AOL Inc. v. NA
Claim Number: FA1305001501451
Complainant is AOL Inc. (“Complainant”), represented by James R. Davis of Arent Fox LLP, Washington, D.C., USA. Respondent is NA (“Respondent”), Ohio, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <aimchatrooms.net>, registered with WILD WEST DOMAINS, LLC.
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 electron-ically on May 23, 2013; the National Arbitration Forum received payment on May 23, 2013.
On May 28, 2013, WILD WEST DOMAINS, LLC confirmed by e-mail to the Nat-ional Arbitration Forum that the <aimchatrooms.net> domain name is registered with WILD WEST DOMAINS, LLC and that Respondent is the current registrant of the name. WILD WEST DOMAINS, LLC has verified that Respondent is bound by the WILD WEST DOMAINS, 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 May 29, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 18, 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@aimchatrooms.net. Also on May 29, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail addres-ses 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 June 26, 2013, pursuant to Complainant's request to have the dispute decid-ed 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 Not-ices, 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
Complainant uses the AIM mark to advertise and market services in the comput-er, entertainment, and online services industries, including instant messaging (“IM”) and chat room services.
Complainant’s AIM and related marks have become famous among internet users and the purchasing public.
Complainant holds a registration for the AIM mark, on file with the United States Patent and Trademark Office (“USPTO”) as Reg. No. 2,423,367, registered on January 23, 2001.
Respondent registered the disputed <aimchatrooms.net> domain name on November 15, 2010.
The domain name is confusingly similar to Complainant’s AIM mark.
Respondent has not been commonly known by the disputed domain name.
Complainant has neither licensed nor otherwise authorized Respondent’s use of the AIM mark.
Respondent uses the <aimchatrooms.net> domain name to resolve to a website that references Complainant, makes prominent use of Complainant’s AIM mark and offers software downloads for instant messaging services, including those offered by Complainant’s commercial competitors.
Respondent has no rights to or legitimate interests in the subject domain name.
Respondent receives income, in the form of click-through fees, tracing to the visits of Internet users to the websites resolving from the links featured on the website tied to the contested domain name.
Respondent knew of Complainant and its rights in the AIM mark when it regis-tered the disputed domain name.
Respondent registered and uses the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
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 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 Verti-cal 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 reason-able 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.”
Complainant has rights in the AIM mark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006):
Complainant has established rights in the … mark through registration of the mark with the USPTO.
Turning to the core question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <aimchatrooms.net> domain name is confusingly similar to Complainant’s AIM mark. The domain name contains the entire AIM mark, merely adding the generic term “chatrooms,” which relates to an aspect of Complainant’s business, and the generic Top Level Domain (“gTLD”) “.net.” These alterations of the mark, made in forming the domain name, do not save the domain name from the realm of confusing similarity under the standards of the Policy. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding a respondent’s <amextravel.com> domain name confusingly similar to a UDRP complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that a respondent failed to differentiate the <aimprofiles.com> domain name from a complainant’s AIM mark by merely adding the term “profiles”).
Finally, a gTLD is of no significance to a Policy ¶ 4(a)(i) analysis because every domain name requires a gTLD. See, for example, Katadyn N. Am. v. Black Mountain Stores, FA 520677 (Nat. Arb. Forum Sept. 7, 2005):
[T]he addition of the generic top-level domain (gTLD) “.net” is irrelevant for purposes of determining whether a domain name is identical to a mark.
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 make 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 re-spondent 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 out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to deter-mine 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 begin by noting that Complainant asserts, and Respondent does not deny,
that Respondent has not been commonly known by the <aimchatrooms.net> domain name, and that Complainant has neither licensed nor otherwise auth-orized Respondent’s use of the mark. Moreover, the pertinent WHOIS informa-tion identifies the domain name registrant only as “NA,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the contested domain name so as to have demonstrated that it has rights to or legitimate interests in it within the contemplation of Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (con-cluding that a respondent was not commonly known by the <lilpunk.com> domain name, and so had neither rights to nor legitimate interests in that domain name as described in Policy ¶ 4(c)(ii), where there was no evidence in the record, in-cluding the relevant WHOIS information, showing that that respondent was commonly known by that domain name, and where a complainant asserted that it did not license or otherwise authorize that respondent’s use of its mark in a domain name).
We next observe that Complainant contends, without objection from Respondent, that Respondent uses the contested domain name to profit from the receipt of click-through fees owing to the visits of Internet users to the websites of Com-plainant’s commercial competitors via links carried on Respondent’s resolving website. This use of the disputed domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial fair use of the domain name under Policy ¶¶ 4(c)(i) and (iii). See Fox News Network, LLC v. Reid, D2002-1085 (WIPO Feb. 18, 2003) (finding that a respondent’s use of a disputed domain name to generate revenue via advertisement and affiliate fees is not a bona fide offering of good or services); see also Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”)
The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
We are persuaded from a review of the evidence that Respondent’s employment of the contested <aimchatrooms.net> domain name, as alleged in the Complaint, disrupts Complainant’s business. This demonstrates bad faith in the registration and use of the domain name under 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 a respondent registered and used a disputed domain name in bad faith pur-suant to Policy ¶ 4(b)(iii) where that respondent used the domain name to adver-tise goods and services of a UDRP complainant’s competitors, thereby disrupting that complainant’s business).
We are likewise convinced from the evidence that Respondent’s use of the dis-puted <aimchatrooms.net> domain name, which is confusingly similar to Com-plainant’s AIM mark, to profit from the confusion caused among Internet users as to the possibility of Complainant’s association with the website resolving from the domain name, stands as proof of bad faith registration and use of the domain name as provided in Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003):
Respondent's … 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.’
Finally under this head of the Policy, we conclude from the evidence that Re-spondent knew of Complainant and rights in the AIM mark when it registered the contested domain name. This further shows bad faith registration of the domain name. See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Stud-ios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that a respondent reg-istered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
The Panel thus finds that Complainant has met 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 shall be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <aimchatrooms.net> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: July 8, 2013
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