AOL Inc. v. RGS Tech Support aka Pawan Raghav
Claim Number: FA1309001521266
Complainant is AOL Inc. (“Complainant”), represented by James R. Davis of Arent Fox LLP, Washington, D.C., USA. Respondent is RGS Tech Support aka Pawan Raghav (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <aolmailsupport.net>, registered with PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 25, 2013; the National Arbitration Forum received payment on September 25, 2013.
On September 26, 2013, PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM confirmed by e-mail to the National Arbitration Forum that the <aolmailsupport.net> domain name is registered with PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM and that Respondent is the current registrant of the name. PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM has verified that Respondent is bound by the PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM 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 September 26, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 16, 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@aolmailsupport.net. Also on September 26, 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 October 21, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant, AOL Inc., uses its AOL mark in connection with its business of offering computer services, including Internet services, email support services, and the leasing of access time to computer databases, networks, and computerized research and reference materials in the fields of business, finance, news, weather, sports, and other topics.
Complainant is the owner of the AOL mark through registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,977,731 registered June 4, 1996) as well as with numerous other registries worldwide.
The <aolmailsupport.net> domain name is confusingly similar to Complainant’s AOL mark because the domain name fully incorporates the mark and merely adds the generic top-level domain “.net” as well as the phrase “mail support,” which is descriptive of services that Complainant provides under its AOL mark.
Respondent is not commonly known as <aolmailsupport.net> because the WHOIS information identifies the registrant of the domain name as “RGS Tech Support aka Pawan Raghav” and Complainant has not authorized Respondent to use its AOL mark in a domain name.
Respondent’s use of the disputed domain name is not protected as a bona fide offering of goods or services or a legitimate noncommercial or fair use, because Respondent is using the disputed domain name to provide AOL technical support services that directly compete with the technical support services offered by Complainant.
By blatantly and prominently displaying Complainant’s mark and triangle on the at-issue website, Respondent is also using the <aolmailsupport.net> domain name to pass itself off as Complainant, which is also not protected as a bona fide offering of goods or services or a legitimate noncommercial or fair use.
By appropriating Complainant’s AOL mark and the descriptive phrase “mail support,” the disputed domain name targets customers seeking Complainant’s mail support services and diverts them to Respondent’s own website which provides competing services. Thus, Respondent has demonstrated bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(iii).
Together, the disputed domain name and its resolving website create the false impression that the website is operated by Complainant. Respondent is presumably profiting from this confusion in the form of increased business to its commercial website. Accordingly, Respondent has demonstrated bad faith registration and use of the <aolmailsupport.net> domain name under Policy ¶ 4(b)(iv).
Respondent is using the disputed domain name to pass itself off as Complainant, which further demonstrates Respondent’s bad faith registration and use of the disputed domain name under Policy ¶ 4(a)(iii).
Respondent registered the domain name with actual notice of Complainant and its AOL mark, which tends to show Respondent’s bad faith registration and use of the domain name under Policy ¶ 4(a)(iii).
Respondent registered the disputed domain name on January 4, 2013.
B. Respondent
Respondent failed to submit a response in this proceeding.
Complainant owns a USPTO registered trademark for AOL as well as other registrations worldwide.
Respondent is not affiliated with Complainant and had not been authorized to use the AOL mark in any capacity.
Respondent registered the at-issue domain name after Complainant acquired trademark rights in AOL.
Respondent’s <aolmailsupport.net> website displays Complainant’s trademark and logos and offers AOL email support services.
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 at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s registration of the AOL mark with the USPTO sufficiently demonstrates Complainant’s rights in a mark under Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i)”).
The <aolmailsupport.net> domain name fully incorporates Complainant’s AOL mark, concatenates the phrase “mailsupport” thereto, and then appends the top level domain name “.net” to the resulting string. Adding the phrase “mailsupport” to Complainant’s mark only adds to any confusion between the mark and the domain name since the phrase suggests services covered by the AOL trademark. Moreover, appending the necessary top level domain name, here “.net,” is irrelevant for the purpose of confusing similarity analysis. Therefore, the Panel concludes that Respondent’s <aolmailsupport.net> domain name is confusingly similar to Complainant’s AOL mark pursuant to Policy ¶4(i). See, Churchill Ins. Co. Ltd. v. Sutherland FA 1328073 (Nat. Arb. Forum July 13, 2010)(finding that the <churchilllendinggroup.com> domain name was confusingly similar to the complainant’s CHURCHILL mark, because the domain name fully incorporated the complainant’s mark and added the descriptive phrase “lending group”); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the domain name.
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond and since as discussed below there is no evidence supporting a finding pursuant to Policy 4(c) that Respondent has rights or interests in the at-issue domain name, Complainant’s prima facie showing acts conclusively.
WHOIS information identifies “RGS Tech Support aka Pawan Raghav” as the at-issue domain name’s registrant. The record before the Panel contains no evidence that suggests Respondent is otherwise commonly known by the domain name. The Panel thus finds that Respondent is not commonly known by the at-issue domain name for the purposes of 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 Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Respondent is using the disputed domain name to provide AOL technical support services that directly compete with the technical support services offered by Complainant. Respondent’s website offers “Instant AOL Support Service Problems With Your AOL Mail;” “24x7 Online Support by Experts;” and “Support and Repair Services at Affordable Prices” along with a toll-free number. The website also promises: “First Resolution at First Call.” Respondent thus uses the at-issue domain name to offer email support services similar to those provided by Complainant under its AOL mark. Respondent’s use of the domain name to offer services that directly compete with services offered by Complainant does not qualify as a bona fide offering of goods or services under Policy ¶ 4(c)(i), or as a noncommercial or fair use under Policy ¶ 4(c)(iii). See, e.g., Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services). Accordingly, the Panel holds that Respondent’s use of the <aolmailsupport.net> domain name is not protected under Policy ¶¶ 4(c)(i) or 4(c)(iii).
Additionally, Respondent displays Complainant’s AOL mark as well as Complainant’s blue triangle logo on the at-issue website which indicates that Respondent is trying to pass itself off as Complainant. Respondent clearly intends to mislead Internet users into believing that the <aolmailsupport.net> website is somehow affiliated with, or sponsored by, Respondent. Using the domain name in this manner is also neither a Policy ¶ 4(c)(i) bona fide offering of goods or services, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the at-issue domain name. See, e.g., Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent’s attempts to pass itself off as the complainant online, which includes blatant unauthorized use of the complainant’s mark, is evidence that the respondent has no rights or legitimate interests in the disputed domain name); see also Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (finding the respondent’s attempt to pass itself of as 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) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website).
In light of the uncontroverted evidence, Complainant satisfies its burden and conclusively demonstrates Respondent’s lack of rights, and lack of interests, in respect of the at-issue domain name pursuant to Policy ¶ 4(a)(ii).
The at‑issue domain name was registered and is being used in bad faith. As discussed below, Policy ¶ 4(b) circumstance as well as other circumstances are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
Respondent uses the <aolmailsupport.net> domain name to capitalize on the confusion of Internet users who believe the domain name addresses a website affiliated with Complainant. Respondent then exploits the confusion by attempting to sell its competing services to <aolmailsupport.net> website visitors. Using the domain name in this manner demonstrates Respondent’s bad faith under Policy ¶4(c)(iv). 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 that was confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services to those marketed under complainant’s mark);see also Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site). Furthermore, Respondent’s particular use of the confusingly similar domain name is also disruptive to Complainant’s email support business and therefore also demonstrates Respondent’s bad faith under Policy ¶4(b)(iii). See Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)).
Finally, Respondent undoubtedly had knowledge of Complainant’s AOL mark prior to registering the <aolmailsupport.net>domain name. Respondent’s actual knowledge of Complainant’s AOL mark is inferred from the notoriety of the mark, the fact that the domain name incorporates the term “mailsupport” suggesting Complainant’s email related business, and from the fact that Respondent displays Complainant’s AOL trademark and logos on the <aolmailsupport.net> website. Respondent’s prior knowledge of Complainant’s AOL mark shows that Respondent registered the at-issue domain name in bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name"); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <aolmailsupport.net> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: October 22, 2013
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