AOL Inc. v. ZGE
Claim Number: FA1110001411401
Complainant is AOL Inc. (“Complainant”), represented by James R. Davis of Arent Fox LLP, Washington D.C., USA. Respondent is ZGE (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lehuffingtonpost.com>, registered with GoDaddy.com, Inc.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 14, 2011; the National Arbitration Forum received payment on October 13, 2011.
On October 14, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <lehuffingtonpost.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. 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 14, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 3, 2011 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@lehuffingtonpost.com. Also on October 14, 2011, 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 9, 2011, 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 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:
Complainant owns the United States Patent and Trademark Office (“USPTO”) service mark registration for the THE HUFFINGTON POST mark (Reg. No. 3,095,331, registered May 23, 2006).
Complainant uses this mark in connection with the operation of a blog providing global news and information including financial and political commentary.
Respondent registered the disputed <lehuffingtonpost.com> domain name on October 10, 2011.
The disputed domain name resolves to a website which displays links to third-party websites, some of which compete with the business of Complainant by offering financial and political commentary.
Respondent’s <lehuffingtonpost.com> domain name is confusingly similar to Complainant’s THE HUFFINGTON POST mark.
Respondent is not commonly known by the <lehuffingtonpost.com> domain name.
Respondent is not licensed or authorized to use Complainant’s THE HUFFINGTON POST mark in any way.
Respondent’s use of the <lehuffingtonpost.com> domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the domain under Policy ¶ 4(c)(iii).
Respondent does not have any rights to or legitimate interests in the domain name <lehuffingtonpost.com>.
Respondent registered and uses the <lehuffingtonpost.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 trademark 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 representa-tions 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 a UDRP 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 rights in the THE HUFFINGTON POST service mark under Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007), and Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001), both holding that the registration of a mark with a national trademark authority is sufficient to establish rights in that mark under Policy ¶ 4(a)(i) regardless of the location of the parties.
Respondent’s <lehuffingtonpost.com> domain name is confusingly similar to Complainant’s THE HUFFINGTON POST mark. The domain name differs from the mark only in that Respondent has eliminated the spaces from the mark and added the generic top-level domain “.com.” These alterations of the mark in forming the domain name fail to distinguish the disputed domain name under the standards of the Policy. See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007), finding that:
spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name is confusingly similar to the complainant’s mark.
See also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from a complainant’s mark under Policy ¶ 4(a)(i)).
Similarly, the deletion of the definite article “the” from Complainant’s mark in forming the subject domain name is insufficient to distinguish the domain from the mark because the change does diminish the recognizable character of the THE HUFFINGTON POST mark. See, for example, Am. Eagle Outfitters, Inc. v. Admin, FA 473826 (Nat. Arb. Forum June 22, 2005) (finding the <american-eaglestores.com> domain name to be confusingly similar to a complainant’s AMERICAN EAGLE OUTFITTERS mark); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (holding that “the Domain Name is confusingly similar to Complainant’s ‘TESCO PERSONAL FINANCE’ mark in that it merely omits the descriptive term ‘personal.’”).
Finally, Respondent’s addition of the letters “le” to Complainant’s mark in creating the disputed domain name is likewise insufficient the two for purposes of Policy ¶ 4(a)(i). See Am. Online, Inc. v. Oxford Univ., FA 104132 (Nat. Arb. Forum Mar. 19, 2002) (finding several domain names that added the numeral “7” or the term “seven” to a complainant’s AOL mark were confusingly similar to the mark under Policy ¶ 4(a)(i)); see also Am. Online, Inc. v. Tullo, FA 150811 (Nat. Arb. Forum Apr. 15, 2003) (finding the <3daol.com> domain name confusingly similar to a complainant’s AOL mark because “…the addition of the prefix ‘3d’ does nothing to ‘distinguish’ Respondent’s domain name from Complainant’s registered trademarks.”).
Therefore, the Panel finds that the disputed <lehuffingtonpost.com> domain name is confusingly similar to Complainant’s THE HUFFINGTON POST mark pursuant to Policy ¶ 4(a)(i).
Complainant asserts that Respondent does not have rights to or legitimate interests in the disputed domain name. Complainant is obliged by Policy ¶ 4(a)(ii) to make out a prima facie case in support of this assertion, whereupon the burden shifts to Respondent to dispute it. See Domtar, Inc. v. Theriault, FA 1089426 (Nat. Arb. Forum Jan. 4, 2008):
It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.
See also 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 on the point of a respondent’s rights to or legitimate interests in a contested domain name, the burden shifts to that respondent to demonstrate its rights or legitimate interests in the domain.
Complainant has made out the requisite prima facie showing under this head of the Policy, while Respondent has failed to address the allegations of the Complaint. We are therefore entitled to conclude that Respondent has no rights to or legitimate interests in the disputed domain. See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000):
Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.
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.
Nonetheless, we will examine the record before us, in light of the several 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 the disputed domain name which are cognizable under the Policy.
We first note that Complainant alleges, and Respondent does not deny, that Respondent is not commonly known by the <lehuffingtonpost.com> domain name, and that Respondent is not licensed or authorized to use Complainant’s mark in any way. Moreover, the WHOIS record for the <lehuffingtonpost.com> domain name identifies the registrant only as “ZGE,” which does not resemble the disputed domain name. On this record we conclude that Respondent is not commonly known by the disputed domain name so as to have demonstrated that it has rights to or legitimate interests in that domain within the meaning of Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003), and Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006), each holding that a complainant’s claims as to a disputed domain name and the pertinent WHOIS record are persuasive on the question whether a respondent is commonly known by a disputed domain name for purposes of Policy ¶ 4(c)(ii).
We next observe that Complainant alleges, without objection from Respondent, that Respondent’s use of the <lehuffingtonpost.com> domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the domain under Policy ¶ 4(c)(iii). We agree with Complainant’s contentions, and, from the circumstances presented, we presume that Respondent receives economic benefit in the form of click-through fees or similar income from the operation of the resolving website in the manner alleged in the Complaint. This use of the domain to display links to the websites of third-parties who are competing with the business of Complainant for Respondent’s commercial gain does not constitute a bona fide or legitimate use. See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a domain name confusingly similar to the mark of another was 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 also ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting a respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name where that respondent was using the domain to operate a website containing links to various commercial websites competing with the business of a complainant, which the panel found not to be a use in connection with 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)).
The Panel thus finds that the requirements of Policy ¶ 4(a)(ii) are met.
Respondent registered and is using the disputed domain name to divert Internet users from Complainant’s website. This disrupts Complainant’s business, and stands as evidence that Respondent has registered and uses the disputed domain name in bad faith as contemplated in Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) and Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007), both concluding that the use of a domain name which is confusingly similar to the mark of another to display links to third-party websites which are operating in competition with the business of a complainant, is disruptive to that complainant’s business and evidences bad faith registration and use of the subject domain pursuant to Policy ¶ 4(b)(iii).
In addition, because of the confusing similarity between the disputed domain name and Complainant’s THE HUFFINGTON POST mark, it is likely that Internet users seeking Complainant’s website will be confused as to the possibility of Complainant’s sponsorship of or affiliation with Respondent and its <lehuffingtonpost.com> domain name and instead reach the website resolving from that domain. The use of the disputed domain name in this manner stands as evidence that Respondent registered and is using the contested domain in bad faith under Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where a respondent’s domain name resolved to a website that featured links to third-party websites offering services similar to those of a complainant); see also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
For these reasons, the Panel finds that Complainant has satisfied its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <lehuffingtonpost.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: November 23, 2011
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