AOL Inc. v. Hemang Infrasructure Private Limited
Claim Number: FA 1358011
Complainant is AOL Inc. (“Complainant”), represented by James R. Davis of Arent Fox LLP, Washington D.C., USA. Respondent is Hemang Infrasructure Private Limited (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <moveifone.com>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 12, 2010; the National Arbitration Forum received payment on November 12, 2010.
On November 13, 2010, Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com confirmed by e-mail to the National Arbitration Forum that the <moveifone.com> domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com and that Respondent is the current registrant of the name. Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com has verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com 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 November 15, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 6, 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@moveifone.com. Also on November 15, 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 December 8, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <moveifone.com> domain name is confusingly similar to Complainant’s MOVIEFONE mark.
2. Respondent does not have any rights or legitimate interests in the <moveifone.com> domain name.
3. Respondent registered and used the <moveifone.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, AOL Inc., owns multiple trademark registrations for its MOVIEFONE mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,614,876 filed June 22, 2001; issued September 3, 2002). Complainant uses its mark in to provide various online and entertainment services, with a particular focus on the movie industry.
Respondent, Hemang Infrasructure Private Limited, registered the disputed domain name on December 26, 2001. The disputed domain name resolves to a website featuring advertisements and links to third-party sites that compete with Complainant’s MOVIEFONE services.
Complainant submits evidence that Respondent has been the respondent in multiple other UDRP proceedings that resulted in the transfer of the disputed domain names to the respective complainants in those proceedings. See Blu Media Inc. v. Hemang Infrastructure Private Ltd., FA 1305977 (Nat. Arb. Forum Mar. 22, 2010); see also Enterprise Holdings, Inc. v. Hemang Infrastructure Private Ltd., FA 1341222 (Nat. Arb. Forum Oct. 12, 2010).
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 asserts rights based on its registrations of its MOVIEFONE mark with the USPTO (e.g., Reg. No. 2,614,876 filed June 22, 2001; issued September 3, 2002). The Panel finds that Complainant’s registration of the mark with a federal trademark authority such as the USPTO is sufficient evidence of Complainant’s rights in the mark. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”). The Panel also finds that the relevant date of Complainant’s rights in the mark date back to the filing date of Complainant’s USPTO trademark application. See Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”). Additionally, the Panel finds that Complainant has established rights in the mark even though Respondent may reside or operate in a jurisdiction outside where Complainant has registered the mark. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). Therefore, the Panel concludes that Complainant has established rights in the MOVIEFONE mark for the purpose of Policy ¶ 4(a)(i).
Complainant further asserts that Respondent’s <moveifone.com> domain name is confusingly similar to Complainant’s MOVIEFONE mark. Complainant indicates that the only differences between the disputed domain name and Complainant’s mark is that Respondent’s disputed domain name transposes the letters “i” and “e” and adds the generic top-level domain (“gTLD”) “.com.” The Panel concludes that these slight modifications to Complainant’s mark do not serve to distinguish the disputed domain name. See Wyndham IP Corp. v. LaPorte Holdings, Inc., FA 373545 (Nat. Arb. Forum Jan. 17, 2005) (finding the <wynhdam.com> and <wyandham.com> domain names to be confusingly similar to the complainant’s WYNDHAM mark because the domain names merely transposed letters in the mark); 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.”). Accordingly, the Panel finds that Respondent’s <moveifone.com> domain name is confusingly similar to Complainant’s MOVIEFONE mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that the requirements of Policy ¶ 4(a)(i) have been satisfied.
Policy ¶ 4(a)(ii) requires that Complainant first make a prima facie case in support of its allegations that Respondent lacks rights and legitimate interests in the disputed domain name before the burden then shifts to Respondent to provide evidence that it does have rights or legitimate interests in the disputed domain name. The Panel finds that the allegations set forth in the Complaint establish a prima facie case. Respondent’s lack of rights and legitimate interests may also be inferred from Respondent’s failure to submit a Response in these proceedings. 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 the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)); 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.”). However, the Panel will evaluate the evidence on record to determine if Respondent has rights or legitimate interests in the disputed domain name according to Policy ¶ 4(c).
Complainant alleges that Respondent is not licensed or authorized to use any of Complainant’s MOVIEFONE marks and that Respondent is not named or commonly known by the disputed domain name. The WHOIS information supports Complainant’s allegations as it indicates that the registrant of the disputed domain name is “Hemang Infrasructure Private Limited.” The Panel concludes that the evidence in the record, absent anything contrary submitted by Respondent, supports a finding that Respondent is not commonly known by the disputed domain name and consequently lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii). See 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); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant has submitted evidence, in the form of screenshots, that the website resolving from Respondent’s <moveifone.com> domain name contains links to third-parties that compete with Complainant’s entertainment and movie industry services. The screenshot evidence indicates that Respondent displays links entitled, “Theater Tickets,” “Movie Showtimes,” and “Buy Movie Tickets Online,” among others. The Panel finds that Respondent’s use of the disputed domain name to provide links to direct competitors of Complainant is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the respondent was not using the <tesco-finance.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by maintaining a web page with misleading links to the complainant’s competitors in the financial services industry); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (holding that using an identical or confusingly similar domain name to earn click-through fees via sponsored links to a complainant’s competitors 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)).
The Panel finds that the requirements of Policy ¶ 4(a)(ii) have been satisfied.
Complainant submits evidence that Respondent has been the respondent in multiple other UDRP proceedings that resulted in the transfer of the disputed domain names to the respective complainants in those proceedings. See Blu Media Inc. v. Hemang Infrastructure Private Ltd., FA 1305977 (Nat. Arb. Forum Mar. 22, 2010); see also Enterprise Holdings, Inc. v. Hemang Infrastructure Private Ltd., FA 1341222 (Nat. Arb. Forum Oct. 12, 2010). The Panel finds that Respondent’s history of prior UDRP proceedings resulting in the transfer of disputed domain names to the respective complainants in those cases is evidence of Respondent’s pattern of cybersquatting and is evidence of Respondent’s bad faith registration and use under Policy ¶ 4(b)(ii). See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants); see also Arai Helmet Americas, Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005 ((finding that “Respondent has registered the disputed domain name, <aria.com>, to prevent Complainant from registering it” and taking notice of another UDRP proceeding against the respondent to find that “this is part of a pattern of such registrations”).
Complainant has argued that Respondent’s disputed domain name resolves to a website featuring competing links to third-parties that offer entertainment and movie industry services similar to those offered by Complainant under its MOVIEFONE mark. The Panel presumes that Respondent receives revenue, in the form of click-through fees, from these displayed links. The Panel finds that Respondent can be considered a competitor of Complainant and, as such, that Respondent’s registration of the disputed domain name constitutes a disruption of Complainant’s business and is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding that the respondent registered the domain name in question to disrupt the business of the complainant, a competitor of the respondent).
As established, Respondent’s disputed domain name resolves to a website featuring links to third-parties that offer services similar to those Complainant offers under its MOVIEFONE mark. The Panel presumes that Respondent receives click-through fees from the displayed links. Therefore, the Panel can conclude that Respondent registered the disputed domain name in an attempt to intentionally attract Internet users to Respondent’s website, for Respondent’s commercial gain, by creating a likelihood of confusion as to Complainant’s affiliation with the disputed domain name, resolving website and displayed links. Consequently, the Panel concludes that Respondent has demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (holding that the use of a confusingly similar domain name to display links to various third-party websites demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).
The Panel finds that the requirements of Policy ¶ 4(a)(iii) have been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <moveifone.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: December 20, 2010
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