AOL LLC v. Justen Cooper d/b/a Tech Guy Services
Claim Number: FA0604000682407
Complainant is AOL LLC (“Complainant”), represented by James R. Davis of Arent Fox PLLC, 1050 Connecticut Avenue, NW, Washington, DC, 20036. Respondent is Justen Cooper d/b/a Tech Guy Services (“Respondent”). Respondent’s attorney was formerly David Salim of Law Offices of Hicks, Schmidlin & Salim, P.C., 5409 Gateway Centre, Suite E, Flint, MI, 48507, however, during the course of the dispute, the Forum received notice that Respondent’s attorney withdrew.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <aolblogger.com>, registered with Direct Information Pvt Ltd d/b/a Publicdomainregistry.com.
The undersigned certifies that she has 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 April 18, 2006; the National Arbitration Forum received a hard copy of the Complaint April 20, 2006.
On April 21, 2006, Direct Information Pvt Ltd d/b/a Publicdomainregis confirmed by e-mail to the National Arbitration Forum that the <aolblogger.com> domain name is registered with Direct Information Pvt Ltd d/b/a Publicdomainregis and that Respondent is the current registrant of the name. Direct Information Pvt Ltd d/b/a Publicdomainregis has verified that Respondent is bound by the Direct Information Pvt Ltd d/b/a Publicdomainregis registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On April 21, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 11, 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@aolblogger.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 17, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson 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." 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 makes the following assertions:
1. The domain name that Respondent registered, <aolblogger.com>, is confusingly similar to Complainant’s AOL mark.
2. Respondent has no rights to or legitimate interests in the <aolblogger.com> domain name.
3. Respondent registered and used the <aolblogger.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, AOL LLC, is a leading Internet service provider. Complainant uses the AOL mark in connection with a wide variety of computer services, including computer bulletin boards, computer networks and computerized research and reference materials. Complainant also offers blog services under the AOL mark.
Complainant holds numerous trademark registrations for the AOL mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,977,731 issued June 4, 1996; Reg. No. 1,984,337 issued July 2, 1996).
Respondent registered the <aolblogger.com> domain name December 7, 2005. Respondent uses the disputed domain name to operate a website entitled “American Outdoor Living: The Best Outdoor Blog Site,” which provides online blogging services similar to those offered by Complainant under its AOL mark.
Complainant contacted Respondent concerning the <aolblogger.com> domain name that Respondent had registered; but rather than ceasing his use of a domain name containing Complainant’s mark, Respondent invited Complainant to make an offer to purchase the disputed domain name registration.
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 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.”).
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:
(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 established using extrinsic evidence in this
proceeding that it has rights in the AOL mark through registration 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 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.”).
Respondent registered a domain
name that is confusingly similar to Complainant’s AOL mark pursuant to Policy ¶ 4(a)(i). The <aolblogger.com> domain name incorporates Complainant’s entire registered
mark and merely adds the term “blogger,” which describes a component of
Complainant’s online services. Panels
have held that the mere addition of a generic term describing a complainant’s
business does not sufficiently differentiate a domain name from a complainant’s
mark pursuant to Policy ¶ 4(a)(i). See
Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22,
2000) (finding confusing similarity where the respondent’s domain name combines
the complainant’s mark with a generic term that has an obvious relationship to
the complainant’s business); see also Brown & Bigelow, Inc. v. Rodela,
FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the
<hoylecasino.net> domain name is confusingly similar to the complainant’s
HOYLE mark, and that the addition of “casino,” a generic word describing the
type of business in which the complainant is engaged, does not take the disputed
domain name out of the realm of confusing similarity). Therefore, the
disputed domain name that Respondent registered, <aolblogger.com>,
is confusingly similar to Complainant’s AOL mark under Policy ¶ 4(a)(i).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant established that it has rights to and legitimate
interests in the mark contained in its entirety within the disputed domain
name. Complainant contends that
Respondent lacks rights and legitimate interests in the <aolblogger.com>
domain name. Once Complainant makes a prima
facie case in support of its allegations, the burden then shifts to
Respondent to show it does have rights or legitimate interests pursuant to
Policy ¶ 4(a)(ii). See 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 has no right or legitimate interest is sufficient to shift the
burden of proof to the respondent to demonstrate that such a right or
legitimate interest does exist); see also G.D. Searle v. Martin Mktg.,
FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission
constitutes a prima facie case under the Policy, the burden effectively
shifts to Respondent. Respondent’s failure to respond means that Respondent has
not presented any circumstances that would promote its rights or legitimate
interests in the subject domain name under Policy ¶ 4(a)(ii).”).
Respondent’s failure to answer the Complaint raises a presumption that Respondent has no rights or legitimate interests in the <aolblogger.com> domain name. See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any rights or legitimate interests in the domain name”); see also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond).
However, the Panel will now
examine the record to determine if Respondent has rights or legitimate
interests under Policy ¶ 4(c). The
WHOIS information lists “Justen Cooper d/b/a Tech Guy Services” as the
registrant of the <aolblogger.com> domain name, and no other
evidence in the record suggests that Respondent Cooper is commonly known by the
<aolblogger.com> domain name.
Consequently, Respondent has not established rights or legitimate interests
in the disputed domain name 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 interest 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 Great S.
Wood Preserving, Inc. v. TFA Assocs., FA 95169 (Nat. Arb. Forum Aug. 5, 2000) (finding that the respondent
was not commonly known by the domain name <greatsouthernwood.com> where
the respondent linked the domain name to <bestoftheweb.com>).
Moreover, Respondent’s <aolblogger.com> domain name, which is confusingly similar to Complainant’s AOL mark, resolves to a website providing online blogging services that seek to compete with Complainant’s own services under the AOL mark. In Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002), the respondent was using a domain name confusingly similar to the complainant’s AMERITRADE mark to divert Internet users to a competing financial services website. The panel concluded that redirecting Internet users to a competing website could not be deemed a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), and that such use for Respondent’s own commercial gain could not be a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). Id.
Because Respondent has also used the disputed domain name to redirect Internet users to a competing online blogging website, Respondent’s use of the disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial fair use pursuant to Policy ¶ 4(c)(iii). See Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
Complainant urges that Respondent acted in bad faith. Respondent has invited Complainant to make
an offer to purchase the disputed domain name registration. In Bank of Am.
Corp. v. Nw. Free Cmty. Access, FA 180704
(Nat. Arb. Forum Sept. 30, 2003), the panel stated, “Respondent's general offer
of the disputed domain name registration for sale establishes that the domain
name was registered in bad faith under Policy ¶ 4(b)(i).” Therefore, Respondent’s general offer to
sell the <aolblogger.com> domain name registration to Complainant
permits the finding of bad faith registration and use pursuant to Policy ¶
4(b)(i). See Am. Online, Inc. v. Avrasya Yayincilik
Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad
faith where the respondent offered domain names for sale).
Furthermore, by registering a domain name that is
confusingly similar to Complainant’s AOL mark, and by using it to operate a
competing blogging website, Respondent has engaged in conduct that permits a
finding that Respondent registered the domain name for the purpose of
disrupting Complainant’s business. Such
use of the disputed domain name to divert and disrupt Complainant’s business
constitutes 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, Individually v. Miller,
D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted
business from the complainant to a competitor’s website in violation of Policy
¶ 4(b)(iii)).
Respondent registered and is using the <aolblogger.com>
domain name in bad faith pursuant to Policy ¶ 4(b)(iv), because Respondent is
using the disputed domain name to redirect Internet users seeking Complainant’s
online blogging services to Respondent’s own website at the disputed domain
name offering competing blogging services.
In Gardens Alive, Inc. v. D&S Linx,
FA 203126 (Nat. Arb. Forum Nov. 20, 2003), the panel stated, “Respondent
registered and used the <my-seasons.com> domain name in bad faith
pursuant to Policy ¶¶ 4(b)(iii) and (iv) because Respondent is using a domain
name that is confusingly similar to the MYSEASONS mark for commercial benefit
by diverting Internet users to the <thumbgreen.com> website, which sells
competing goods and services.”
In this case, Respondent is also diverting Internet users to a website offering competing services and is thus taking advantage of the confusing similarity between the <aolblogger.com> domain name and Complainant’s AOL mark in order to profit from the goodwill associated with the mark. Therefore, Respondent registered and used the <aolblogger.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where the respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of the complainant).
The Panel finds that Complainant satisfied 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 <aolblogger.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: May 31, 2006.
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