National Arbitration Forum
DECISION
AOL LLC v. Raj Kumar
Claim Number: FA0609000804768
PARTIES
Complainant is AOL LLC (“Complainant”), represented by James R. Davis, of Arent Fox PLLC, 1050 Connecticut Avenue, NW, Washington, DC 20036. Respondent is Raj Kumar (“Respondent”), 34 Lucille Court, Piscataway, NJ 08854.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <aolindia.com>,
registered with Go Daddy Software, Inc.
PANEL
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.
Flip Petillion as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on September 25, 2006; the National Arbitration Forum received a
hard copy of the Complaint on September 26, 2006.
On September 25, 2006, Go Daddy Software, Inc. confirmed by e-mail to
the National Arbitration Forum that the <aolindia.com>
domain name is registered with Go Daddy Software, Inc. and that the Respondent
is the current registrant of the name.
Go Daddy Software, Inc. has verified that Respondent is bound by the Go
Daddy Software, 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 September 26, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of October 16, 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@aolindia.com by e-mail.
An electronic copy of the Response was received on October 16,
2006. However, the National Arbitration
Forum did not receive a hard copy of the Response. The National Arbitration Forum does not consider this Response to
be in compliance with ICANN Rule #5 (a).
On October 24, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Flip Petillion as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
makes the following assertions:
1.
The <aolindia.com> domain name is confusingly similar to Complainant's mark.
2. Respondent
has no rights or legitimate interest in the <aolindia.com> domain name.
3.
Respondent has registered and used the <aolindia.com>
domain name in bad faith.
B.
Respondent
As Respondent only filed an electronic copy, which was received by the
National Arbitration Forum on October 16, 2006, and as the National Arbitration
Forum did not receive a hard copy of the Response, the Panel is of the opinion
that this Response cannot be considered to be in compliance with ICANN Rule #5
(a). It is therefore disregarded.
FINDINGS
1.
Complainant is the owner of numerous trademark registrations
worldwide for the mark AOL. AOL
registered and uses its AOL mark in connection with, among other things,
“computer services, namely leasing access time to computer databases, computer
bulletin boards, computer networks, and computerized research and reference
materials, in the fields of business, finance, news, weather, sports, computing
and computer software, games, music, theater, movies, travel, education,
lifestyles, hobbies and topics of general interest; computerized dating
services; computer consultation services; computerized
shopping via telephone and computer terminals in the fields of computer goods
and services and general consumer goods” and “telecommunications services, namely
electronic transmission of data, images, and documents via computer
terminals; electronic mail services;
and facsimile transmission.” (emphasis added).
2.
Complainant uses its mark AOL.COM in connection with the
official AOL Internet Web site.
3.
Respondent registered the <aolindia.com> domain name on November 28, 1999.
4.
Complainant argues that, long prior to Respondent’s
registration of “AOLINDIA.COM,” and at least as early as 1989 for the mark AOL,
and 1992 for the mark AOL.COM, AOL adopted and began using its marks in
connection with computer online services and other Internet-related
services. The distinctive AOL mark is
used and promoted in the U.S., India and around the world in connection with
providing a broad range of information and services over the Internet and at
the proprietary AOL online system.
5.
Complainant argues that, many years after AOL's adoption and
first use of its mark, Respondent registered the <aolindia.com> domain name with, according to
complainant, a bad faith intent to profit from the registration and use of the
domain. According
to Complainant, Respondent has no rights or legitimate interests in the
infringing domain.
6. Complainant filed the Complaint on September 25, 2006.
DISCUSSION
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 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark
or service mark in which the Complainant has rights;
(2)
the 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.
Identical and/or Confusingly
Similar
Complainant asserts that it has established rights in the AOL mark pursuant to Policy ¶ 4(a)(i) through its federal trademark registrations for the mark with the United States Patent and Trademark Office (“USPTO”) (i.e., Reg. No. 1,977,731 issued June 4, 1996). In AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006), the panel found that the complainant’s evidence of its registration of the AOL mark with the USPTO established the complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). Moreover, the panel in VICORP Rests., Inc. v. Triantafillos, FA 485933 (Nat. Arb. Forum July 14, 2005), concluded that the complainant established rights in the BAKERS SQUARE mark under Policy ¶ 4(a)(i) by registering it with the USPTO. Therefore, the Panel in this case finds that Complainant’s trademark registrations for the AOL mark with the USPTO demonstrate Complainant’s rights in the mark per Policy ¶ 4(a)(i).
Complainant contends that Respondent’s <aolindia.com> domain name is confusingly similar to its AOL mark pursuant to Policy ¶ 4(a)(i). Complainant alleges that the disputed domain name incorporates Complainant’s AOL mark in its entirety, with the addition of the geographic term, “india,” and the generic top-level domain (“gTLD”) “.com.” In VeriSign, Inc. v. Tandon, D2000-1216 (WIPO Nov. 16, 2000), the panel found confusing similarity between the complainant’s VERISIGN mark and the <verisignindia.com> and <verisignindia.net> domain names where the respondent added the word “India” to the complainant’s mark. Similarly, in Ticketmaster Corp. v. Kumar, FA 744436 (Nat. Arb. Forum Aug. 17, 2006), the panel held that the <indiaticketmaster.com> domain name was confusingly similar to the complainant’s TICKETMASTER mark for purposes of Policy ¶ 4(a)(i). Additionally, prior panels have found that the addition of a gTLD does not negate the creation of confusing similarity between a domain name and a mark. In Valeant Pharms. Int’l v. Carpela, D2005-0786 (WIPO Sept. 2, 2005), the panel concluded that the addition of the gTLD “.com” to the complainant’s CESAMET mark did not sufficiently distinguish the <cesamet.com> domain name from the mark.
Therefore, the Panel in this case
finds that Respondent’s disputed domain name is confusingly similar to
Complainant’s mark pursuant to Policy ¶ 4(a)(i), because Respondent’s <aolindia.com> domain name features
Complainant’s mark with the addition of a geographic term and the gTLD
“.com.”
Rights or Legitimate Interests
Complainant
must establish a prima facie case that Respondent lacks rights or
legitimate interests in the disputed domain name pursuant to Policy ¶
4(a)(ii). However, once Complainant
demonstrates a prima facie case, the burden shifts to Respondent to
prove that it has rights or legitimate interests in the disputed domain
name. See Do The Hustle, LLC v.
Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the
complainant has asserted that the respondent has no rights or legitimate
interests with respect to the domain name, it is incumbent on the 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 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).
Complainant
avers that Respondent is not commonly known by the <aolindia.com> domain
name. Complainant also contends that
Respondent is not licensed or authorized by Complainant to use Complainant’s
AOL mark.
The
Panel is of the opinion that, as Respondent has not shown that he is commonly
known by the disputed domain name, Respondent lacks rights or legitimate
interests with respect to the disputed domain name pursuant to Policy ¶
4(c)(ii). See RMO, Inc. v.
Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶
4(c)(ii) “to require a showing that one has been commonly known by the domain
name prior to registration of the domain name to prevail”); 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).
Furthermore,
the Panel finds that Respondent has not used the <aolindia.com>
domain name in connection with either a bona fide offering of
goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial
or fair use under Policy ¶ 4(c)(iii), as the
disputed domain name formerly resolved to a commercial website featuring
advertisements offering to sell the domain name.
More recently, Respondent’s <aolindia.com> domain name
resolved to a website featuring several links to third-party websites, some of which
compete with Complainant’s business. In light of Complainant’s offering of telecommunication
and electronic mail services under the AOL mark as part of Complainant’s
business, the Panel finds that Respondent used the <aolindia.com> domain name
with the intent to divert Internet users to an unrelated website for
Respondent’s commercial benefit. The Panel
concludes that Respondent has not used the disputed domain name in a manner
consistent with either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii). See 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 Charles Letts & Co. v. Citipublications, FA 692150 (Nat.
Arb. Forum July 17, 2006) (finding 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)).
Additionally, as Respondent’s
<aolindia.com> domain name formerly
resolved to a website offering to sell the disputed domain name registration,
the Panel finds that Respondent’s conduct in offering the disputed domain name
registration for sale demonstrates neither 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). See Mothers
Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27,
2003) (holding that under the circumstances, the Respondent’s apparent
willingness to dispose of its rights in the disputed domain name suggested that
he lacked rights or legitimate interests in the domain name); see also Wal-Mart Stores, Inc. v. Stork,
D2000-0628 (WIPO Aug. 11, 2000) (finding the respondent’s conduct purporting to
sell the domain name suggests it has no legitimate use).
Registration and Use in Bad Faith
As the <aolindia.com> domain name formerly resolved to a website offering to sell the disputed domain name registration, the Panel finds that Respondent’s conduct indicates bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(i). In Banca Popolare Friuladria S.p.A. v. Zago, D2000-0793 (WIPO Sept. 3, 2000), the panel found bad faith where the respondent offered the domain names for sale. Moreover, the panel in Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000), found bad faith where the respondent offered the disputed domain names for sale. Therefore, the Panel in the instant case may find that Respondent registered and used the <aolindia.com> domain name in bad faith under Policy ¶ 4(b)(i).
Furthermore, as Respondent registered and is using the disputed domain name to operate a website featuring links to third-party websites, some of which directly compete with Complainant’s business, the Panel finds that Respondent’s use thereby of the <aolindia.com> domain name may potentially cause confusion among Internet users as to the affiliation between Complainant and Respondent’s website. As a result, the Panel finds that Respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See State Fair of Tex. v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where the respondent registered the domain name <bigtex.net> to infringe on the complainant’s goodwill and attract Internet users to the respondent’s website); see also 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).
Respondent has been the subject of prior domain name disputes, demonstrating Respondent’s continued registration and use of domain name registrations in bad faith. The Panel considers this as an additional factor in determining bad faith registration and use under Policy ¶ 4(a)(iii). See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (“The requirement in the ICANN Policy that a complainant prove that domain names are being used in bad faith does not require that it prove in every instance that a respondent is taking positive action. Use in bad faith can be inferred from the totality of the circumstances even when the registrant has done nothing more than register the names.”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”).
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <aolindia.com>
domain name be TRANSFERRED from Respondent to Complainant.
Flip Petillion, Panelist
Dated: November 6, 2006
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