AOL Inc. v. N/A aka Pankaj
Claim Number: FA1311001529229
Complainant is AOL Inc. (“Complainant”), represented by James R. Davis of Arent Fox LLP, Washington, D.C., USA. Respondent is N/A aka Pankaj (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <aoltuneup.com>, registered with BigRock Solutions Ltd.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 11, 2013; the National Arbitration Forum received payment on November 11, 2013.
On November 12, 2013, BigRock Solutions Ltd. confirmed by e-mail to the National Arbitration Forum that the <aoltuneup.com> domain name is registered with BigRock Solutions Ltd. and that Respondent is the current registrant of the name. BigRock Solutions Ltd. has verified that Respondent is bound by the BigRock Solutions Ltd. 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 November 12, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 2, 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@aoltuneup.com. Also on November 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 10, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, AOL Inc., uses its AOL mark in connection with the AOL Portal Website, which is used in part to offer technical support services. Complainant owns rights in the AOL mark through registrations of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,977,731 registered June 4, 1996). Complainant has also registered the AOL.COM mark with the USPTO (e.g., Reg. No. 2,325,292 registered March 7, 2000).
Respondent, N/A aka Pankaj, registered the disputed domain name on June 10, 2013. Respondent is using the disputed domain name to direct Internet users to its own commercial website, which provides technical support services that directly compete with those offered by Complainant under its AOL mark. Respondent is also using the disputed domain name to attempt to pass itself off as 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."
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.”).
Complainant has rights in the AOL mark under Policy ¶ 4(a)(i) through registrations of the mark with the USPTO (e.g., Reg. No. 1,977,731 registered June 4, 1996). See AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that, where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i)”). A complainant does not need to register its mark in the respondent’s country of origin in order to establish rights in the mark. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). Therefore, the Panel finds that Complainant has established its rights in the AOL mark pursuant to Policy ¶ 4(a)(i), even though Respondent appears to reside in India.
Complainant contends that the <aoltuneup.com> domain name is confusingly similar to Complainant’s AOL mark, because it fully incorporates the mark and merely adds the generic phrase “tune up.” The disputed domain name also adds the generic top-level domain (“gTLD”) “.com.” The addition of a gTLD to a domain name is irrelevant for the purposes of a Policy ¶ 4(a)(i) analysis. See, e.g., Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). The addition of a generic phrase is not sufficient to distinguish the domain name from a complainant’s mark. See Warner Bros. Entm’t Inc. v. Sadler, FA 250236 (Nat. Arb. Forum May 19, 2004) (finding the addition of generic terms to Complainant’s HARRY POTTER mark in the respondent’s <shop4harrypotter.com> and <shopforharrypotter.com> domain names failed to alleviate the confusing similarity between the mark and the domain names). Therefore, the Panel finds that the <aoltuneup.com> domain name is confusingly similar to Complainant’s AOL mark pursuant to Policy ¶ 4(a)(i).
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).
Complainant contends that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). The WHOIS information identifies the registrant of the <aoltuneup.com> domain name as “N/A aka Pankaj.” The Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See, e.g., 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).
Complainant alleges that Respondent is using the disputed domain name to direct Internet users to its own commercial website, which provides technical support services that directly compete with those offered by Complainant under its AOL mark. Complainant offers technical support services under its AOL mark. The website resolving from <aoltuneup.com> offers AOL support services that directly compete with those offered by Complainant. A respondent’s use of a domain name that incorporates the complainant’s mark to provide services that compete with those offered by the complainant does not constitute a bona fide offering of goods or services, or a legitimate noncommercial or fair use. See, e.g., Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (finding that the respondent’s use of a confusingly similar domain name to operate a search engine, in competition with the complainant, was not a bona fide offering of goods or services or a legitimate noncommercial or fair use). Therefore, the Panel finds that Respondent’s use of the <aoltuneup.com> domain name to offer AOL support services that directly compete with Complainant is not a use protected under Policy ¶¶ 4(c)(i) or 4(c)(iii).
Complainant further alleges that Respondent is using the disputed domain name in an attempt to pass itself off as Complainant. Specifically, Complainant states that the disputed domain name resolves to a website that prominently displays Complainant’s AOL mark as well as its AOL “Running Man” logo. A respondent’s use of a disputed domain name to attempt to pass itself off as the complainant is not a use protected under Policy ¶¶ 4(c)(i) or 4(c)(iii). See Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel found 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)). The resolving website displays Complainant’s AOL mark as well as its “Running Man” logo. Therefore, the Panel finds that Respondent has used the <aoltuneup.com> domain name to attempt to pass itself off as Complainant, which is not a use protected under Policy ¶¶ 4(c)(i) or 4(c)(iii).
Complainant argues that Respondent has engaged in a pattern of bad faith domain registrations pursuant to Policy ¶ 4(b)(ii). Specifically, Complainant has copied and pasted WHOIS records into its Complaint that show Respondent as the current registrant of the <yahoocustomercare.com> domain name. A respondent demonstrates a pattern of bad faith domain name registrations where there are multiple adverse UDRP proceedings that have found against the respondent. See, e.g., TRAVELOCITY.COM LP v. Aziz, FA 1260783 (Nat. Arb. Forum June 16, 2009). Although Respondent registered the <yahoocustomercare.com> domain name, nothing in the record suggests that there are prior UDRP decisions that have found against Respondent. Therefore, the Panel concludes that Respondent has not demonstrated bad faith registration and use of the <aoltuneup.com> domain name pursuant to Policy ¶ 4(b)(ii).
Complainant next argues that Respondent has demonstrated bad faith registration and use of the <aoltuneup.com> domain name pursuant to Policy ¶ 4(b)(iii), because the disputed domain name resolves to a commercial website that offers technical support services that directly compete with those offered by Complainant. A respondent demonstrates bad faith under ¶ 4(b)(iii) where the disputed domain name is confusingly similar to the complainant’s mark and is used to offer services that compete with those offered by the complainant. See Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name confusingly 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)). Therefore, the Panel finds that Respondent has disrupted Complainant’s business and thus demonstrated bad faith registration and use of the <aoltuneup.com> domain name pursuant to Policy ¶ 4(b)(iii).
Complainant next alleges that Respondent has demonstrated bad faith registration and use under to Policy ¶ 4(b)(iv), because the <aoltuneup.com> domain name creates a likelihood of confusion with Complainant’s AOL mark and is being used to attract Internet users to Respondent’s own commercial website. The disputed domain name resolves to a website that offers support services that directly compete with those offered by Complainant. A respondent demonstrates bad faith under Policy ¶ 4(b)(iv) where the disputed domain name offers similar services as those offered by the complainant and Internet users are likely to be confused into believing that the complainant is the source of the services. Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the disputed domain name to resolve to a website where similar services are offered to Internet users and is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site). The disputed domain name’s resolving website displays Complainant’s AOL mark and logo. Therefore, the Panel finds that Respondent has demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
Complainant contends that Respondent uses the <aoltuneup.com> domain name to pass itself off as Complainant. A respondent’s use of a disputed domain name to attempt to pass itself as the complainant demonstrates the respondent’s bad faith under Policy ¶ 4(a)(iii). Therefore, the Panel finds that Respondent registered and used the <aoltuneup.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).
Finally, Complainant contends that given the fame of Complainant’s AOL mark, Respondent’s knowledge of Complainant and its rights in the mark can be inferred. A respondent demonstrates bad faith under Policy ¶ 4(a)(iii) where it registers an infringing domain name with actual notice of the complainant’s rights in the appropriated mark. See, e.g., 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). Previous panels have inferred that a respondent has actual notice of the complainant’s rights in the mark where the mark is extremely well-known. See Nintendo of Am. Inc v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding that the respondent, at the time of registration, had notice of the complainant’s POKÉMON and PIKACHU trademarks given their extreme popularity). Therefore, the Panel finds that Respondent registered the <aoltuneup.com> domain name with actual notice of Complainant’s rights in the AOL mark, which is further evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <aoltuneup.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: December 21, 2013
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