AOL Inc. v Michael Alibakhsh
Claim Number: FA1408001573046
Complainant is AOL Inc. (“Complainant”), represented by James R. Davis of Arent Fox LLP, District of Columbia, USA. Respondent is Michael Alibakhsh (“Respondent”), Georgia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <huffingtonpost.xyz>, registered with Instra Corporation Pty Ltd.
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.
Dr. Beatrice Onica Jarka as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 1, 2014; the National Arbitration Forum received payment on August 1, 2014.
On August 3, 2014, Instra Corporation Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <huffingtonpost.xyz> domain name is registered with Instra Corporation Pty Ltd. and that Respondent is the current registrant of the name. Instra Corporation Pty Ltd. has verified that Respondent is bound by the Instra Corporation Pty 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 August 4, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 25, 2014 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@huffingtonpost.xyz. Also on August 4, 2014, 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.
A timely Response was received and determined to be complete on August 25, 2014.
On August 28,2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Dr. Beatrice Onica Jarka 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends that:
· It owns the entity which holds the HUFFINGTON POST mark and uses it to provide news, blogs, and social commentary on the Internet.
· The mark is registered with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 3,095,331 registered May 23, 2006). The domain name is confusingly similar to the HUFFINGTON POST mark.
· Respondent has no rights or legitimate interests in this domain name, as
- Respondent is not named or commonly known by the <huffingtonpost.xyz> domain name, and
- Respondent uses the <huffingtonpost.xyz> domain name for his own commercial website.
· Respondent registered and used the <huffingtonpost.xyz> domain name in bad faith, as
- Respondent seeks to sell of the <huffingtonpost.xyz> domain name for a tidy profit. See Compl., at Attached Ex. I,
- Respondent seeks to profit by disrupting Complainant’s operations under the HUFFINGTON POST mark,
- Respondent is using the <huffingtonpost.xyz> domain name with the intent to profit through the likelihood of Internet users’ confusion.
- Respondent had actual notice of Complainant’s rights because Respondent was given advance notice of the HUFFINGTON POST mark prior to his decision to ultimately register the <huffingtonpost.xyz> domain name.
- Respondent engaged in a pattern of infringement upon famous third party trademarks and names by registering domain names replicating the trademarks and names with the termination .xyz.
B. Respondent
In its Response, the Respondent claims that:
· Complainant does not have a valid trademark.
· Respondent has rights and legitimate interests because it has made no commercial use of the domain name and the domain name is not viewable by the general public.
· Respondent did not act in bad faith.
· Respondent did not offer to sell, he received the offer to sell—to which he asked for what he thought was fair value.
· Respondent does not believe Complainant owns the trademark and thus had no notice of trademark rights.
The Respondent had registered and used in bad faith a domain name replicating the well-known trademark “The Huffington Post”
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.
Complainant owns the entity which holds THE HUFFINGTON POST mark and uses it to provide news, blogs, and social commentary on the Internet. The mark is registered with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 3,095,331 registered May 23, 2006). The Panel takes note that the listed registrant for the trademark is “THEHUFFINGTONPOST.COM, INC.”—a subsidiary of Complainant. Thus, the Panel finds the USPTO trademark registration to be sufficient evidence of Complainant’s rights in THE HUFFINGTON POST as against the American Respondent. See, e.g., Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (determining that the complainant’s trademark registrations with the USPTO for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)).
Complainant further claims the <huffingtonpost.xyz> domain name is confusingly similar to THE HUFFINGTON POST mark. The Panel notes the domain name removes the term “the” and adds the top-level domain (“TLD”) “.xyz.” The Panel considers that these alterations are not sufficient to defeat the confusing similarity of this domain name under Policy ¶ 4(a)(i). See Am. Eagle Outfitters, Inc. v. Admin, FA 473826 (Nat. Arb. Forum June 22, 2005) (finding the <americaneaglestores.com> domain name to be confusingly similar to the complainant’s AMERICAN EAGLE OUTFITTERS mark).
Therefore the Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
According to the UDRP’s practice, the 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.”).
First, Complainant claims Respondent is not named or commonly known by the <huffingtonpost.xyz> domain name. The Panel notes that the Respondent self-identifies as “Michael Alibakhsh.” Thus, the Panel finds that Respondent is not commonly known as the <huffingtonpost.xyz> domain name under Policy ¶ 4(c)(ii). See 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).
Second, Complainant argues that Respondent uses the <huffingtonpost.xyz> domain name for his own commercial website. The Panel notes the domain name resolves to a parked website. See Compl., at Attached Annex H. In State Farm Mut. Auto. Ins. Co. v. Pompilio, FA 1092410 (Nat. Arb. Forum Nov. 20, 2007), the panel found no bona fide offering of legitimate use when the domain name contained merely parked advertisements hosted by a third party. Here, the Panel agrees that the Respondent’s decision to leave the domain name parked serves as evidence there is not a Policy ¶ 4(c)(i) bona fide offering of goods or services, or Policy ¶ 4(c)(iii) legitimate noncommercial or fair use in store for the <huffingtonpost.xyz> domain name.
Therefore, the Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
Moreover, the Complainant claims that Respondent seeks to sell of the disputed domain name for a tidy profit. See Compl., at Attached Ex. I. The Panel notes that Exhibit I illustrates a dialogue between the parties regarding the resolution of this dispute. Respondent claims he did not offer to sell, but instead he received the offer from Complainant—to which he asked for what he thought was fair value. The Panel does not agree with the Respondent’s defense. The answer of the Respondent in reply to the request of the Complainant may be construed as illustrating the intent of the Respondent as to the registration of the disputed domain name for its value on resale.
Finally, Complainant claims Respondent had actual notice of Complainant’s rights because Respondent was given advance notice of the HUFFINGTON POST mark prior to his decision to ultimately register the <huffingtonpost.xyz> domain name. As such, the Panel may agree that Respondent actually knew of Complainant’s rights in the mark and as such Respondent is liable of bad faith under Policy ¶ 4(a)(iii). See, e.g., Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Nat. Arb. Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”).
For all the above reasons, the Panel’s finding is that the Complainant has succeeded to establish that Respondent registered and used the disputed domain name in bad faith under UDRP ¶ 4(a)(iii)).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <huffingtonpost.xyz> domain name be TRANSFERRED from Respondent to Complainant.
Dr. Beatrice Onica Jarka, Panelist
Dated: September 11, 2014
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