Oath Inc. v. prashant chhibber
Claim Number: FA1712001763673
Complainant is Oath Inc. (“Complainant”), represented by James R. Davis of Arent Fox LLP, District of Columbia, USA. Respondent is prashant chhibber (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <aoltechnicalhelp.com>, registered with GoDaddy.com, LLC.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 20, 2017; the Forum received payment on December 20, 2017.
On December 20, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <aoltechnicalhelp.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 22, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 11, 2018 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@aoltechnicalhelp.com. Also on December 22, 2017, 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 Forum transmitted to the parties a Notification of Respondent Default.
On January 22, 2018 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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 contends as follows:
Complainant, Oath, Inc. uses the AOL mark to provide and market products and services.
Complainant has numerous trademarks for the AOL mark issued by the United States Patent and Trademark Office “USPTO”. (e.g. Reg. No. 1,977,731, registered June 4, 1996.)
Respondent’s <aoltechnicalhelp.com> domain name is confusingly similar to the AOL mark as the name contains Complainant’s mark in its entirety, merely adding the descriptive terms “technical” and “help” along with the generic top level domain (“gTLD”) “.com.”
Respondent does not have rights or legitimate interests in the <aoltechnicalhelp.com> domain name. Respondent is not commonly known by the name, and Complainant has not granted Respondent permission or license to use the AOL mark to register a domain name.
Respondent has registered and used the <aoltechnicalhelp.com> domain name in bad faith. Respondent is disrupting Complainant’s business by using the domain name to compete with Complainant’s business and attract Internet users for commercial gain. Additionally, Respondent has demonstrated a pattern of registering domain names that infringe on third party marks. Further, Respondent failed to respond to Complainant’s cease and desist letters. Finally, Respondent had actual knowledge of Complainant’s AOL mark.
B. Respondent
Respondent failed to submit a formal Response in this proceeding. However, Respondent did respond to the dispute resolution service provider via email. Therein, Respondent explained that it was not aware of the misuse of the domain name; that the referenced website has been removed; and that it would like the domain name to be deleted from Respondent’s account. Respondent further admits that it is sorry and feels guilty.
Complainant has trademark rights in the AOL mark.
Respondent registered the at-issue domain name after Complainant acquired rights in AOL.
Respondent agrees to relinquish the domain name.
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(f), 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 (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.”).
Preliminary Issue: Consent to Transfer
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 15(a) of the Rules thus permits a panel to grant a complainant’s requested relief without deference to Policy ¶¶4(a)ii or 4(a)iii, when a respondent consents to such relief. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also, Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant. . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”)
In the instant case, there is a clear indication that Respondent agrees to rid itself of the domain name and does not oppose the Complaint. In its email to the Forum, Respondent states that it desires that the domain name be deleted, that it has removed its referenced website, and further that it feels guilty. It thus appears to the Panel that Respondent agrees that Complainant should be granted the relief Complainant requests. Thus, the Panel follows its rationale set out in Homer TLC, Inc. v. Jacek Woloszuk, FA613637 (Forum May 17, 2015), as well as in other similarly reasoned decisions where the respondent likewise appeared to agree to transfer the at-issue domain name to the complainant.
As more fully discussed in the cases referenced above, as a necessary prerequisite to Complainant obtaining its requested relief, even where Respondent agrees to such relief, Complainant must demonstrate that it has rights in a mark that is confusingly similar or identical to the at-issue domain name. Here, Complainant’s ownership of a USPTO trademark registration for the AOL trademark shows its rights in such mark for the purposes of Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO). Additionally, the at-issue domain name contains Complainant’s entire AOL trademark followed by the descriptive terms “technical” and “help” (or simply “technicalhelp”). The top-level domain name “.com” is appended thereto. The differences between the at-issue <aoltechnicalhelp.com> domain name and Complainant’s AOL trademark are insufficient to distinguish one from the other for the purposes of the Policy. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (finding that confusing similarity existed where [a domain name] contained a complainant’s entire mark and differed only by the addition of a generic or descriptive phrase and top-level domain).
In light of the foregoing, Respondent’s consent to transfer the at-issue domain name permits the Panel to order that the <aoltechnicalhelp.com> domain name be transferred to Complainant without further analysis regarding paragraph 4(a)(ii) or 4(a)(iii) of the Policy.
Having concluded that Respondent consents to Complainant’s request that the at-issue domain name be transferred to Complainant, the Panel GRANTS Complainant’s request.
Accordingly, it is Ordered that the <aoltechnicalhelp.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: January 22, 2018
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