AOL Inc. v. Zhang Mengyun a/k/a James a/k/a Topedu Ltd.
Claim Number: FA1009001347380
Complainant is AOL Inc. ("Complainant"), represented by James R. Davis of Arent Fox LLP, Washington D.C., USA. Respondent is Zhang Mengyun a/k/a James a/k/a Topedu Ltd. ("Respondent"), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <aolanswers.net> and <yellowpagesaol.com>, registered with XIAMEN ENAME NETWORK TECHNOLOGY CORPORATION LIMITED d/b/a ENAME CORP.
The domain names at issue is <aolanswers.co> domain name, registered with INTERNETX 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 September 20, 2010; the National Arbitration Forum received payment on September 20, 2010.
On September 21, 2010, XIAMEN ENAME NETWORK TECHNOLOGY CORPORATION LIMITED d/b/a ENAME CORP confirmed by e-mail to the National Arbitration Forum that the <aolanswers.net> and <yellowpagesaol.com> domain names are registered with XIAMEN ENAME NETWORK TECHNOLOGY CORPORATION LIMITED d/b/a ENAME CORP and that Respondent is the current registrant of the names. XIAMEN ENAME NETWORK TECHNOLOGY CORPORATION LIMITED d/b/a ENAME CORP has verified that Respondent is bound by the XIAMEN ENAME NETWORK TECHNOLOGY CORPORATION LIMITED d/b/a ENAME CORP registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 21, 2010, INTERNETX GMBH confirmed by e-mail to the National Arbitration Forum that the <aolanswers.co> domain name is registered with XIAMEN INTERNETX GMBH and that Respondent is the current registrant of the name. INTERNETX GMBH has verified that Respondent is bound by the INTERNETX GMBH registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 8, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 28, 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@aolanswers.co, postmaster@aolanswers.net, and postmaster@yellowpagesaol.com. Also on October 8, 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 November 10, 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 Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 the Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <aolanswers.co>, <aolanswers.net>, and <yellowpagesaol.com> domain names are confusingly similar to Complainant’s AOL mark.
2. Respondent does not have any rights or legitimate interests in the <aolanswers.co>, <aolanswers.net>, and <yellowpagesaol.com> domain names.
3. Respondent registered and used the <aolanswers.co>, <aolanswers.net>, and <yellowpagesaol.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, AOL Inc., holds numerous trademark registrations for its AOL mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,977,731 issued June 4, 1996) and China’s State Intellectual Property Office (“SIPO”) (e.g., Reg. No. 977,462 issued April 7, 1997). Complainant uses its AOL mark in connection with a wide variety of computer and Internet services.
Respondent registered the <aolanswers.co>, <aolanswers.net>, and <yellowpagesaol.com> domain names no earlier than April 29, 2010. Respondent uses the disputed domain names to resolves to websites featuring hyperlinks to third-party websites. Respondent has offered to sell the <aolanswers.co> domain name to Complainant for 1,800 dollars.
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.
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” The Panel finds that the disputed domain names are controlled by a single entity based on the WHOIS information, which includes the same mailing address and e-mail address for all three domain names.
In order to establish rights in a mark under Policy ¶ 4(a)(i), a complainant must provide evidence of a trademark registration with a federal trademark authority or evidence of common law rights in a complainant’s mark. In this case, Complainant submits evidence of Complainant’s numerous trademark registrations of its AOL mark with the USPTO (e.g., Reg. No. 1,977,731 issued June 4, 1996) and SIPO (e.g., Reg. No. 977,462 issued April 7, 1997). The Panel determines that Complainant’s trademark registrations are sufficient to establish rights in its AOL mark pursuant to Policy ¶ 4(a)(i). See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)).
Respondent’s <aolanswers.co>, <aolanswers.net>, and <yellowpagesaol.com> domain names incorporate Complainant’s entire AOL mark and add the descriptive terms “answers,” “yellow,” and “pages.” Complainant uses the phrase “yellow pages” to provide an online business directory and Complainant utilizes the term “answers” to operate its AOL Answers service that allows Internet users to post questions and answers to other users’ questions. Respondent further adds the generic top-level domain (“gTLD”) “.net” or “.com” or the country-code top-level domain (“ccTLD”) “.co.” The Panel holds that such alterations to Complainant’s mark fails to sufficiently distinguish the disputed domain names from Complainant’s mark. See Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”); 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.”); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). Therefore, the Panel concludes that Respondent’s <aolanswers.co>, <aolanswers.net>, and <yellowpagesaol.com> domain names are confusingly similar to Complainant’s AOL mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent lacks rights and legitimate interests in the <aolanswers.co>, <aolanswers.net>, and <yellowpagesaol.com> domain names. Previous panels have found that when a complainant makes a prima facie case in support of its allegations, the burden shifts to the respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a prima facie case. Due to Respondent’s failure to respond to the Complainant, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain names. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain names under Policy ¶ 4(c). See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”).
Respondent has failed to provide any evidence, and the Panel fails to find any evidence in the record, that would support a finding that Respondent is commonly known by the disputed domain names. Moreover, the WHOIS information does not indicate that Respondent is commonly known by the disputed domain names. Based on the evidence in the record and the lack of a Response from Respondent, the Panel holds that Respondent is not commonly known by the <aolanswers.co>, <aolanswers.net>, and <yellowpagesaol.com> domain names. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name).
Respondent’s <aolanswers.co>, <aolanswers.net>, and <yellowpagesaol.com> domain names resolve to websites that contain hyperlinks to third-party websites. Complainant does not indicate whether these third-parties are competitors or unrelated. Due to this lack of identification of the third-parties, the Panel will proceed based on the assumption that the third-parties are unrelated to Complainant. Complainant does assert that Respondent receives click-through fees from the hyperlinks featured on the resolving websites. The Panel finds Respondent’s use of confusingly similar disputed domain names to profit from the receipt of click-through fees 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 to Policy ¶ 4(c)(iii). See WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy); see also Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does 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).”).
After Complainant contacted Respondent about Respondent’s registration of the <aolanswers.co> domain name, Respondent offered to sell the disputed domain name to Complainant for 1,800 dollars. The Panel infers that such an amount exceeds Respondent’s registration costs. The Panel finds that Respondent’s offer to sell the disputed domain name for more than Respondent’s out-of-pocket costs is further evidence of Respondent’s lack of rights and legitimate interests under Policy ¶ 4(a)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
As noted above, Respondent offered to sell the <aolanswers.co> domain name to Complainant for an amount that the Panel assumes is greater than Respondent’s registration costs. The Panel determines that Respondent’s offer to sell the disputed domain names constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name); see also Neiman Marcus Group, Inc. v. AchievementTec, Inc., FA 192316 (Nat. Arb. Forum Oct. 15, 2003) (finding the respondent’s offer to sell the domain name for $2,000 sufficient evidence of bad faith registration and use under Policy ¶ 4(b)(i)).
Respondent uses its <aolanswers.co>, <aolanswers.net>, and <yellowpagesaol.com> domain names to resolve to websites that feature hyperlinks that resolve to third-party websites. Internet users interested in Complainant will likely become confused as to Complainant’s association with the disputed domain names and resolving websites. Complainant contends, and the Panel infers, that Respondent receives click-through fees from the aforementioned hyperlinks. The Panel concludes that Respondent’s use of the disputed domains constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites); see also The Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For Sale, FA 857581 (Nat. Arb. Forum Jan. 4, 2007) (holding that the respondent’s use of the disputed domain name to maintain a pay-per-click site displaying links unrelated to the complainant and to generate click-through revenue suggested bad faith registration and use under Policy ¶ 4(b)(iv)).
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <aolanswers.co>, <aolanswers.net>, and <yellowpagesaol.com> domain names be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: November 30, 2010
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