AOL Inc. v. YourJungle Privacy Protection Service aka Whois Agent
Claim Number: FA1312001533324
Complainant is AOL Inc. (“Complainant”), represented by James R. Davis of Arent Fox LLP, Washington D.C., USA. Respondent is YourJungle Privacy Protection Service aka Whois Agent (“Respondent”), Colorado, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <aoljobsweek.com>, registered with THREADTRADE.COM, INC.
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 December 6, 2013; the National Arbitration Forum received payment on December 6, 2013.
On December 9, 2013, THREADTRADE.COM, INC confirmed by e-mail to the National Arbitration Forum that the <aoljobsweek.com> domain name is registered with THREADTRADE.COM, INC and that Respondent is the current registrant of the name. THREADTRADE.COM, INC has verified that Respondent is bound by the THREADTRADE.COM, 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 December 10, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 30, 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@aoljobsweek.com. Also on December 10, 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 January 3, 2014, 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 uses its AOL and related marks in connection with the offering of computer online services and other Internet-related 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 also has rights in the AOL JOBS WEEK mark through its continuous use of the mark since January 2011.
Respondent, YourJungle Privacy Protection Service aka Whois Agent, registered the disputed domain name on November 18, 2012. Respondent has offered the disputed domain name for sale to the general public.
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 owns rights in the AOL mark under Policy ¶ 4(a)(i) through registrations of the mark with the USPTO. 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.”).
Complainant also has common law rights in the AOL JOBS WEEK mark through its continuous use of the mark since January 2011. A complainant is not required to register its trademark with a government agency in order to establish rights in the mark under Policy ¶ 4(a)(i). See Winterson v. Hogarth, D2000-0235 (WIPO May 22, 2000) (finding that the Policy does not require that a complainant’s trademark be registered by a government authority or agency in order for the complainant to establish rights in the mark). A complainant sufficiently establishes rights in a mark under the Policy where the complainant has used the mark to identify complainant’s particular goods and services in the marketplace for a period of years. See, e.g., Kahn Dev. Co. v. RealtyPROshop.com, FA 568350 (Nat. Arb. Forum June 23, 2006) (holding that the complainant’s VILLAGE AT SANDHILL mark acquired secondary meaning among local consumers sufficient to establish common law rights where the complainant had been continuously and extensively promoting a real estate development under the mark for several years). Complainant has used the AOL JOBS WEEK mark since January 2011 in connection with a career services initiative. This continuous use of the AOL JOBS WEEK mark establishes that the mark has acquired secondary meaning indicating Complainant as the source of career services. Therefore, Complainant has common law rights in the AOL JOBS WEEK mark dating back to January 24, 2011.
Respondent’s <aoljobsweek.com> domain name is identical to Complainant’s AOL JOBS WEEK mark pursuant to Policy ¶ 4(a)(i). The disputed domain name fully appropriates the AOL JOBS WEEK mark and merely eliminates the spaces found between words in the mark and adds the generic top-level domain (“gTLD”) “.com.” A disputed domain name is identical to a complainant’s mark where the domain name fully appropriates the mark but eliminates spaces found between words in the mark and adds a gTLD. See, e.g., Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”).
The <aoljobsweek.com> domain name is also confusingly similar to Complainant’s AOL mark. The disputed domain name fully appropriates the AOL mark and adds the gTLD “.com” as well as the phrase “jobs week.” For the purpose of a confusing similarity analysis under Policy ¶ 4(a)(i), a domain name’s addition of a gTLD is irrelevant. See, e.g., 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). A disputed domain name is confusingly similar to a complainant’s mark where the disputed domain name fully appropriates the mark and adds a phrase that is descriptive of services offered by Complainant under the mark. See, e.g., Churchill Ins. Co. Ltd. v. Sutherland FA 1328073 (Nat. Arb. Forum July 13, 2010) (holding that the <churchilllendinggroup.com> domain name was confusingly similar to the complainant’s CHURCHILL mark, stating that the “alteration of [c]omplainant’s mark with the addition of a phrase comprised of terms descriptive of [c]omplainant’s business fails to create a distinct domain name that avoids confusing similarity.”). The disputed domain name’s added term “Jobs Week” is descriptive of the career services offered by Complainant under its AOL mark, and is thus insufficient to distinguish the <aoljobsweek.com> domain name from Complainant’s AOL mark.
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).
Respondent is not commonly known as <aoljobsweek.com> pursuant to Policy ¶ 4(c)(ii) and has used a privacy service to shield its true identity. The WHOIS information lists “YourJungle Privacy Protection Service aka Whois Agent” as the registrant of the <aoljobsweek.com> domain name. A respondent is not commonly known by a disputed domain name under Policy ¶ 4(c)(ii) where there is no evidence in the record, including the WHOIS information, to suggest otherwise. See, e.g., 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).
Respondent has offered the <aoljobsweek.com> domain name for sale to the general public, which demonstrates that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name); see also, Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“UDRP precedent is clear that auctioning domains does not constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use of domains.”).
Respondent’s offer to sell the disputed domain name demonstrates its bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(i). A respondent demonstrates bad faith under Policy ¶ 4(b)(i) where the respondent offers the disputed domain name for sale to the public and the disputed domain name was registered with the primary intent of making such an offer. See Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002) ("[w]hat makes an offer to sell a domain [name] bad faith is some accompanying evidence that the domain name was registered because of its value that is in some way dependent on the trademark of another, and then an offer to sell it to the trademark owner or a competitor of the trademark owner").
Respondent registered the <aoljobsweek.com> domain name with full notice of Complainant’s rights in the AOL mark, which is evidence of Respondent’s bad faith registration and use of the disputed domain name under Policy ¶ 4(a)(iii). Given the fame of the AOL mark, Respondent’s actual knowledge can be inferred. See, e.g., Ty Inc. v. Parvin, D2000-0688 (WIPO Nov. 9, 2000) (finding that the respondent’s registration and use of an identical and/or confusingly similar domain name was in bad faith where the complainant’s BEANIE BABIES mark was famous and the respondent should have been aware of it). A respondent demonstrates bad faith under Policy ¶ 4(a)(iii) by registering 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).
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 <aoljobsweek.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: January 17, 2014
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page