystuq.com> domain name.
Respondent registered and uses the <joystuq.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a 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 JOYSTIQ service mark under Policy ¶ 4(a)(i) through its mark registration with the USPTO. See, for example, Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that a complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering them with the USPTO); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006):
Complainant
has established rights in the … mark through registration of the mark with the
USPTO.
Respondent’s <joystuq.com> domain name is confusingly similar to Complainant’s JOYSTIQ mark pursuant to Policy ¶ 4(a)(i) because the domain name merely replaces the letter “i” of Complainant’s mark with the letter “u” and adds the generic top-level domain (“gTLD”) “.com.” See Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to a complainant's BELKIN mark because the name merely replaced the letter “i” in the mark with the letter “e”); see also Intelius, Inc. v. Hyn, FA 703175 (Nat. Arb. Forum July 5, 2006) (finding the <intellus.com> domain name to be confusingly similar to a complainant’s INTELIUS mark because the domain name differed from the mark by one letter and was visually similar); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007):
The
mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to
adequately distinguish the Domain Name from the mark.
The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent does not have rights to or legitimate interests in the <joystuq.com> domain name under Policy ¶ 4(a)(ii). Complainant is required to establish a prima facie case in support of these assertions. Once Complainant has made out its prima facie case, the burden of proof shifts to Respondent to establish that it has rights to or legitimate interests in the domain name. 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 a complainant, the burden shifts to a respondent to demonstrate its rights to or legitimate interests in a disputed domain name.
Complainant has established a prima facie case under this head of the Policy, and the burden of proof has therefore been transferred to Respondent. Owing to Respondent’s failure to respond to the Complaint filed in these proceedings, we are entitled to presume that Respondent does not possess rights to or legitimate interests in the <joystuq.com> domain name. See Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004):
Respondent’s
failure to respond to the Complaint functions as an implicit admission that
[Respondent] lacks rights and legitimate interests in the disputed domain
name. It also allows the Panel to accept
all reasonable allegations set forth…as true.
Nonetheless, we will examine the evidence of record, in light of the considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent possesses rights to or legitimate interests in the contested domain name which are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that it has not licensed or otherwise authorized Respondent to use its mark in any way, and that Respondent is not commonly known by the <joystuq.com> domain name. Moreover, the WHOIS information for the disputed domain name identifies the registrant only as “Joel Reed Parker,” which does not resemble the disputed domain name. On this record, we are constrained to conclude that Respondent is not commonly known by the disputed domain name so as to have secured rights to or legitimate interests in the contested domain under Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that a respondent was not commonly known by the <lilpunk.com> domain name where there was no evidence in the record showing that that respondent was commonly known by that domain name, including the WHOIS information, and where a complainant asserted that it did not authorize or license that respondent’s use of its mark in a domain name); see also 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).
We also observe that Complainant alleges, without objection from Respondent, that Respondent’s <joystuq.com> domain name resolves to the <gameoftheblog.com> website, which features a video game blog and third-party hyperlinks to video games in competition with the business of Complainant. Complainant further contends, again without objection from Respondent, that Respondent is profiting from its use of the <joystuq.com> domain name, presumably via the receipt of click-through or similar fees tied to the visits of Internet users to those sponsored links. Respondent’s use of the disputed domain name in the manner alleged is not 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 a respondent’s use of a complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to that 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 Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003):
Respondent’s appropriation of
[Complainant’s] … mark to market products that compete with Complainant’s goods
does not constitute a bona fide offering of goods and services.
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <joystuq.com> domain name to divert Internet users to Respondent’s website at <gameoftheblog.com>. Such use of a domain name which is confusingly similar to Complainant’s mark disrupts Complainant’s online business and is evidence of bad faith registration and use of the domain pursuant to Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005):
Respondent
is appropriating Complainant’s mark to divert Complainant’s customers to
Respondent’s competing business. The
Panel finds this diversion is evidence of bad faith registration and use
pursuant to Policy ¶ 4(b)(iii).
See also Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that a respondent registered and used the domain name <classicmetalroofing.com> in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to that respondent’s competing website); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that a respondent registered and used a disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because that respondent used the domain name to advertise goods and services of a complainant’s competitors, thereby disrupting that complainant’s business).
Respondent presumably receives commercial benefit in the form of click-through or similar fees from its diversionary scheme. This commercial gain through the use of a confusingly similar domain name is also evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that a respondent’s use of the <arizonashuttle.net> domain name, which contained a complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to that respondent’s website, which offered competing travel services, fell within Policy ¶ 4(b)(iv)); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use of a contested domain name under Policy ¶ 4(b)(iv) where a respondent diverted Internet users searching for a complainant to its own website, likely profiting in the process).
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 mustl be GRANTED.
Accordingly, it is Ordered that the <joystuq.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: September 20, 2010
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