AOL LLC v Nathan Joseph a/k/a Mainstream Advertising
Claim Number: FA0912001298612
Complainant is AOL LLC (“Complainant”), represented by James R. Davis, of Arent Fox LLP, Washington D.C., USA. Respondent is Nathan Joseph a/k/a Mainstream Advertising (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <mapques.com>, registered with Moniker.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 11, 2009; the National Arbitration Forum received a hard copy of the Complaint on December 15, 2009.
On December 15, 2009, Moniker confirmed by e-mail to the National Arbitration Forum that the <mapques.com> domain name is registered with Moniker and that Respondent is the current registrant of the name. Moniker has verified that Respondent is bound by the Moniker 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 December 22, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 11, 2009 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@mapques.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 20, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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." 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 makes the following assertions:
1. Respondent’s <mapques.com> domain name is confusingly similar to Complainant’s MAPQUEST mark.
2. Respondent does not have any rights or legitimate interests in the <mapques.com> domain name.
3. Respondent registered and used the <mapques.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, AOL LLC, holds registrations for the MAPQUEST mark in association with its offering Internet-based maps, geographical information, and travel-related products. Complainant owns numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the MAPQUEST mark (e.g., Reg. No. 2,129,378 issued January 13, 1998).
Respondent registered the <mapques.com> domain name on December 11, 2005. Respondent’s disputed domain name resolves to a website that advertises and provides geographical services in direct competition with Complainant.
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."
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.”).
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.
Complainant owns multiple trademark registrations for the
MAPQUEST mark with the USPTO (e.g.,
Reg. No. 2,129,378 issued January 13, 1998).
The Panel finds Complainant has established rights in the MAPQUEST mark
for purposes of Policy ¶ 4(a)(i) through its trademark
registrations with the USPTO. See Automotive Racing Products, Inc.
v. Linecom, FA 836787 (Nat. Arb. Forum Dec. 21, 2006) (finding that the
Complainant’s federal trademark registration established its rights in the mark
under Policy ¶ 4(a)(i)); see also
Complainant argues that Respondent’s disputed domain name is confusingly similar to Complainant’s MAPQUEST mark pursuant to Policy ¶ 4(a)(i). Respondent’s disputed domain name contains a misspelled version of Complainant’s MAPQUEST mark by deleting the letter “t” and adds the generic top-level domain (“gTLD”) “.com.” The Panel finds the omission of one letter and addition of a gTLD, fails to distinguish the disputed domain name from the complainant’s mark. 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, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks); 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). Therefore, the Panel finds Respondent’s disputed domain name is confusingly similar to Complainant’s MAPQUEST mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges Respondent lacks rights and legitimate
interests in the disputed domain name. Once Complainant has put forth a prima facie case, the burden shifts to Respondent to demonstrate
its rights or legitimate interests in the disputed domain name pursuant to
Policy ¶ 4(c). The Panel finds
that Complainant has adequately established a prima facie case in these proceedings. Since Respondent has failed to respond to the
allegations against it, the Panel may assume that Respondent lacks any rights
or legitimate interests in the disputed domain names. The Panel, however, elects to consider the
evidence in record in light of the Policy ¶ 4(c) factors to determine if
Respondent has any rights or legitimate interest in the disputed domain
name. See Intel Corp. v. Macare, FA
660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must
first make a prima facie case that [the] respondent lacks rights and
legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to
show it does have rights or legitimate interests.”); see also Am. Express Co.
v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on
Respondent's failure to respond, it is presumed that Respondent lacks all
rights and legitimate interests in the disputed domain name.”).
Complainant contends that Respondent is not commonly known by the disputed domain name. The Panel finds the WHOIS information lists the registrant as “Nathan Joseph a/k/a Mainstream Advertising,” which demonstrates Respondent is not commonly known by the disputed domain name. Therefore, pursuant to Policy ¶ 4(c)(ii), the Panel finds Respondent is not commonly known by the disputed domain name. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also 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).
Respondent’s disputed
domain name resolves to a website advertising and offering geographic services
that compete with Complainant. The Panel finds that Respondent’s use of
the disputed domain name is not a bona fide offering of goods or
services under Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use of the disputed domain name under Policy ¶
4(c)(iii). See 24 Hour Fitness USA, Inc. v. 24HourNames.com-Quality
Domains For
Complainant
contends Respondent is capitalizing on a common misspelling of Complainant’s MAPQUEST
mark to misdirect Internet users seeking Complainant’s online presence. The Panel finds this constitutes the practice
of typosquatting, which is evidence Respondent lacks rights and legitimate
interests in the disputed
domain names under Policy ¶ 4(a)(ii). See Microsoft Corp. v. Domain Registration
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s disputed domain name resolves to a website promoting
geographic services that compete with Complainant. Such an activity clearly disrupts
Complainant’s business, as Internet users seeking Complainant’s products will
be redirected to competing services. The
Panel finds Respondent has engaged in bad faith registration and use under
Policy ¶ 4(b)(iii).
See
Respondent is presumably commercially benefitting through
its competing use of the disputed domain name.
The Panel finds Respondent’s attempt to commercially profit from
Internet users’ confusion as to Complainant’s affiliation with the disputed
domain name constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See Asbury Auto. Group,
Inc. v.
The Panel has previously concluded Respondent is engaged in the practice of typosquatting through its use of the confusingly similar disputed domain name. The Panel finds this practice is evidence by itself of Respondent’s bad faith registration and use under Policy ¶ 4(a)(iii). See, e.g., Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005) (finding that the respondent’s registration and use of the <nextell.com> domain name was in bad faith because the domain name epitomized typosquatting in its purest form). Therefore, the Panel finds that Respondent has engaged in bad faith registration and use under Policy ¶ 4(a)(iii). See 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 the complainant's DERMALOGICA mark which indicated typosquatting and bad faith pursuant to Policy 4 ¶ (a)(iii)).
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mapques.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: February 3, 2010
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