AOL Inc. v. Kenn Gividen
Claim Number: FA1302001485005
Complainant is AOL Inc. (“Complainant”), represented by James R. Davis of Arent Fox LLP, District of Columbia, USA. Respondent is Kenn Gividen (“Respondent”), Indiana, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <huffingtonposts.com> and <hufingtonpost.com>, registered with GoDaddy.com, LLC.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 13, 2013; the National Arbitration Forum received payment on February 13, 2013.
On February 13, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <huffingtonposts.com> and <hufingtonpost.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 February 13, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 5, 2013 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@huffingtonposts.com, postmaster@hufingtonpost.com. Also on February 13, 2013, 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 March 21, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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
Complainant made the following contentions.
1.Policy ¶ 4(a)(i)
2.Policy ¶ 4(a)(ii)
3.Policy ¶ 4(a)(iii)
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a well known United States company in the communications and related industries, with a subsidiary company named TheHuffingtonPost.com.Inc that publishes The Huffington Post, a well known and prestigious provider of global news and information.
2. Complainant owns registration for THE HUFFINGTON POST trademark with the United States Patent & Trademark Office (“USPTO”). See Reg. No. 2,095,331 registered on May 23, 2006 (filed April 25, 2005)). It also has common law or unregistered trademark rights in THE HUFFINGTON POST dating from at least the time when the launching of The Huffington Post was announced, namely March 11, 2005.
3. Respondent registered the <huffingtonposts.com> domain name on April 21, 2005 and the <hufingtonpost.com> domain name on April 22, 2005. The domain names are used to resolve to a website carrying news and information drawn from The Huffington Post and its competitors.
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 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.
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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark. Complainant claims that it owns registration for THE HUFFINGTON POST mark with the USPTO. See Reg. No. 2,095,331 registered on May 23, 2006 (filed April 25, 2005). The Panel finds that the USPTO registration of the trademark establishes Complainant’s rights back to the filing date of April 25, 2005. 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”).
Complainant also argues that it founded TheHuffingtonPost.com, LLC, on March 11, 2005, with significant media coverage due in part to the fact that its founder, Arriana Huffington, is a celebrity. Complainant avers that starting on March 11, 2005 and continuing to today, it has spent considerable time and money promoting THE HUFFINGTON POST mark and its associated websites. Complainant believes that Respondent took advantage of the period between the initial media reports and the filing of the trademark registration by registering both of the disputed domain names. As the Panel agrees that this evidence illustrates Complainant’s common law rights in THE HUFFINGTON POST mark, it concludes that Complainant has Policy ¶ 4(a)(i) rights in that mark dating back at least to the March 11, 2005 announcement. See Cybertania, Inc. v. Right Mobile, Inc. Domain Manager, FA 1015411 (Nat. Arb. Forum Aug. 6, 2007) (finding that a complainant had acquired secondary meaning sufficient to establish common law rights in a mark pursuant to Policy ¶ 4(a)(i) where the complainant had invested “enormous resources” in promoting the goods and services available under the complainant’s mark).
The next question that arises is whether the disputed domain name is identical or confusingly similar to the THE HUFFINGTON POST mark.
Complainant argues that Respondent has registered two domain names that are misspellings of THE HUFFINGTON POST mark, and more specifically are misspellings of the <huffingtonpost.com> domain name that resolves to Complainant’s website associated with the mark. The Panel notes that both the <huffingtonposts.com> and <hufingtonpost.com> domain names make single character alterations to THE HUFFINGTON POST mark, and both domain names remove the word “the” from the mark. The Panel also notes that both domain names feature the generic top-level domain (“gTLD”) “.com.” The Panel notes that all of the spacing in the mark was removed in forming the domain names. The Panel agrees that neither the addition of a gTLD or the removal of spacing is effective in negating confusing similarity that is otherwise present as it is in this proceeding. 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 [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”). The Panel further agrees that the single character alterations to the spacing of the marks, and the deletion of the word “the” do not help Respondent avoid confusing similarity. See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive); Algemeen Nederlands Persbureau ANP B.V. v. European Travel Network, D2004-0520 (WIPO Sept. 8, 2004) (finding confusing similarity where “[d]istinctive elements of the Complainant’s marks, notably the acronym ANP, are reproduced entirely in the domain name.”). Therefore the Pane concludes that both the <huffingtonposts.com> and <hufingtonpost.com> domain names are confusingly similar to THE HUFFINGTON POST mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. 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 UDRP ¶ 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 AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s THE HUFFINGTON POST trademark and to use it in its domain names, making minor spelling alterations and removing the word “the” from the trademark, thus enhancing the confusing similarity between the domain names and the trademark;
(b) Respondent has then used the disputed domain names to resolve to a webpage congratulating the Internet user for visiting the website, and requesting that they purchase the domain name immediately for $12,500 and also to a website that competes with Complainant’s business called “DailyKenn.com.” ;
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d) Complainant avers that Respondent is not named, known as, or otherwise referred to as either of the two disputed domain names. Complainant submits that it has not otherwise licensed Respondent’s use of its mark in domain names. The Panel notes that the disputed domain names are both registered to “Kenn Gividen.” The Panel agrees that based on the evidence, Respondent is not commonly known as 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);
(e) The Panel also notes that both of the domain names include a webpage congratulating the Internet user for visiting the website, and requesting that they purchase the domain name immediately for $12,500. See Complainant’s Ex. G. Moreover, the evidence suggests that the domain names take the Internet user to a website that competes with Complainant’s business called “DailyKenn.com.” See id. This is because it carries news and information from The Huffington Post and its competitors. The Panel agrees that in neither case does a Policy ¶ 4(c)(i) bona fide offering, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use arise. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“UDRP precedent is clear that auctioning domains does not constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use of domains.”); Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006) (holding that the respondent’s use of the <ftdflowers4less.com> domain name to sell flowers in competition with the complainant did not give rise to any legitimate interest in the domain name).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent’s bad faith is evidenced by the fact that Respondent is willing to sell the <huffingtonposts.com> domain name for $25,000.00 and the <hufingtonpost.com> domain name for $12,500.00. The Panel notes that these assertions are supported by the record. See Complainant’s Ex. G. The Panel thus agrees that Respondent’s decision to register and use the disputed domain names in the clear hope of reaping substantial financial reward constitutes bad faith use and registration under Policy ¶ 4(b)(i). See Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002) ("[w]hat makes an offer to sell a domain [name] bad faith is some accompanying evidence that the domain name was registered because of its value that is in some way dependent on the trademark of another, and then an offer to sell it to the trademark owner or a competitor of the trademark owner").
Secondly, Complainant also argues that Respondent’s bad faith registration and use is evident through the fact that two infringing domain names are present in this current dispute. The Panel agrees that Respondent’s registration of two domain names that are confusingly similar to THE HUFFINGTON POST mark is evidence of Policy ¶ 4(b)(ii) bad faith use and registration. See Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)).
Thirdly, Complainant also argues that Respondent is using the domain names to disrupt Complainant’s business. Complainant maintains that Respondent accomplishes this by using the domain names to operate a new aggregation website, in a somewhat similar fashion to Complainant’s operations under THE HUFFINGTON POST mark. Complainant further contends that Respondent also begs Internet users to click on the sponsored hyperlinks, as that way Internet users can support Respondent. The Panel notes that the record indicates that the domain names appear to resolve to a website dedicated to providing snippets of news headlines, while asking the Internet user to support Respondent’s sponsors. See Complainant’s Ex. G. The Panel finds that it is Policy ¶ 4(b)(iii) bad faith commercial disruption for Respondent to use the disputed domain names to operate news websites that compete directly with Complainant. See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Fourthly, Complainant asserts that Respondent has registered and used the domain names to confuse Internet users as to the source of the content in order to exploit a commercial profit. Complainant notes that both domain names can resolve to subsidiary websites stating that the domain name is up for auction. The Panel notes that both of the disputed domain names primarily resolve to Respondent’s website, dedicated to providing news content in competition with Complainant. See Complainant’s Ex. G. The Panel agrees that given the fact that Respondent uses the confusingly similar domain names to solicit news content to the Internet user, there is a potential that Internet users will mistakenly associate the content with Complainant, and click on the advertisements in belief that they are supporting Complainant. See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark). Therefore the Panel concludes that Respondent registered and used the domain names in bad faith under Policy ¶ 4(b)(iv).
Fifthly, Complainant argues that Respondent’s bad faith is evident in that he opportunistically took advantage of the pre-launch publicity of THE HUFFINGTON post mark in registering these domain names. The Panel notes that the domain names were registered a few weeks after the March 11, 2005 announcement, but prior to the April 2005 application was filed with the USPTO. In these circumstances, previous panels have found that a respondent may be engaging in opportunistic bad faith, exploiting a recent or current event and taking advantage of domain name registration processes to embed a new idea or product in their own domain names. See Reuters Ltd. v. Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000) (finding that the respondent demonstrated bad faith where the respondent was aware of the complainant’s famous mark when registering the domain name as well as aware of the deception and confusion that would inevitably follow if he used the domain names); Sota v. Waldron, D2001-0351 (WIPO June 18, 2001) (finding that the respondent’s registration of the <seveballesterostrophy.com> domain name at the time of the announcement of the Seve Ballesteros Trophy golf tournament “strongly indicates an opportunistic registration”). As the Panel agrees it finds that Respondent engaged in opportunistic bad faith under Policy ¶ 4(a)(iii). The Panel agrees with Complainant regarding Respondent's actual knowledge and concludes that Respondent registered the <huffingtonposts.com> and <hufingtonpost.com> domain names in bad faith according to Policy ¶ 4(a)(iii). See Immigration Equality v. Brent, FA 1103571 (Nat. Arb. Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii).").
Sixthly, Complainant argues that Respondent had actual knowledge of Complainant’s rights in the mark. Complainant bases this assertion on the fact that the domain names are confusingly similar to THE HUFFINGTON POST mark and were registered within days of the official unveiling of TheHuffingtonPost.com, LLC. The Panel accepts this submission.
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain names using the THE HUFFINGTON POST mark and in view of the conduct that Respondent engaged in when using the domain names, Respondent registered and used the disputed domain names in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <huffingtonposts.com> and <hufingtonpost.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC,
Panelist
Dated: March 25, 2013
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