AOL LLC v. Andy Tran d/b/a Smartbuy and Smartbuy Corporation
Claim Number: FA0607000746914
Complainant is AOL LLC (“Complainant”), represented by James R. Davis, of Arent Fox PLLC, 1050 Connecticut Avenue, NW, Washington, DC 20036. Respondent is Andy Tran d/b/a Smartbuy and Smartbuy Corporation (“Respondent”), 1442 East Lincoln Avenue, Suite 370, Orange, CA 92865-1934.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are: <openaol.com>, <tpaol.com>, <uaol.net> and <qaol.net>, registered with Enom, Inc.; and <topaol.net>, <aolv.com>, <haol.net>, <mapwest.net>, <remoteaim.com> and <aimextreme.com>, registered with Spot Domain Llc.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 11, 2006; the National Arbitration Forum received a hard copy of the Complaint on July 12, 2006.
On July 12, 2006, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <openaol.com>, <tpaol.com>, <uaol.net> and <qaol.net> domain names are registered with Enom, Inc., and that Respondent is the current registrant of the names. Enom, Inc. has verified that Respondent is bound by the Enom, 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 July 13, 2006, Spot Domain Llc. confirmed by e-mail to the National Arbitration Forum that the <topaol.net>, <aolv.com>, <haol.net>, <mapwest.net>, <remoteaim.com> and <aimextreme.com> domain names are registered with Spot Domain Llc., and that Respondent is the current registrant of the names. Spot Domain Llc. has verified that Respondent is bound by the Spot Domain Llc. 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 July 14, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 3, 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@openaol.com, postmaster@topaol.net, postmaster@aolv.com, postmaster@tpaol.com, postmaster@haol.net, postmaster@uaol.net, postmaster@qaol.net, postmaster@mapwest.net, postmaster@remoteaim.com, postmaster@aimextreme.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 10, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 <openaol.com>, <topaol.net>, <aolv.com>, <tpaol.com>, <haol.net>, <uaol.net>, <qaol.net>, <mapwest.net>, <remoteaim.com> and <aimextreme.com> domain names are confusingly similar to Complainant’s AOL, MAPQUEST and AIM marks.
2. Respondent does not have any rights or legitimate interests in the <openaol.com>, <topaol.net>, <aolv.com>, <tpaol.com>, <haol.net>, <uaol.net>, <qaol.net>, <mapwest.net>, <remoteaim.com> and <aimextreme.com> domain names.
3. Respondent registered and used the <openaol.com>, <topaol.net>, <aolv.com>, <tpaol.com>, <haol.net>, <uaol.net>, <qaol.net>, <mapwest.net>, <remoteaim.com> and <aimextreme.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, AOL LLC, is a global leader in the computer, entertainment and online services industry and has millions of subscribers and users around the world. Complainant owns numerous trademark registrations, including the AOL mark (Reg. No. 1,977,731 issued June 4, 1996), the MAPQUEST mark (Reg. No. 2,145,962 issued March 24, 1998) and the AIM mark (Reg. No. 2,423,368 issued January 23, 2001).
Respondent registered the following disputed domain names
accordingly: <aolv.com> on October 3, 2002; <topaol.net>
on November 23, 2003; <tpaol.com> on November 23, 2003; <aimextreme.com>
on December 6, 2003; <haol.net> on December 14, 2003;
<mapwest.net> on January 22, 2004; <uaol.net> on February, 26, 2004; <openaol.com> on March 2, 2004; <qaol.net> on March 8, 2004; and <remoteaim.com> on September 7, 2005. The disputed domain names resolve to websites that promote Complainant and its competitors presumably in exchange for royalties for each click-through referral generated by the advertisements.
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 obtained rights in the AOL, MAPQUEST and AIM
marks through registration of the marks with the United States Patent and
Trademark Office (“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 Smart Design LLC v. Hughes,
D2000-0993 (WIPO Oct. 18, 2000) (holding that ICANN Policy ¶ 4(a)(i) does not
require the complainant to demonstrate ‘exclusive rights,’ but only that the
complainant has a bona fide basis for making the complaint in the first
place).
Complainant contends that each of the disputed domain names
are confusingly similar to one of its aforementioned marks. The <aolv.com>, <haol.net>,
<uaol.net> and <qaol.net> domain names all contain
Complainant’s AOL mark in its entirely and add an additional letter and a
generic top-level domain (“gTLD”). For
the purposes of Policy ¶ 4(a)(i), the Panel finds that the addition of a single
letter to a distinctive mark, such as AOL, is insufficient to differentiate the
disputed domain names from the mark.
See Am. Online, Inc. v. Tencent Commc’ns Corp., FA
93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that <oicq.net> and
<oicq.com> are confusingly similar to the complainant’s mark, ICQ);
see also Am. Online, Inc. v. garybush co uk, FA 360612 (Nat. Arb. Forum
Dec. 22, 2004) (finding the <0aol.com> domain name to be confusingly
similar to the complainant’s AOL mark); see also Rollerblade, Inc. v.
McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the
domain name such as “.net” or “.com” does not affect the domain name for the
purpose of determining whether it is identical or confusingly similar).
The <tpaol.com> domain name contains
Complainant’s AOL mark in its entirety and adds two additional letters and a
gTLD. The Panel finds that the addition
of two indiscriminate letters to Complainant’s
distinctive mark fails to differentiate the <tpaol.com> domain
name for the purposes of Policy ¶ 4(a)(i).
The Panel emphasizes the low threshold required by Policy ¶ 4(a)(i) for
confusing similarity between a domain name and a distinctive mark, especially
in disputes where Respondent fails to submit a Response. See Desktop Media, Inc. v. Desktop Media,
Inc., FA 96815 (Nat. Arb. Forum Apr. 12, 2001) (“[F]or the limited purposes
of the domain name dispute resolution process[,] a low threshold of proof is
all that is required to meet the first element ….”); see also Am. Online, Inc. v. Amigos On Line RJ, FA 115041
(Nat. Arb Forum Aug. 28, 2002) (“Previous Panels have consistently held that
the addition of a string of indiscriminate letters to a famous mark in a second
level domain name does not differentiate the domain name from the mark.”); see also Am. Online, Inc. v. Tullo, FA
150811 (Nat. Arb. Forum Apr. 15, 2003) (finding that the prefix “3d” did
nothing to distinguish the domain name from the complainant’s registered
marks); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127
(WIPO Apr. 22, 2000) ("[T]he addition of the generic top-level domain
(gTLD) name ‘.com’ is . . . without legal significance
since use of a gTLD is required of domain name registrants . . . .").
The <topaol.net>, <openaol.com>,
<aimextreme.com> and <remoteaim.com> domain names contain one of Complainant’s
AOL or AIM marks in its entirety and contain an additional generic or
descriptive term, such as “top,” “open,” “extreme” or “remote.” The Panel finds that the addition of a
generic or descriptive term to Complainant’s AOL or AIM marks fails to
differentiate the domain names from Complainant’s marks for the purposes of
Policy ¶ 4(a)(i). See Am. Online,
Inc. v. Oxford Univ., FA 114654 (Nat. Arb. Forum Aug. 21, 2002) (the panel
concluded that the addition of generic or descriptive terms, such as “prime,”
did not create distinct marks for the purposes of Policy ¶ 4(a)(i)); see
also Am. Online, Inc. v. Miller, FA 180625 (Nat. Arb. Forum Sept. 15, 2003)
(the addition of the descriptive word “hot” does not dispell any confusion
arising from the inclusion of Complainant’s mark in the domain name); see
also Am. Online, Inc. v. Karandish, FA 563833 (Nat. Arb. Forum Nov. 2,
2005) (finding that the addition of the term “talk” to the complainant’s AIM
mark did not successfully differentiate the <aimtalk.com> domain name
from Complainant’s mark).
The <mapwest.net> domain name exchanges the “qu” in Complainant’s mark for a “w” to create a phonetically similar rendition of Complainant’s MAPQUEST mark. The Panel finds that the <mapwest.net> domain name is confusingly similar to Complainant’s MAPQUEST mark because of the obvious phonetical similarity. See Am. Online, Inc. v. Triple E Holdings Ltd., FA 281584 (Nat. Arb. Forum July 15, 2004) (“Words that are spelled differently but are phonetically similar do not negate the confusing similarity of Respondent’s domain name pursuant to Policy ¶ 4(a)(i)”); see also Am. Online, Inc v. David, FA 104980 (Nat. Arb. Forum Apr. 10, 2002) (concluding that the misspelling of a mark does not diminish the confusingly similar nature between the mark and the disputed domain name); see also Am. Online, Inc. v. Peppler, FA 103437 (Nat. Arb. Forum Feb. 22, 2002) (finding the <mapcrest.com> domain name to be confusingly similar to Complainant’s MAPQUEST mark because of its phonetic similarity).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Pursuant to Policy ¶ 4(a)(ii), Complainant bears the burden to make a prima facie showing that Respondent lacks rights and legitimate interests in the disputed domain names. Once such a prima facie showing is established, the burden shifts to Respondent to affirmatively prove that it had rights and legitimate interests in the disputed domain names. See 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).”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”).
Respondent’s failure to submit a Response in this dispute raises a presumption that Respondent lacks rights and legitimate interests in the disputed domain names. See Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the panel and the respondent did not come forward to suggest any right or interest it may have possessed); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names). The Panel, however, will analyze the record to determine if Respondent has rights or legitimate interests in the disputed domain names.
Complainant contends that the disputed domain names
resolve to Respondent’s commercial websites that feature advertisements
relating to competing and non-competing websites. The Panel finds that the use of the confusingly similar domain
names to display commercial links and advertisements to competing and
non-competing websites neither amounts to a bona fide offering of goods
or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial use
pursuant to Policy ¶ 4(c)(iii). See
Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (holding
that the respondent’s use of the disputed domain name to host a series of
hyperlinks and a banner advertisement was neither a bona fide offering
of goods or services nor a legitimate noncommercial or fair use of the domain
name); see also Am. Online, Inc. v. Advanced
Membership Servs., Inc., FA 180703 (Nat.
Arb. Forum Sept. 26, 2003) (“Respondent's registration and use of the
<gayaol.com> domain name with the intent to divert Internet users to
Respondent's website suggests that Respondent has no rights to or legitimate
interests in the disputed domain name pursuant to Policy Paragraph 4(a)(ii).”).
Moreover, Complainant contends that Respondent is
not commonly known by any of the disputed domain names. The only evidence in the record regarding
Respondent’s identity is from the WHOIS registry, where “SmartBuy” and “Andy
Tran” are listed as the registrant of the disputed domain names. Because there is no other evidence to
suggest otherwise, the Panel must find that Respondent is not commonly known by
any of the disputed domain names. See
Wells Fargo & Co. v. Onlyne Corp. Services11,
Inc., FA 198969 (Nat. Arb. Forum Nov. 17,
2003) (“Given the WHOIS contact information for the disputed domain [name], one
can infer that Respondent, Onlyne Corporate Services11, is not commonly known
by the name ‘welsfargo’ in any derivation.”); see also Am.
Online, Inc. v. World Photo Video & Imaging Corp., FA 109031 (Nat. Arb.
Forum May 13, 2002) (finding that the respondent was not commonly known by <aolcamera.com>
or <aolcameras.com> because the respondent was doing business as “Sunset
Camera” and “World Photo Video & Imaging Corp.”).
The Panel finds that Policy ¶ 4(a)(ii) has been
satisfied.
Complainant alleges that Respondent is using the disputed
domain names to redirect unwitting Internet users to a commercial website that
features hyperlinks and advertisements to competing and non-competing
websites. It is reasonable to infer
that Respondent is receiving commercial gain from such a use of the disputed
domain names. Additionally, due to the
confusingly similar nature of the disputed domain names to Complainant’s marks,
it is likely that Internet users will be confused as to Complainant’s
sponsorship of or affiliation with the resulting websites. Accordingly, the Panel finds that Respondent
has registered and used the disputed domain names in bad faith pursuant to Policy
¶ 4(b)(iv). See Bama Rags, Inc. v. Zuccarini, FA 94381
(Nat. Arb. Forum May 8, 2000) (finding bad faith where the respondent used a
misspelling of the complainant’s famous mark to attract Internet users to a
series of advertisements); see also ESPN, Inc. v. Ballerini, FA 95410 (Nat.
Arb. Forum Sept. 15, 2000) (finding bad faith where the respondent linked the
domain name to another domain name, <iwin.com>, presumably receiving a
portion of the advertising revenue from the site by directing Internet traffic
there, thus using a domain name to attract Internet users for commercial gain).
Furthermore, the Panel
finds that Respondent’s use of the disputed domain names to divert Internet
users to its own website where it advertised competitors of Complainant
constitutes diversion and evidences bad faith pursuant to Policy ¶
4(b)(iii). See EBAY, Inc. v. MEOdesigns, D2000-1368
(Dec. 15, 2000) (finding that the respondent registered and used the domain
name <eebay.com> in bad faith where the respondent has used the domain
name to promote competing auction sites); 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)).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <openaol.com>, <topaol.net>, <aolv.com>, <tpaol.com>, <haol.net>, <uaol.net>, <qaol.net>, <mapwest.net>, <remoteaim.com> and <aimextreme.com> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: August 22, 2006
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