AOL Inc. v. Michelle Hathaway
Claim Number: FA1112001420616
Complainant is AOL Inc. (“Complainant”), represented by James R. Davis, II of Arent Fox LLP, Washington D.C., USA. Respondent is Michelle Hathaway (“Respondent”), Ohio, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <shoutcastlive.com> and <shoutcastlive.net>, registered with GoDaddy.com, 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 19, 2011; the National Arbitration Forum received payment on December 19, 2011.
On December 19, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <shoutcastlive.com> and <shoutcastlive.net> domain names are registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names. 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 December 20, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 9, 2012 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@shoutcastlive.com, postmaster@shoutcastlive.net. Also on December 20, 2011, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 January 18, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <shoutcastlive.com> and <shoutcastlive.net> domain names are confusingly similar to Complainant’s SHOUTCAST mark.
2. Respondent does not have any rights or legitimate interests in the <shoutcastlive.com> and <shoutcastlive.net> domain names.
3. Respondent registered and used the <shoutcastlive.com> and <shoutcastlive.net> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, AOL Inc., is a large, global, interactive on-line provider of services, including digital audio streaming services and internet radio services. Complainant owns a federal trademark registration with the United States Patent and Trademark Office (“USPTO”) for the SHOUTCAST mark (Reg. No. 2,395,779 registered October 17, 2000). Complainant uses the mark as its brand name in the digital audio streaming services and internet radio services market.
Respondent, Michelle Hathaway, registered the <shoutcastlive.com> and <shoutcastlive.net> domain names on November 14, 2008. The disputed domain names resolve to a website offering links to Complainant’s competitors in the Internet radio and digital music industry.
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 states that it has established rights in the SHOUTCAST mark by registering it with the USPTO (Reg. No. 2,395,779 registered October 17, 2000). Complainant has submitted evidence to verify that the mark is registered and that it is the owner of record. Based upon this evidence, the Panel finds that Complainant has duly registered the mark with the USPTO and as a result has established rights in the SHOUTCAST mark under Policy ¶ 4(a)(i). See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)); see also Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
Complainant also claims that Respondent’s <shoutcastlive.com> and <shoutcastlive.net> domain names are confusingly similar to its SHOUTCAST mark. The disputed domain names include the entire mark, merely adding the generic top-level domain (“gTLD”) “.com” or “.net” along with the generic term “live.” The <shoutcastlive.com> and <shoutcastlive.net> domain names still retain the distinctive characteristics of Complainant’s mark and in the Panel’s opinion are not sufficiently differentiated from Complainant’s mark to remove them from the realm of confusingly similarity under Policy ¶ 4(a)(i). See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element).
The Panel finds that Complainant has established Policy ¶ 4(a)(i).
Complainant has made what the Panel finds is a prima facie case against Respondent. As a result, Respondent now bears the burden of proving that it does have rights or legitimate interests in the disputed domain names. 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)). However, Respondent has failed to file a Response in this matter, which allows the Panel to accept all of Complainant’s allegations, supported by evidence, as true. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, the Panel will still examine the entire record before making any determination with regard to Respondent’s rights or legitimate interests in the disputed domain name in accordance with Policy ¶ 4(c).
Complainant asserts that Respondent is not commonly known by the disputed domain names. There is no evidence in the record that indicates or suggests that Respondent is commonly known by the disputed domain names. The WHOIS information identifies the registrant of the disputed domain names as “Michelle Hathaway.” Based upon the WHOIS information and the lack of other evidence on record, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also 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).
Complainant also asserts that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names. Respondent’s disputed domain names resolve to a website offering links to Internet radio and online digital music services. These services compete directly with Complainant’s own service offerings. Using a disputed domain name to offer links to competing services does not qualify as a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute 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 Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not 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 finds that Complainant has established Policy ¶ 4(a)(ii).
Complainant alleges that Respondent’s disputed domain names disrupt Complainant’s business, demonstrating bad faith registration and use. Respondent offers links to Complainant’s competitors in the Internet radio and digital music industry. Internet users may arrive at Respondent’s website and then click-through to the competing websites. At this point, that user may purchase or utilize a competitor’s services rather than Complainant’s. The Panel finds that this use clearly disrupts Complainant’s business indicating bad faith registration and use of the disputed domain names under Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).
Complainant also alleges that Respondent registered and is using the disputed domain names for its own commercial gain, constituting bad faith registration and use. As mentioned above, Respondent’s website offers links to Complainant’s competitors. Respondent presumably generates revenue by collecting a click-through fee for each Internet users diverted to one of the linked sites. This use equates to registering and using the disputed domain name in bad faith under Policy ¶ 4(b)(iv) because of the commercial nature of the website and Respondent’s intent to gain commercially from the use of Complainant’s mark. See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes); see also 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <shoutcastlive.com> and <shoutcastlive.net> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: January 24, 2012
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