AOL Inc. v. SANTOSH GHIMIRE aka DO SURF IN P. LTD.
Claim Number: FA1501001598220
Complainant is AOL Inc. (“Complainant”), represented by James R. Davis of Arent Fox LLP, District of Columbia, USA. Respondent is SANTOSH GHIMIRE a/k/a DO SURF IN P. LTD. (“Respondent”), Nepal.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <aolmaillogin.net>, registered with ENOM, INC.
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically January 5, 2015; the National Arbitration Forum received payment January 5, 2015.
On January 6, 2015, ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the <aolmaillogin.net> domain name is registered with ENOM, INC. and that Respondent is the current registrant of the name. ENOM, INC. verified that Respondent is bound by the ENOM, INC. registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 6, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 26, 2015, 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@aolmaillogin.net. Also on January 6, 2015, 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 30, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hpn. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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 issues 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.
i. Complainant owns the AOL mark through its numerous trademark registrations worldwide, including with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1977731, registered June 4, 1996).
ii. Complainant uses the AOL mark in connection with a variety of different things including computer services such as electronic mail services.
i. Policy ¶ 4(a)(i)
1. The <aolmaillogin.net> domain name is confusingly similar to Complainant’s AOL mark, because Respondent has simply added the descriptive terms “mail” and “login” to the mark.
ii. Policy ¶ 4(a)(ii)
1. Respondent lacks rights and legitimate interests in the disputed domain name.
2. Respondent is not commonly known by the <aolmaillogin.net> domain name. Further, Respondent is neither licensed nor authorized to use the AOL mark.
3. Respondent does not provide any bona fide offering of goods or services, or make a legitimate noncommercial or fair use of the disputed domain name.
4. Respondent uses the disputed domain name to place a variety of different pay-per-click links to third party websites, some of which directly compete with Complainant.
iii. Policy ¶ 4(a)(iii)
1. Respondent placed a variety of different pay-per-click links to third party websites on the disputed domain name, some of which directly compete with Complainant.
2. Respondent uses the disputed domain name to intentionally attract Internet users to its own website for commercial gain.
3. Respondent must have had either actual or constructive knowledge of Complainant’s rights in the AOL mark.
a. Respondent registered the disputed domain name many years after Complainant became famous and had the AOL mark registered around the world.
b. In the WHOIS record, Respondent uses an AOL email address.
Complainant registered its mark and has rights and legitimate interests in the very famous mark contained in its entirety within the disputed domain name.
Respondent has no such rights or legitimate interests.
Complainant established that the disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent registered and uses the disputed domain in bad faith.
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 Complainant to prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
Given 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 will draw such inferences as the Panel 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.”).
Identical or Confusingly Similar:
Complainant uses the AOL mark in connection with a variety of different efforts, including computer services such as electronic mail services. Complainant owns the AOL mark through its numerous trademark registrations around the world, including with the USPTO (e.g., Reg. No. 1,977,731, registered June 4, 1996). Complainant argues that such registrations are sufficient to establish rights in the AOL mark pursuant to Policy ¶ 4(a)(i), although Respondent reportedly resides in Nepal. Complainant’s argument is supported by previous UDRP decisions. 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). Accordingly, although Respondent operates in Nepal, the Panel finds that Complainant’s USPTO registrations satisfy the requirements of Policy ¶ 4(a)(i).
Complainant argues that the <aolmaillogin.net> domain name is confusingly similar to Complainant’s AOL mark because Respondent simply added the descriptive terms “mail” and “login”. The Panel also notes that the disputed domain name differs from the mark given the affixation of the generic top-level domain (“gTLD”) “.net.” Affixation of a gTLD is irrelevant to a Policy ¶ 4(a)(i) analyisis. See Parfums Christian Dior v. 1 Netpower, Inc., D2000-0022 (WIPO Mar. 3, 2000) (finding that four domain names that added the descriptive words "fashion" or "cosmetics" after the trademark were confusingly similar to the trademark); see also Katadyn N. Am. v. Black Mountain Stores, FA 520677 (Nat. Arb. Forum Sept. 7, 2005) (“[T]he addition of the generic top-level domain (gTLD) “.net” is irrelevant for purposes of determining whether a domain name is identical to a mark.”). For these reasons, the Panel finds that the <aolmaillogin.net> domain name is confusingly similar to Complainant’s AOL mark under Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain name is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Rights and Legitimate Interests:
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 of proof shifts to Respondent to show it does have such 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.”).
Complainant urges that Respondent lacks rights or legitimate interests in the disputed domain name. Complainant alleges that Respondent is not commonly known by the <aolmaillogin.net> domain name. The Panel notes that the WHOIS information identifies “Santosh Ghimire” as the registrant of the disputed domain name. The Panel recalls that Respondent failed to submit a response to refute any of Complainant’s contentions. Given the lack of evidence to infer otherwise, the Panel finds that Respondent is not commonly known by the <aolmaillogin.net> domain name pursuant to Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as no evidence in the record shows that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant also argues that Respondent has not provided any bona fide offering of goods or services, or made a legitimate noncommercial or fair use of the disputed domain name. Complainant urges that Respondent placed a variety of different “pay-per-click” links to third party websites on the disputed domain name, some of which directly compete with Complainant. See Complainant’s Ex. G. Previous panels have refused to find any bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name where the respondent uses the domain name to place links to the complainant’s competitors. See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”). Thus, the Panel finds that Respondent has not provided any bona fide offering of goods or services and has not shown a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(i) and Policy ¶ (c)(iii), respectively.
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant urges that Respondent registered and is using the disputed domain name in bad faith. Complainant contends that Respondent’s use of the disputed domain name disrupts Complainant’s business, in that Respondent uses the disputed domain name to provide links to third-party websites, which directly compete with Complainant. See Complainant’s Ex. G. Generally, panels find bad faith when a respondent uses a disputed domain name to disrupt the complainant’s business by redirecting Internet traffic to the complainant’s competitors. See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)). For these reasons, the Panel finds that Respondent’s use of the disputed domain name disrupts Complainant’s business and is bad faith under Policy ¶ 4(b)(iii).
Additionally, Complainant argues that Respondent uses the disputed domain name for its own commercial gain by offering “pay-per-click” links on the disputed domain name. Many panels deem such actions to be evidence of bad faith under Policy ¶ 4(b)(iv). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names). Thus, the Panel in this case finds that Respondent’s actions constitute bad faith under Policy ¶ 4(b)(iv).
Finally, Complainant argues that Respondent had actual and constructive knowledge of Complainant’s rights in the AOL mark when it registered the <aolmaillogin.net> domain name. Specifically, Complainant argues that Respondent had constructive knowledge of the AOL mark because Respondent registered the disputed domain name so many years after Complainant’s AOL mark had become famous. Likewise, Complainant argues that Respondent had actual knowledge of the AOL mark, because in its WHOIS information, Respondent has an aol.com email address as its contact information. Although panels do not generally regard constructive notice to be sufficient for a finding of bad faith, this Panel finds that the evidence shows that Respondent had actual knowledge of Complainant's mark and rights and therefore this Panel finds that Respondent registered the disputed domain name in bad faith under a Policy ¶ 4(a)(iii) analysis. 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")."
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 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 <aolmaillogin.net> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: February 11, 2015
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