America Online, Inc. v. David
Claim Number: FA0202000104980
PARTIES
The
Complainant is America Online, Inc.,
Dulles, VA (“Complainant”) represented by James
R. Davis, II, of Arent, Fox,
Kintner, Plotkin & Kahn. The
Respondent is David, Fresno, CA
(“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <mapquewst.com> and <netscapoe.com>, registered with Intercosmos Media Group, Inc.
PANEL
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.
Judge
Karl V. Fink as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (“the Forum”)
electronically on February 21, 2002; the Forum received a hard copy of the
Complaint on February 25, 2002.
On
February 22, 2002, Intercosmos Media Group, Inc. confirmed by e-mail to the
Forum that the domain names <mapquewst.com> and <netscapoe.com> are registered with Intercosmos Media Group,
Inc. and that the Respondent is the current registrant of the names. Intercosmos Media Group, Inc. has verified
that Respondent is bound by the Intercosmos Media Group, Inc. registration
agreement and has thereby agreed to resolve domain-name disputes brought by
third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution
Policy (the “Policy”).
On
February 25, 2002, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of March 18, 2002 by which Respondent could file a Response to the Complaint,
was transmitted to Respondent via e-mail, post and fax, to all entities and
persons listed on Respondent’s registration as technical, administrative and billing
contacts, and to postmaster@mapquewst.com and postmaster@netscapoe.com by
e-mail.
A
timely Response was received and determined to be complete on March 18, 2002.
On March 22, 2002, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the Forum appointed Judge Karl V.
Fink (Ret.) as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant
America Online, Inc. and its affiliated entities (collectively “AOL”), is the
owner of the marks MAPQUEST and NETSCAPE (collectively “AOL Marks”). AOL owns numerous trademark registrations
worldwide for its AOL Marks.
AOL
owns a federal trademark registration for the mark MAPQUEST.COM, and a pending
application for NETSCAPE.COM.
On
November 21 and 22, 2001, many years after AOL’s adoption and first use of its
AOL Marks, and long after the AOL Marks became well-known and famous,
Respondent registered the domain names <netscapoe.com> and <mapquewst.com>
(collectively the “Infringing Domains”) for the bad faith purpose of profiting
from the goodwill AOL has created in its AOL Marks. Specifically, Respondent uses the Infringing Domains to route to
a commercial Web site and provides pornographic content and gambling services.
The
Infringing Domains are confusingly similar or nearly identical to the AOL
Marks. In fact, except for the
additional of a single letter, the domains are identical to the AOL Marks.
Respondent’s
bad faith registration of the Infringing Domains is evidenced by the fact that
he registered the domains many years after the AOL Marks had become famous and
well-known to customers.
Respondent’s
bad faith use of the Infringing Domains is demonstrated by the Web site that
Respondent uses in connection with the domains. Respondent uses the Infringing Domains to route to a commercial
pornographic and gambling site that makes no reference whatsoever to the
MAPQUEST or NETSCAPE services.
B.
Respondent
The
names <netscapoe.com> and <mapquewst.com> were
registered as a direct result of a business plan. They are not related or associated with <netscape.com>
or <mapquest.com>.
FINDINGS
For the reasons set forth below, the
Panel finds that Complainant has proven the required elements to have each of
the names transferred to Complainant.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly
similar to a trademark or service mark in which the Complainant has rights;
(2)
the 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.
Identical and/or Confusingly Similar
The Panel finds
that the disputed domain names are
confusingly similar or essentially identical to the MAPQUEST.COM and
NETSCAPE.COM marks, because Respondent merely added a single letter to each of
the two disputed domain names. 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); see also Victoria’s
Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that
misspelling words and adding letters on to words does not create a distinct
mark but is nevertheless confusingly similar with the Complainant’s
marks).
The misspelling of a famous mark does not
diminish the confusingly similar nature between the marks and the disputed
domain names. See Hewlett-Packard Co. v. Zuccarini, FA
94454 (Nat. Arb. Forum May 30, 2000) (finding the domain name
<hewlitpackard.com> to be identical or confusingly similar to
Complainant’s HEWLETT-PACKARD mark); see also Toronto-Dominion Bank v. Karpachev, D2000-1571
(WIPO Jan. 15, 2001) (finding that the
domain names <tdwatergouse.com> and <dwaterhouse.com> are virtually
identical to Complainant’s TD WATERHOUSE name and mark).
Further, the
Panel finds that the disputed domain names <mapquewst.com> and <netscapoe.com> are confusingly similar to Complainant’s
MAPQUEST and NETSCAPE marks since the generic top-level domain name does not
distinguish the disputed domain names from Complainant’s famous marks. See Blue Sky Software Corp. v. Digital Sierra Inc., D2000-0165 (WIPO
Apr. 27, 2000) (holding that the domain name <robohelp.com> is identical
to complainant’s registered ROBOHELP trademark, and that the "addition of
.com is not a distinguishing difference"); see also Busy Body, Inc. v. Fitness Outlet Inc.,
D2000-0127 (WIPO Apr. 22, 2000) (finding that "the addition of the generic
top-level domain (gTLD) name ‘.com’ is . . . without legal significance since
use of a gTLD is required of domain name registrants").
Respondent does
not dispute the confusing similarity between the disputed domain names and
Complainant’s marks.
Complainant has
proven this element.
Rights or Legitimate Interests
The
Panel finds that Respondent’s use of the disputed domain names to divert
Complainant’s customers to its websites offering gambling and pornographic
goods and services is not considered a bona fide offering of goods or services
as outlined by Policy ¶ 4(c)(i). See
Vapor Blast Mfg. Co. v. R & S
Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that
Respondent’s commercial use of the domain name to confuse and divert Internet
traffic is not a legitimate use of the domain name); see also America Online, Inc. v. Tencent Comm. Corp.,
FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that use of Complainant’s
mark “as a portal to suck surfers into a site sponsored by Respondent hardly
seems legitimate”).
The Panel finds that Complainant’s marks have become
so widely known and Respondent has not provided evidence that it is commonly
known as <mapquewst.com> or <netscapoe.com> and therefore,
Respondent cannot satisfy Policy ¶
4(c)(ii). See Victoria’s Secret v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28,
2001) (finding sufficient proof that Respondent was not commonly known by a
domain name confusingly similar to Complainant’s VICTORIA’S SECRET mark because
of Complainant’s well established use of the mark); see also Nike, Inc. v. B. B. de Boer, D2000-1397
(WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one
“would be hard pressed to find a person who may show a right or legitimate
interest” in a domain name containing Complainant's distinct and famous NIKE
trademark).
Respondent
has not claimed that it has any rights or legitimate interest in the disputed
domain names.
Complainant
has proven this element.
Registration and Use in Bad Faith
Based on the
fame attained by Complainant’s marks before Respondent registered the disputed
domain names, the Panel finds that Respondent had knowledge of the marks when
Respondent registered the disputed domain names. Therefore, this is evidence that Respondent registered the
disputed domain names in bad faith. See
Nintendo of Am. Inc v. Pokemon,
D2000-1230 (WIPO Nov. 23, 2000) (finding that Respondent, at the time of
registration, had notice of Complainant’s famous POKÉMON and PIKACHU
trademarks given their extreme popularity); see also Victoria's Secret v. Hardin, FA 96694
(Nat Arb. Forum Mar. 31, 2001) (finding that, in light of the notoriety of
Complainants' famous marks, Respondent had actual or constructive knowledge of
the BODY BY VICTORIA marks at the time she registered the disputed domain name
and such knowledge constituted bad faith).
Respondent has
not disputed Complainant’s allegations on this or any other issue.
Complainant has
proven this element.
DECISION
Complainant
has proven each of the required elements and, therefore, it is ordered that the
domain names, <mapquewst.com> and <netscapoe.com>, be transferred to Complainant.
Judge Karl V. Fink (Ret.) Panelist
Dated: April 10, 2002
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