Time Warner, Inc. v. Adam M. Dicker d/b/a High Impact Sites Inc.
Claim Number: FA0512000606425
Complainant is Time Warner, Inc. (“Complainant”), represented by James R. Davis, of Arent Fox PLLC, 1050 Connecticut Avenue, NW, Washington, DC 20036. Respondent is Adam M. Dicker d/b/a High Impact Sites Inc. (“Respondent”), 9251-8 Yonge Street Suite 413, Richmond Hill, ON L4C 9T3, Canada.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <aolpayment.com>, <instylehome.com> and <aimq.com>, registered with Domain Jingles, Inc.
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.
Honorable Paul A. Dorf (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 8, 2005; the National Arbitration Forum received a hard copy of the Complaint on December 12, 2005.
On December 19, 2005, Domain Jingles, Inc. confirmed by e-mail to the National Arbitration Forum that the <aolpayment.com>, <instylehome.com> and <aimq.com> domain names are registered with Domain Jingles, Inc. and that Respondent is the current registrant of the names. Domain Jingles, Inc. has verified that Respondent is bound by the Domain Jingles, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On December 20, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 9, 2006 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@aolpayment.com, postmaster@instylehome.com and postmaster@aimq.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 12, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (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." 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <aolpayment.com>, <instylehome.com> and <aimq.com> domain names are confusingly similar to Complainant’s AOL, INSTYLE and AIM marks.
2. Respondent does not have any rights or legitimate interests in the <aolpayment.com>, <instylehome.com> and <aimq.com> domain names.
3. Respondent registered and used the <aolpayment.com>, <instylehome.com> and <aimq.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Time Warner, Inc., holds trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the AOL (Reg. No. 1,977,731 issued June 4, 1996), INSTYLE (Reg. No. 1,851,469 issued August 30, 1994), and AIM (Reg. No. 2,423,367 issued January 23, 2001) marks.
Respondent registered the <aimq.com> domain name on May 31, 2001, the <aolpayment.com> domain name on May 8, 2003, and the <instylehome.com> domain name on August 28, 2004. Respondent is using the disputed domain names to redirect Internet users to commercial websites that feature pop-up advertisements and third-party goods and services that compete with Complainant.
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."
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.”).
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 has established rights in the AOL, INSTYLE and
AIM marks through registration of the marks with the USPTO. See Vivendi Universal Games v.
XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003)
(“Complainant's federal trademark registrations establish Complainant's rights
in the BLIZZARD mark.”); see also Innomed Techs.,
Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004)
(“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's
rights in the mark.”).
The disputed domain names that Respondent registered are
confusingly similar to Complainant’s AOL, INSTYLE and AIM marks. The disputed domain names incorporate
Complainant’s marks and deviate with the additions of generic top-level
domains, common terms and letters to Complainant’s marks. These additions to Complainant’s registered
marks do not distinguish the domain names pursuant to Policy ¶ 4(a)(i). See Nev. State Bank v. Modern Ltd. –
Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been
established that the addition of a generic top-level domain is irrelevant when
considering whether a domain name is identical or confusingly similar under the
Policy.”); see also Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO
Nov. 6, 2001) (“[T]he fact that a domain name wholly incorporates a
Complainant’s registered mark is sufficient to establish identity or confusing
similarity for purposes of the Policy despite the addition of other words to
such marks.”); see also Space Imaging LLC v.
Brownell, AF-0298 (eResolution Sept. 22,
2000) (finding confusing similarity where Respondent’s domain name combines
Complainant’s mark with a generic term that has an obvious relationship to
Complainant’s business); see also Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18,
2000) (finding that, by misspelling words and adding letters to words, a
Respondent does not create a distinct mark but nevertheless renders the domain
name confusingly similar to Complainant’s marks).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant has alleged that Respondent does not have rights or legitimate interests in the disputed domain names. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). Due to Respondent’s failure to respond to the Complaint, the Panel assumes that Respondent does not have rights or legitimate interests in the disputed domain names. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that, where the complainant has asserted that respondent does not have rights or legitimate interests with respect to the domain name, it is incumbent on respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent does not have rights or legitimate interests is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Respondent is using the disputed domain names to redirect
Internet users to commercial websites that feature pop-up advertisements and
third-party goods and services that compete with Complainant. Respondent’s use of domain names that are
confusingly similar to Complainant’s marks to redirect Internet users
interested in Complainant’s goods and services to websites that offer goods and
services unrelated to Complainant’s business is not a use in connection with a bona
fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a
legitimate noncommercial or fair use of the domain names pursuant to Policy ¶
4(c)(iii). See Wells Fargo & Co. v.
Party Night Inc. FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (holding
that the respondent’s use of “confusingly similar derivatives of Complainant’s
WELLS FARGO mark to divert Internet users to websites featuring pop-up
advertisements” was not a bona fide offering of goods or services); see
also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum
Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users
seeking Complainant's website to a website of Respondent and for Respondent's
benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i)
and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”);
see also Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27,
2002) (finding that the respondent’s use of a confusingly similar domain name
to operate a pay-per-click search engine, in competition with the complainant,
was not a bona fide offering of goods or services); see also
Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23,
2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market
products that compete with Complainant’s goods does not constitute a bona fide
offering of goods and services.”).
Moreover, Respondent has offered no evidence and there is no evidence in the record suggesting that Respondent is commonly known by the disputed domain names. Thus, Respondent has not established rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because the respondent was not commonly known by the disputed domain name nor was the respondent using the domain name in connection with a legitimate or fair use).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the disputed domain names, which are confusingly similar to Complainant’s marks, to redirect Internet users to Respondent’s commercial websites that feature goods and services that compete with Complainant’s business. The Panel finds that such use constitutes disruption and is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business); see also Puckett v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
Respondent’s use of confusingly similar domain names to divert Internet users searching for Complainant’s services to Respondent’s commercial websites demonstrates Respondent’s intent to attract Internet users to its websites by creating confusion with Complainant’s AOL, INSTYLE and AIM marks. The registration and use of domain names that are confusingly similar to Complainant’s marks to divert Internet users for Respondent’s commercial gain is evidence of bad faith registration and use under Policy ¶4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding the respondent registered and used the domain name in bad faith pursuant to Policy ¶4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <aolpayment.com>, <instylehome.com> and <aimq.com> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: January 25, 2006
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