AOL Inc. v. zhong jianfeng
Claim Number: FA1008001340864
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 <aol.cc>, registered with 1 API GMBH.
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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 13, 2010.
On August 17, 2010, 1 API GMBH confirmed by e-mail to the National Arbitration Forum that the <aol.cc> domain name is registered with 1 API GMBH and that Respondent is the current registrant of the name. 1 API GMBH has verified that Respondent is bound by the 1 API GMBH 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 19, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 8, 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@aol.cc by e-mail. Also on August 19, 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 20, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <aol.cc> domain name is identical to Complainant’s AOL mark.
2. Respondent does not have any rights or legitimate interests in the <aol.cc> domain name.
3. Respondent registered and used the <aol.cc> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, AOL, Inc., offers computer
and online services. Complainant holds
several trademark registrations with the United States Patent and Trademark
Office (“USPTO”) for its AOL mark (e.g.,
Reg. No. 1,977,731 issued June 4, 1996).
Complainant also holds trademark registrations with
Respondent, zhong jianfeng, registered the <aol.cc> domain name on April 17, 2009. The disputed domain name reroutes to Complainant’s official website.
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 claims rights in the AOL mark through its
registrations of the mark with the USPTO (e.g.,
Reg. No. 1,977,731 issued June 4, 1996) and
Complainant argues that Respondent’s <aol.cc> domain name is identical to its AOL mark. Respondent replicates Complainant’s mark in the disputed domain name and then merely adds the country-code top-level domain (“ccTLD”) “.cc” to Complainant’s mark. The Panel finds the addition of a ccTLD is irrelevant to the Policy ¶ 4(a)(i) analysis. See World Wrestling Fed'n Entm't, Inc. v. Rapuano, DTV2001-0010 (WIPO May 23, 2001) (“The addition of the country code top level domain (ccTLD) designation <.tv> does not serve to distinguish [the disputed domain] names from the complainant’s marks since ‘.tv’ is a common Internet address identifier that is not specifically associated with Respondent.”); see also Mattel, Inc. v. Unknown, FA 490083 (Nat. Arb. Forum July 11, 2005) (“The domain name [<Barbie.us>] is identical to the trademark “Barbie”, as it uses the trademark in its entirety. The only difference is the addition of the country code “us” which for this purpose is insufficient to distinguish the domain name from the trademark.”). Therefore, the Panel concludes Respondent’s <aol.cc> domain name is identical to Complainant’s AOL mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant must first show Respondent lacks rights and legitimate interests in the <aol.cc> domain name under Policy ¶ 4(a)(ii). After Complainant makes this prima facie case, the burden shifts to Respondent to prove it has rights or legitimate interests in the disputed domain name. The Panel may view Respondent’s failure to submit a Response as evidence that Respondent lacks rights and legitimate interests. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “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.”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). Despite Respondent’s failure to respond, the Panel will review the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
Complainant avers Respondent is not authorized or licensed to use its AOL mark. Furthermore, the WHOIS information lists “zhong jianfeng” as the registrant of the disputed domain name, which the Panel finds is not similar to the <aol.cc> domain name. Without evidence to the contrary, the Panel finds that Complainant’s assertions combined with the WHOIS information suggests that Respondent is not commonly known by the <aol.cc> domain name under Policy ¶ 4(c)(ii). See 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); 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 claims Respondent’s <aol.cc> domain name reroutes to Complainant’s official
website. The Panel presumes that
Respondent profits from this use through the receipt of affiliate fees in
violation of Complainant’s affiliate program.
Therefore, the Panel finds Respondent does not use the disputed domain
name for 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
Deluxe Corp. v.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds Respondent’s <aol.cc> domain name is identical to Complainant’s AOL
mark and that Respondent uses the disputed domain name to receive affiliate
fees from Complainant. Therefore, the
Panel finds Respondent has engaged in registration and use in bad faith under
Policy ¶ 4(b)(iv).
See Cricket
Commc’ns, Inc. v. Oliver, FA
954005 (Nat. Arb. Forum May 29, 2007) (finding bad faith registration
and use where the respondent registered domain names containing the
complainant’s mark after enrolling in the complainant’s affiliate program); see also Sports Auth.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <aol.cc> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: September 24, 2010
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