AOL, Inc. v. ChengshuangLi
Claim Number: FA1302001483339
Complainant is AOL, Inc. (“Complainant”), represented by James R. Davis of Arent Fox LLP, District of Columbia, USA. Respondent is ChengshuangLi (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <webmail-aol.us>, registered with PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 4, 2013; the National Arbitration Forum received a hard copy of the Complaint on February 11, 2013.
On February 7, 2013, PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM confirmed by e-mail to the National Arbitration Forum that the <webmail-aol.us> 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 the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On February 12, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 4, 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@webmail-aol.us. Also on February 12, 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.
On February 12, 2013, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 4, 2013, by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 19, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 "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 usTLD Policy, usTLD 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 <webmail-aol.us> domain name is confusingly similar to Complainant’s AOL mark.
2. Respondent does not have any rights or legitimate interests in the <webmail-aol.us> domain name.
3. Respondent registered and used the <webmail-aol.us> domain name in bad faith.
B. Respondent failed to submit a timely Response in this proceeding.
Complainant owns trademark registrations for its AOL mark, which it uses in connection with providing computer products and services, including United States Patent and Trademark Office (“USPTO”) Registration No. 1,977,731, registered on June 4, 1996.
Respondent registered the <webmail-aol.us> domain name on August 8, 2012.
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 or 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.”).
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
The Panel finds that Complainant has established its rights in the AOL mark through its USPTO registration. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”).
Respondent’s <webmail-aol.us> domain name is confusingly similar to Complainant’s AOL mark, as it merely adds the term “webmail,” a term descriptive of services provided under the AOL mark. Respondent also adds the usTLD and a hyphen to the disputed domain name, neither of which are significant. Therefore, the Panel finds that Respondent failed to distinguish the disputed domain name from Complainant’s AOL mark. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant); see also Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
The Panel notes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent 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.”).
In this case, Complainant has not made a prima facie case that Respondent lacks rights and legitimate interests. Complainant has not stated how the domain name is being used. Complainant’s entire argument regarding Policy ¶ 4(a)(ii) consists of the following:
Respondent has no rights or legitimate interests in the infringing domain name. Respondent is not named or commonly known as AOL, nor is he licensed or authorized to use the AOL mark in this manner.
The Panel finds that the above argument does not satisfy Policy ¶ 4(a)(ii). Since the Complainant has failed to satisfy one of the three requirements under the UDRP, the Panel declines to analyze the bad faith element.
Having failed to establish all three elements required under the usTLD Policy, the Panel concludes that relief shall be DENIED WITHOUT PREJUDICE.
Sandra J. Franklin, Panelist
Dated: March 26, 2013
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