national arbitration forum

 

DECISION

 

AOL Inc. v. Mike Morgan a/k/a MM a/k/a M Morgan ()

Claim Number: FA1009001349260

 

PARTIES

Complainant is AOL Inc. ("Complainant"), represented by James R. Davis of Arent Fox LLP, Washington D.C., USA.  Respondent is Mike Morgan a/k/a MM a/k/a M Morgan () ("Respondent"), California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <aolmusik.com> and <joytiq.com>, registered with Moniker.

 

The domain name at issue is <mapquert.com>, registered with eNom, Inc.

 

PANEL

The undersigned certifies that he 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.

 

Judge Ralph Yachnin, Panelist

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on September 29, 2010; the National Arbitration Forum received payment on September 29, 2010.

 

On September 30, 2010, Moniker, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <aolmusik.com> and <joytiq.com> domain names are registered with Moniker and that Respondent is the current registrant of the names.  Moniker has verified that Respondent is bound by the Moniker 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 29, 2010, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <mapquert.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name.  eNom, Inc. has verified that Respondent is bound by the Moniker, eNom, Inc. 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 October 4, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 25, 2010 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@aolmusik.com, postmaster@mapquert.com and postmaster@joytiq.com.  Also on October 4, 2010, the Written Notice of the Complaint, notifying Respondent of the email 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 November 3, 2010 pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin 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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <aolmusik.com> domain name is confusingly similar to Complainant’s AOL.COM mark.

 

 

Respondent’s <mapquert.com> domain name is confusingly similar to Complainant’s MAPQUEST.COM mark. 

 

Respondent’s <joytiq.com> domain name is confusingly similar to Complainant’s JOYSTIQ marks.

 

 

2.      Respondent does not have any rights or legitimate interests in the  <aolmusik.com>, <mapquert.com> and <joytiq.com> domain names.

 

3.      Respondent registered and used the  <aolmusik.com>, <mapquert.com> and <joytiq.com> domain names in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, AOL Inc., owns the exclusive rights to its AOL.COM, MAPQUEST.COM and JOYSTIQ marks which it uses in connection with various Internet-related goods and products; including: maps, directions, entertainment, search engine and email services.  Complainant holds numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its AOL.COM (e.g., Reg. No. 2325291 issued March 7, 2000), MAPQUEST.COM (e.g., Reg. No. 2496784 issued October 9, 2001) and JOYSTIQ marks (e.g., Reg. No. 3246051 issued May 29, 2007).

 

Respondent, Mike Morgan a/k/a MM a/k/a M Morgan (), registered the disputed domain names not earlier than July, 2, 2005.  Each disputed domain name resolves to a website featuring third-party, commercial links which relate to Complainant’s products.

 

Respondent has been the respondent in other UDRP proceedings in which disputed domain names were transferred from Respondent to the respective complainants in those cases. See Reed Elsevier Inc. & Reed Elsevier Props. Inc. v. Mike Morgan, FA  709198 (Nat. Arb. Forum Aug. 1, 2006); see also Anheuser-Busch, Inc. v. Mike Morgan, FA 785495 (Nat. Arb. Forum Oct. 9, 2006); see also Citigroup Inc. and Diners Club Int’l. Ltd. v. M Morgan aka Mike Morgan, FA 797565 (Nat. Arb. Forum Oct. 31, 2006).

 

DISCUSSION

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.

 

 

Preliminary Issue – Multiple Respondents


In the instant proceeding, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases.  Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”  The disputed domain name are all registered under some version of “Mike Morgan” and all were registered using the same email address: <wota_man@yahoo.com.>  Additionally, all three disputed domain names infringe on three different marks of one complainant.  The Panel finds such evidence as an indication that the disputed domain names are all under the control of one person and therefore can be brought forth under one claim.

 

Identical and/or Confusingly Similar

 

Complainant contends that is has established rights in the AOL.COM, MAPQUEST.COM and JOYSTIQ marks.  The Panel finds that trademark registrations with a federal trademark authority are sufficient to establish rights in a mark. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations).  Complainant holds multiple trademark registrations with USPTO for its AOL.COM (e.g., Reg. No. 2325291 issued March 7, 2000), MAPQUEST.COM (e.g., Reg. No. 2496784 issued October 9, 2001) and JOYSTIQ marks (e.g., Reg. No. 3246051 issued May 29, 2007).  Therefore, the Panel finds Complainant has established rights in its marks pursuant to Policy ¶ 4(a)(i) through its registrations with the USPTO.

 

Complainant contends Respondent’s <aolmusik.com> domain name is confusingly similar to Complainant’s AOL.COM mark.  The disputed domain name contains Complainant’s entire mark, merely adding the misspelled, generic term “musik”  Earlier panels have asserted that the addition of a generic term to a complainant’s mark failed to distinguish a disputed domain name from the mark in question. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to 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 Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark).  Therefore, the Panel asserts that Respondent’s <aolmusik.com> domain name is confusingly similar to Complainant’s AOL.COM mark pursuant to Policy ¶ 4(a)(i).

 

Complainant contends Respondent’s <mapquert.com> domain name is confusingly similar to Complainant’s MAPQUEST.COM mark. The disputed domain name contains Complainant’s entire mark, only substituting an ‘r’ for an ‘s.’  Previous panels have found that the misspelling of a complainant’s mark in a disputed domain name renders said domain confusingly similar to a complainant’s mark. See Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”); see also Intelius, Inc. v. Hyn, FA 703175 (Nat. Arb. Forum July 5, 2006) (finding the <intellus.com> domain name to be confusingly similar to the complainant’s INTELIUS mark because the domain name differed from the mark by one letter and was visually similar)    Therefore, the Panel finds Respondent’s <mapquert.com> domain name to be confusingly similar to Complainant’s MAPQUEST.COM mark pursuant to Policy ¶ 4(a)(i).

 

Complainant contends Respondent’s <joytiq.com> domain name is confusingly similar to Complainant’s JOYSTIQ mark.  The disputed domain name contains Complainant’s mark, removes the letter ‘s’ and adds the generic top-level domain (“gTLD”) “.com.”  Previous panels have found that omitting one letter from a domain name, and adding a gTLD do nothing to distinguish a disputed domain name from a complainant’s mark. See Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter “s” from the complainant’s UNIVERSAL STUDIOS STORE mark did not change the overall impression of the mark and thus made the disputed domain name confusingly similar to it); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).  Therefore, the Panel concludes Respondent’s <joytiq.com> domain name is confusingly similar to Complainant’s JOYSTIQ mark pursuant to Policy ¶ 4(a)(i).

 

The Panel finds Policy ¶ 4(a)(i) is satisfied.

 

Rights or Legitimate Interests

 

Complainant alleges that Respondent lacks rights and legitimate interests in the <aolmusik.com>, <mapquert.com> and <joytiq.com> domain names.  Previous panels have found that when a complainant makes a prima facie case in support of its allegations, the burden shifts to the respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  The Panel finds Complainant makes a prima facie case.  Due to Respondent’s failure to respond, the Panel may infer that Respondent does not have any rights or legitimate interests in any of the <aolmusik.com>, <mapquert.com> or <joytiq.com> domain names. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence).  Nonetheless, the Panel will examine the record to determine if Respondent has rights or legitimate interests or pursuant to Policy ¶ 4(c).

 

Complainant asserts that Respondent is not authorized to use the AOL.COM mark.  The WHOIS information identifies the domain name registrant as “Mike Morgan.”  There is no other evidence set forth in the record to indicate that Respondent is commonly known by the <aolmusik.com> domain name.  In light of this, the Panel finds that Respondent has not established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name).

 

There is nothing in the record to imply that Respondent is commonly known by the <mapquert.com> domain name.  Complainant asserts that Respondent is not authorized to use the MAPQUEST.COM mark.  The WHOIS information identifies the domain name registrant as “MM M Morgan ().”  Therefore, the Panel concludes that Respondent has not established rights or legitimate interests in the <mapquert.com> domain name pursuant to Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); 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). 

 

There is no evidence set forth in the record to show that Respondent is commonly known by the <joytiq.com> domain name.  The WHOIS information identifies the domain name registrant as “Mike Morgan.”  Complainant asserts that Respondent is not authorized to use the JOYSTIQ mark.  The Panel may find such as an indication that Respondent has not established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating 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 uses the <aolmusik.com>, <mapquert.com> and <joytiq.com> domain names to direct Internet users to websites featuring third-party, commercial links, which Respondent likely profits from on a click-through basis.  The Panel finds such use does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees); see also ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with 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)).

 

The Panel finds Policy ¶ 4(a)(ii) is satisfied.

 

Registration and Use in Bad Faith

 

Complainant alleges Respondent’s use of the <aolmusik.com>, <mapquert.com> and <joytiq.com> domain names is part of a pattern of bad faith use and registration.  Respondent has been involved in numerous UDRP proceedings in which disputed domain names were transferred from Respondent to the complainants in those cases. See Reed Elsevier Inc. & Reed Elsevier Props. Inc. v. Mike Morgan, FA  709198 (Nat. Arb. Forum Aug. 1, 2006); see also Anheuser-Busch, Inc. v. Mike Morgan, FA 785495 (Nat. Arb. Forum Oct. 9, 2006); see also Citigroup Inc. and Diners Club Int’l Ltd. v. M Morgan aka Mike Morgan, FA 797565 (Nat. Arb. Forum Oct.31, 2006).  The Panel finds this constitutes a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii). See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants); see also Nat’l Abortion Fed’n v. Dom 4 Sale, Inc., FA 170643 (Nat. Arb. Forum Sept. 9, 2003) (finding bad faith pursuant to Policy ¶ 4(b)(ii) because the domain name prevented the complainant from reflecting its mark in a domain name and the respondent had several adverse decisions against it in previous UDRP proceedings, which established a pattern of cybersquatting).

 

Respondent uses the <aolmusik.com>, <mapquert.com> and <joytiq.com> domain names to compete with Complainant’s business by featuring third-party competitors’ links at each of the three disputed domains.  The Panel finds Respondent’s registration and use is a disruption of Complainant’s business and in bad faith pursuant to Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where the respondent’s website featured hyperlinks to competing websites and included a link to the complainant’s website, the respondent’s use of the <redeemaamiles.com> domain name constituted disruption under Policy ¶ 4(b)(iii)).


Each disputed domain name resolves to a website which features links to Complainant’s competitors.  Respondent appears to be operating these competing websites by taking advantage of the confusion created by Internet users who attempt to reach a site of Complainant’s, but instead reach one of Respondent’s websites.  The Panel finds this creation of confusion,in an attempt to commercially gain by Respondent, constitutes bad faith pursuant to Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees.   Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).

 

The Panel finds Policy ¶ 4(a)(iii) is satisfied.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <aolmusik.com>, <mapquert.com> and <joytiq.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

 

Dated:  November 4, 2010

 

 

 

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