AOL Inc. v. Tech Helpdesk 247
Claim Number: FA1311001532064
Complainant is AOL Inc. (“Complainant”), represented by James R. Davis of Arent Fox LLP, Washington D.C., USA. Respondent is Tech Helpdesk 247 (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <aol-tech-support.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 Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 27, 2013; the National Arbitration Forum received payment on November 27, 2013.
On November 27, 2013, BigRock Solutions Ltd confirmed by e-mail to the National Arbitration Forum that the <aol-tech-support.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 December 4, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 24, 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@aol-tech-support.com. Also on December 4, 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 27, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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
Complainant made the following contentions.
i. Respondent is not named or commonly known as AOL.
ii. Respondent is attempting to mislead consumers into paying for Complainant’s technical support services that are provided by Complainant and therefore compete with Complainant.
iii. Respondent is using <aol-tech-support.com> with a commercial site that makes prominent and repeated uses of Complainant’s name, logos, and trademarks in ways that are misleading and confusing to consumers.
i. Respondent is attempting to mislead consumers into paying for Complainant’s technical support services that are provided by Complainant and therefore compete with Complainant.
ii. Respondent is using <aol-tech-support.com> with a commercial site that makes prominent and repeated uses of Complainant’s name, logos, and trademarks in ways that are misleading and confusing to consumers.
iii. Respondent is deemed to at least have had constructive knowledge of Complainant’s rights from Complainant’s trademark registrations. Respondent had actual knowledge of Complainant’s rights when it registered the domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in providing a wide range of online services, including email and related support services to its customers.
2. Complainant is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the AOL mark (e.g., Reg. No. 1,977,731, registered June 4, 1996).
3. Respondent registered the <aol-tech-support.com> domain name on August 19, 2012.
4. Respondent uses the <aol-tech-support.com> domain name to attempt to mislead consumers into paying for Complainant’s technical support services that are provided by Complainant and therefore compete with Complainant.
5. Respondent also uses the <aol-tech-support.com> domain name with a commercial site that makes use of Complainant’s name, logos, and trademarks in ways that must be presumed to be misleading and confusing to consumers.
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.”).
The first question that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant asserts that it uses the AOL mark in connection with a wide range of online services, including email and related support services to its customers. Complainant argues that it is the owner of trademark registrations with the USPTO for the AOL mark (e.g., Reg. No. 1,977,731, registered June 4, 1996). See Complainant’s Annex B. The Panel observes that Respondent appears to reside and operate in India. However, the Panel finds that Policy ¶ 4(a)(i) does not require Complainant to register its mark in the country in which Respondent operates, so long as it establishes rights in the mark in some jurisdiction. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Therefore, the Panel concludes that Complainant’s registration of the AOL mark with the USPTO sufficiently demonstrates its rights in the mark pursuant to Policy ¶ 4(a)(i). See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
The second question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s AOL mark. Complainant asserts that Respondent’s <aol-tech-support.com> domain name is confusingly similar to Complainant’s AOL mark. Complainant alleges that Respondent uses the AOL mark and attaches the generic phrase “tech support.” The Panel determines that Respondent’s addition of a generic phrase to Complainant’s mark does not differentiate the domain name from Complainant’s mark pursuant to Policy ¶ 4(a)(i). 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)). The Panel notes that Respondent also adds hyphens and the generic top-level domain (“gTLD”) “.com” to Complainant’s mark in its disputed domain name. The Panel holds that Respondent’s inclusion of punctuaton and a gTLD is inconsequential to a Policy ¶ 4(a)(i) analysis. See Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"); see also Metro-Goldwyn-Mayer Studios Inc. v. Antigua Domains, FA 1073020 (Nat. Arb. Forum Oct. 17, 2007) (“[T]he inclusion of the generic top-level domain ‘.com’ is inconsequential to the Policy ¶ 4(a)(i) analysis, as a top-level domain is required of all domain names.”). Accordingly, the Pane concludes that Respondent’s <aol-tech-support.com> domain name is confusingly similar to Complainant’s AOL mark pursuant to Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s AOL trademark and has used it in its domain name, thus giving the false impression that the domain name is an official domain name of Complainant and that it will lead to an official website of Complainant;
(b) Respondent has then attached the generic phrase “tech support” to the trademark to make the domain name;
(c) Respondent has used the <aol-tech-support.com> domain name to attempt to mislead consumers into paying for Complainant’s technical support services that are provided by Complainant and therefore compete with Complainant and also with a commercial site that makes prominent and repeated uses of Complainant’s name, logos, and trademarks in ways that must be presumed to be misleading and confusing to consumers;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant contends that Respondent is not named or commonly known as AOL. Complainant asserts that Respondent is not licensed or authorized to use the AOL mark in a domain name. The Panel notes that the WHOIS information identifies “Tech Helpdesk 247” as the registrant of the <aol-tech-support.com> domain name. The Panel also notes that Respondent fails to provide any additional evidence that it is known by the domain name. Thus, the Panel determines that Respondent is not commonly known by the <aol-tech-support.com> domain name under 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);
(f) Complainant alleges that Respondent is attempting to mislead consumers into paying for Respondent’s technical support services that compete with Complainant. The Panel notes that Respondent’s <aol-tech-support.com> domain name resolves to a website stating “Tech Support for AOL Account Call Toll Free 1-800-579-6187,” which purports to provide technical support services. See Complainant’s Annex F. In Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010), the panel stated that “capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).” Therefore, the Panel concludes that Respondent is not using the <aol-tech-support.com> domain name for a Policy ¶ 4(c)(i) bona fide offering of goods or services, or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use;
(g) Complainant argues that Respondent is using <aol-tech-support.com> with a commercial site that makes prominent and repeated uses of Complainant’s name, logos, and trademarks in ways that are misleading and confusing to consumers. See Complainant’s Annex F. As the Panel finds that Respondent’s use of Complainant’s trademark and logos is an attempt by Respondent to pass itself off as Complainant, the Panel concludes that Respondent is not using the disputed domain name in connection with a Policy ¶ 4(c)(i) bona fide offering of goods or services, or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. 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) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent is attempting to mislead consumers into paying for Complainant’s technical support services that are provided by Complainant and therefore compete with Complainant. The Panel notes that Respondent’s <aol-tech-support.com> domain name resolves to a webpage that appears to provide technical support services, stating “Tech Support for AOL Call Toll Free: 1-800-579-6187.” See Complainant’s Annex F. The Panel observes that Respondent presumably commercially benefits by offering competing technical support services. Accordingly, the Panel finds that Respondent has registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv). See Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (“By use of <yahgo.com> to operate its search engine, a name that infringes upon Complainant’s mark, Respondent is found to have created circumstances indicating that Respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on the website as proscribed in Policy ¶ 4(b)(iv).”).
Secondly, Complainant alleges that Respondent is using <aol-tech-support.com> with a commercial site that makes prominent and repeated uses of Complainant’s name, logos, and trademarks in ways that are misleading and confusing to consumers. The Panel notes that Respondent’s disputed domain name links to a webpage titled “Tech Support for AOL Account” and uses Complainant’s AOL’s trademark and logo. See Complainant’s Annex F. In Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003), the panel found that the disputed domain name was registered and used in bad faith where respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark.” Thus, the Panel concludes that Respondent is attempting to pass itself off as Complainant, showing bad faith use and registration pursuant to Policy ¶ 4(a)(iii).
Thirdly, Complainant claims that Respondent is deemed to at least have had constructive knowledge of Complainant’s rights based on Complainant’s trademark registrations. Additionally, Complainant contends that Respondent had actual knowledge of Complainant’s rights when it registered the domain name, as the disputed domain name’s website includes copies of Complainant’s trademarked and copyrighted AOL assets. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the <aol-tech-support.com> domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Fourthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using Complainant’s AOL mark and in view of the conduct that Respondent engaged in when using it, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <aol-tech-support.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: December 31, 2013
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