AOL LLC v. Ed Johnson d/b/a Johnson and Sons Systems
Claim Number: FA0607000754070
Complainant is AOL LLC (“Complainant”), represented by James R. Davis, II, of Arent Fox PLLC, 1050 Connecticut Avenue, NW, Washington, DC 20036. Respondent is Ed Johnson d/b/a Johnson and Sons Systems (“Respondent”), 1015 Delta Square, Markua, II 4560 MZ.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <compuseve.com>, registered with Enom, Inc.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 18, 2006; the National Arbitration Forum received a hard copy of the Complaint on July 19, 2006.
On July 18, 2006, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <compuseve.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. 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 26, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 15, 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@compuseve.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 19, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <compuseve.com> domain name is confusingly similar to Complainant’s COMPUSERVE mark.
2. Respondent does not have any rights or legitimate interests in the <compuseve.com> domain name.
3. Respondent registered and used the <compuseve.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, AOL LLC, holds a valid trademark registration for the COMPUSERVE mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,654,785 issued August 27, 1991). The COMPUSERVE mark has been used in commerce since at least as early as 1970 in connection with a broad range of services, including electronic mail services, computerized financial information services, and computer information storage and retrieval services. Complainant holds the domain name registration for the <compuserve.com> domain name, which Complainant uses to operate a website providing its services on the Internet under the COMPUSERVE mark.
Respondent, Ed Johnson d/b/a Johnson and Sons Systems, registered the <compuseve.com> domain name on June 25, 2005. Respondent’s disputed domain name resolves to a commercial website featuring links to third-party websites that compete with Complainant’s computer-related services business.
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 provides evidence of a trademark registration for the COMPUSERVE mark with the USPTO. As a result, the Panel finds that Complainant’s federal trademark registration sufficiently establishes Complainant’s rights in the mark in satisfaction of Policy ¶ 4(a)(i). See AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (“Complainant has submitted evidence of its registration of the AOL mark with the USPTO. The Panel finds that such evidence establishes Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”); see also Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (“Complainant owns a United States Patent and Trademark Office (‘USPTO’) registration issued September 5, 2000 for the RBK mark. This trademark registration is adequate to establish rights pursuant to Policy ¶ 4(a)(i).”).
The Panel finds that Respondent’s <compuseve.com> domain name is confusingly similar to Complainant’s COMPUSERVE mark pursuant to Policy ¶ 4(a)(i). Respondent’s disputed domain name consists of a misspelling of Complainant’s registered mark, omitting the letter “r” from the mark. The disputed domain name also adds the generic top-level domain (“gTLD”) “.com” to Complainant’s mark. Prior panels have concluded that the omission of a single letter from a mark in a domain name does not create a sufficiently distinct domain name, and thus does not avoid the creation of confusing similarity under Policy ¶ 4(a)(i). Moreover, previous panels have held that the addition of a gTLD is irrelevant in determining confusing similarity under Policy ¶ 4(a)(i). Therefore, the Panel in the instant case finds that Respondent’s <compuseve.com> domain name is confusingly similar to Complainant’s COMPUSERVE mark in accord with Policy ¶ 4(a)(i). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the addition of the letter “c” to the complainant’s SAFLOK mark does not distinguish the <saflock.com> domain name from the mark under Policy ¶ 4(a)(i)); see also Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive); 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 Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Pursuant to Policy ¶ 4(a)(ii), Complainant initially bears the burden of demonstrating that Respondent lacks rights or legitimate interests with respect to the disputed domain name. Nevertheless, once Complainant establishes a prima facie case, the burden shifts to Respondent to demonstrate that it has rights or legitimate interests in connection with the disputed domain name under Policy ¶ 4(a)(ii). See 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”); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel finds that Complainant has sufficiently demonstrated a prima facie case and will evaluate the evidence on record to determine whether Respondent has any rights or legitimate interests with respect to the disputed domain name under Policy ¶ 4(c).
Based upon the evidence on record, the Panel finds that Respondent is not commonly known by the <compuseve.com> domain name pursuant to Policy ¶ 4(c)(ii). The WHOIS information fails to indicate that Respondent is known as the disputed domain name. Furthermore, Complainant asserts that Respondent is not licensed or otherwise authorized to use the COMPUSERVE mark. Therefore, the Panel finds that the evidence does not indicate that Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See 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 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).
Moreover, the Panel finds that the evidence on record does not evince rights or legitimate interests for Respondent in connection with the <compuseve.com> domain name under Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii). The evidence indicates that the disputed domain name resolves to a website providing links to third-party websites that offer computer-based services and products in competition with Complainant’s business. In Charles Letts & Co. v. Citipublications, FA 692150 (Nat. Arb. Forum July 17, 2006), the panel found that the respondent’s use of a domain name that was confusingly similar to the complainant’s mark to display links to the complainant’s competitors did not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). Similarly, in Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003), the panel held that the respondent used a domain name for commercial benefit by diverting Internet users to a website that sold goods and services similar to those offered by the complainant and thus, was not using the name in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use. Therefore, the Panel concludes that Respondent’s use of the <compuseve.com> domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s disputed domain name resolves to a commercial website
providing links to third-party websites in direct competition with
Complainant’s business. Thus, the Panel
finds that Respondent’s use of the <compuseve.com> domain name
demonstrates that Respondent registered and used the domain name in bad faith
pursuant to Policy ¶ 4(b)(iv). See
Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006)
(finding that the respondent engaged in bad faith registration and use by using
a domain name that was confusingly similar to the complainant’s mark to offer
links to third-party websites that offered services similar to those offered by
the complainant); see also 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 for several different
purposes, all of which redirected Internet users to other websites for
commercial gain).
Furthermore, the Panel
finds that Respondent has engaged in typosquatting, registering and using a
domain name featuring a common misspelling of Complainant’s mark in
order to divert Internet users that make an ordinary typing error. Consequently, the Panel concludes that
Respondent’s typosquatting activity indicates bad faith registration and use
pursuant to Policy ¶ 4(a)(iii). See
Myspace, Inc. v. Kang, FA 672160
(Nat. Arb. Forum June 19, 2006) (“Respondent misspells the Mark with intent to
intercept internet users from Complainant's web site, given the fact that
Complainant's website is a popular website and the Disputed Domain Name is a
misspelling of the Mark which is highly likely to occur. This typosquatting is evidence of bad
faith.”); see also Computerized Sec. Sys., Inc. v. Hu, FA
157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in
typosquatting, which is evidence of bad faith registration and use under Policy
¶ 4(a)(iii)).
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 <compuseve.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: September 1, 2006
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