national arbitration forum

 

DECISION

 

AOL Inc. v. Xiaodong Peng

Claim Number: FA1203001432947

 

PARTIES

Complainant is AOL Inc. (“Complainant”), represented by James R. Davis of Arent Fox LLP, Washington, D.C., USA.  Respondent is Xiaodong Peng (“Respondent”), China.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <uffingtonpost.com> and <huffingtonpostt.com>, registered with GoDaddy.com, Inc.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electron-ically on March 5, 2012; the National Arbitration Forum received payment on March 5, 2012.

 

On March 6, 2012, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <uffingtonpost.com> and <huffingtonpostt.com> domain names are registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names.  GoDaddy.com, Inc. has verified that Re-spondent 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 March 7, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 27, 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@uffingtonpost.com and postmaster@huf-fingtonpostt.com.  Also on March 7, 2012, 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 April 6, 2012, 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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

 

Complainant owns The Huffington Post and TheHuffingtonPost.com, which provides global news and information.

 

Complainant has rights in the service mark THE HUFFINGTON POST through its registration of the mark with the Unites States Patent and Trademark Office (“USPTO”) (Reg. No. 3,095,331, registered May 23, 2006).

 

Respondent registered the <uffingtonpost.com> domain name on January 9, 2010, and the <huffingtonpostt.com> domain name on March 23, 2010.

 

Respondent’s domain names resolve to websites containing adult-oriented content, as well as pay-per-click prize promotion schemes.

 

Respondent is not affiliated with or sponsored by Complainant, and Respondent does not have authorization to use Complainant’s marks in any way.

 

Respondent’s domain names are confusingly similar to Complainant’s mark.

 

Respondent’s domain names are characteristic of bad faith typo-squatting.

 

Respondent had actual knowledge of Complainant’s rights in the mark when it registered the disputed domain names in bad faith.

 

B. Respondent

 

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

(1)  the domain names registered by Respondent are confusingly similar to a service mark in which Complainant has rights; and

(2)  Respondent has no rights to or legitimate interests in respect of the domain names; and

(3)  the same domain names were registered and are being used by Respondent in bad faith.

 

DISCUSSION

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."

 

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 can-celled 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.

 

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed represent-ations 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.”

 

Identical and/or Confusingly Similar

 

Complainant has rights in the service mark THE HUFFINGTON POST under Policy ¶ 4(a)(i) through its registration of the mark with a national trademark authority, the USPTO.  See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007), and Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005), both finding that registration of a mark with the USPTO establishes a complainant’s rights in that mark.  

 

The domain names <uffingtonpost.com> and <huffingtonpostt.com> are con-fusingly similar, and nearly identical, to Complainant’s THE HUFFINGTON POST mark, but for the addition of the generic top-level domain (“gTLD”) “.com.” The alterations made to the mark in forming the contested domain names do not avoid a finding of confusing similarity under the standards of Policy ¶ 4(a)(i). See State Farm Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730 (Nat. Arb. Forum June 15, 2000) (finding the domain name <statfarm.com> confusingly similar to a complainant’s STATE FARM mark);  see also WestJet Air Ctr., Inc. v. W. Jets LLC, FA 96882 (Nat. Arb. Forum Apr. 20, 2001) (finding the <westjets.com> domain name confusingly similar to a complainant’s WEST JET AIR CENTER mark).  Further see 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 of the mark of another in forming a domain name and the addition of a gTLD do not establish distinctiveness from that complainant’s mark under Policy ¶ 4(a)(i));  and see Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002):

 

[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.

 

Finally, see Valpak Direct Mktg. Sys., Inc. v. Manila Indus., Inc., D2006-0714 (WIPO Aug. 17, 2006) (finding the <vallpak.com> domain name to be confusingly similar to the VALPAK mark under Policy ¶ 4(a)(i)).

 

The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must first make out a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):

 

Complainant must first make a prima facie showing that Respond-ent does not have rights or legitimate interest in the subject domain names, which burden is light.  If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.

 

Complainant has made a sufficient prima facie showing under this head of the Policy.  Therefore, and because Respondent has failed to respond to the alle-gations of the Complaint filed in this proceeding, we are free to conclude that Respondent has no rights to or legitimate interests in any of the contested domain names.  See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000), and Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000), both holding that, where a respondent fails to respond to a UDRP Complaint, a panel may draw the inference that that respondent does not have rights to or legitimate interests in a 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 names which are cognizable under the Policy.

 

We begin by noting that Complainant alleges, and Respondent does not deny, that Respondent does not have authorization from Complainant to use the mark THE HUFFINGTON POST in any manner and is not commonly known by either of the disputed domain names.  Moreover, the pertinent WHOIS information for both domain names identifies the registrant of the domain names only as “Xiaodong Peng,” which does not resemble either of the domain names.  On this record, we conclude that Respondent has not been commonly known by the disputed domain names, and so has no rights to or legitimate interests in either of the domain names under Policy ¶ 4(c)(ii).  See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that a respondent failed to establish rights to and legitimate interests in the <emitmortgage.com> domain name where that respondent was not authorized to register domain names featuring a complainant’s mark and failed to submit evidence that it was commonly known by that disputed domain name);  see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (con-cluding that a respondent was not commonly known by the <coppertown.com> domain name, and so had no rights to or legitimate interests in that domain name under Policy ¶ 4(c)(ii), where there was no evidence in the record, including the relevant WHOIS information, suggesting that that respondent was commonly known by the disputed domain name).

 

We next observe that Complainant asserts, without objection from Respondent, that Respondent’s use of the <uffingtonpost.com> and <huffingtonpostt.com> domain names is not a bona fide offering of goods or services, nor is it a legiti-mate noncommercial or fair use, in that the domain names link to commercial websites that provide adult- oriented content, as well as pay-per-click prize promotion schemes.  In the circumstances described in the Complaint, we may comfortably presume that Respondent receives income from the operation of the resolving websites. This use of the disputed domain names is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommer-cial or fair use under Policy ¶ 4(c)(iii).  See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003):

 

Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Re-spondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).

 

See also Isleworth Land Co. v. Lost In Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (finding that a respondent’s use of its domain name to link un-suspecting Internet traffic to an adult oriented website did not constitute a bona fide offering of goods or services or a noncommercial or fair use).  

 

In addition, we are satisfied from the Complaint that Respondent is engaged in typo-squatting, as is demonstrated by the fact that adding and deleting small portions of the mark THE HUFFINGTON POST to form the disputed domain names mimics common typographical errors made by Internet users intending to enter Complainant’s mark into a web browser.  Typo-squatting is itself evidence that Respondent lacks rights to or legitimate interests in the domain names under Policy ¶ 4(a)(ii). See, for example, Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (concluding that by registering the <microssoft.com> domain name, a respondent had “engaged in typosquatting, which provides additional evidence that respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”);  see also IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that a respondent lacked rights to and legitimate interests in disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x’ instead of the letter ‘c’”).

 

Thus the Panel finds that Policy 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

It is evident from the record that Respondent registered the <uffingtonpost.com> and <huffingtonpostt.com> domain names with the intent of confusing consumers who seek Complainant’s services on the Internet by virtue of the similarity be-tween the domain names and Complainant’s THE HUFFINGTON POST mark.  And it is equally evident that Registrant intends to profit from that confusion.  This demonstrates that Respondent registered and uses the domain names in bad faith within the contemplation of Policy ¶ 4(b)(iv).  See MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that a respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking a complainant’s website to its own website for commercial gain, where that evidently profited from the diversion scheme); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”)

 

We have already concluded that the domain names <uffingtonpost.com> and <huffingtonpostt.com> are products of Respondent’s typo-squatting, intended to take advantage of Internet users’ web browser spelling errors. Typo-squatting is independent evidence of bad faith registration and use of the contested domain names under Policy ¶ 4(b)(iv). See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (finding bad faith registration and use of the <microssoft.com> domain name as it merely mis-spelled a complainant’s MICROSOFT mark); see also Dermalogica, Inc. v. Domains to Develop, FA 175201 (Nat. Arb. Forum Sept. 22, 2003) (finding that the <dermatalogica.com> domain name was a “simple misspelling” of a com-plainant's DERMALOGICA mark which indicated typo-squatting, and, therefore, bad faith registration and use of the domain name under Policy 4 ¶ (a)(iii)).

 

For these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ (a)(iii).

 

DECISION

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 domain names <uffingtonpost.com> and <huffingtonpostt.com> be TRANSFERRED forthwith from Respondent to Complainant.

 

 

Terry F. Peppard, Panelist

Dated:  April 20, 2012

 

 

 

 

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