AOL LLC v. junlong zheng aka OnlineNIC
Claim Number: FA0810001231096
Complainant is AOL LLC (“Complainant”), represented by James
R. Davis, of Arent Fox LLP,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <mapquestgasprices.com> and <gaspricesmapquest.com>, registered with Onlinenic, 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.
James A Crary as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 27, 2008; the National Arbitration Forum received a hard copy of the Complaint on October 29, 2008.
On November 6, 2008, OnlineNIC, Inc. confirmed by e-mail to the National Arbitration Forum that the <mapquestgasprices.com> and <gaspricesmapquest.com> domain names are registered with OnlineNIC, Inc. and that Respondent is the current registrant of the names. OnlineNIC, Inc. has verified that Respondent is bound by the OnlineNIC, 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 November 10, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 1, 2008 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@mapquestgasprices.com and postmaster@gaspricesmapquest.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 8,20088, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A Crary 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 <mapquestgasprices.com> and <gaspricesmapquest.com> domain names are confusingly similar to Complainant’s MAPQUEST mark.
2. Respondent does not have any rights or legitimate interests in the <mapquestgasprices.com> and <gaspricesmapquest.com> domain names.
3. Respondent registered and used the <mapquestgasprices.com> and <gaspricesmapquest.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, AOL LLC, is a widely recognized Internet corporation that owns the mark MAPQUEST as well as others that incorporate the MAPQUEST mark, such as MAPQUEST.COM. The United States Patent and Trademark Office (“USPTO”) issued trademark registrations for the MAPQUEST mark on October 24, 1996 (Reg. No. 2,129,378) and the MAPQUEST.COM mark on December 25, 2001(Reg. No. 2,523,220).
On
June 29, 2008, Respondent, junlong zheng, registered the <mapquestgasprices.com> and <gaspricesmapquest.com> domain names. The
disputed domain names resolve to landing websites containing links to
businesses other than AOL. For instance,
the <mapquestgasprices.com> domain name resolves to a website
containing links to mapping websites. Respondent has also been a
respondent in previous UDRP proceedings in which the then-disputed domain name
was transferred from Respondent to the respective complainants. See Yahoo! Inc. v. Junlong Zheng c/o OnlineNIC, FA 1142567 (Nat.
Arb. Forum March 25, 2008); see
also Victoria’s Secret Stores Brand Management, Inc. v. Junlong Zheng, FA
1194792 (Nat. Arb. Forum July 7, 2008); see
also Yahoo! Inc. v. junlong zheng c/o OnlineNIC, FA 1218583 (Nat. Arb.
Forum September 30, 2008); see also The
McGraw-Hill Companies, Inc. v. junlong zheng, FA 1222416 (Nat. Arb. Forum
October 9, 2008).
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.
The Panel finds that Complainant’s multiple registrations
with the USPTO are sufficient to establish Complainant’s rights in the MAPQUEST
mark pursuant to Policy ¶ 4(a)(i). See 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.”); see
also 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.”).
The <mapquestgasprices.com> and <gaspricesmapquest.com> domain names are confusingly similar to Complainant’s MAPQUEST mark pursuant to Policy ¶ 4(a)(i). The disputed domain names incorporate Complainant’s entire MAPQUEST mark. The addition of the generic terms “gas prices” creates consumer confusion as AOL provides gas price information through its MAPQUEST service. Moreover, the addition of the generic top-level domain (“gTLD”) “.com” does not negate the confusingly similar aspects of the Respondent’s domain name pursuant to Policy ¶ 4(a)(i). See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also 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).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant has made a prima facie case in support of its allegations, the burden shifts to the Respondent to prove it has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). The Panel finds that Complainant has established a prima facie case. 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”).
Due to Respondent’s failure to respond to the Complaint, the Panel will determine Respondent’s rights or legitimate interests under Policy ¶ 4(a)(ii) in light of Complainant’s undisputed representations. The Panel may accept the allegations and inferences in the Complaint as true unless clearly contradicted. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint.”); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the panel to draw adverse inferences from the respondent’s failure to reply to the complaint).
The disputed domain names resolve to websites offering links
to either new landing pages or third-party commercial websites, with material
referencing competitors of Complainant.
Respondent’s websites are assumed to be a pay-per-click (“PPC”) site
where Respondent garners referral fees when consumers click through to the
advertised links. Respondent is
exploiting the popularity of MAPQUEST and MAPQUEST.COM to attract confused
consumers to its website. The Panel
finds that Respondent has not used the disputed domain names in connection with
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). 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
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).”).
The Panel finds no evidence that Respondent is commonly known by either the <mapquestgasprices.com> or the <gaspricesmapquest.com> domain name. The WHOIS information identifies Respondent as “junlong zheng” and “OnlineNIC.” Without any further evidence, the Panel finds that Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); 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).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent has been the subject of several previous UDRP
proceedings in which the then-disputed domain name was transferred from
Respondent to the respective complainants.
See Yahoo! Inc.
v. Junlong Zheng c/o OnlineNIC, FA 1142567 (Nat. Arb. Forum March
25, 2008); see also Victoria’s Secret
Stores Brand Management, Inc. v. Junlong Zheng, FA 1194792 (Nat. Arb. Forum
July 7, 2008). The Panel considers this
as evidence bad faith registration and use of the disputed domain names
pursuant to Policy
¶ 4(b)(ii) as part of a pattern of registering
infringing domain names. See Westcoast Contempo Fashions Ltd. v.
Respondent’s use of the disputed domain names, which are
confusingly similar to Complainant’s mark, evidences bad faith registration and
use of the disputed domain names because of the interference these disputed
domain names create with Complainant’s services. Respondent’s website resolves to a list of
links to providers that directly compete with Complainant. The Panel finds that the evidence indicates
Respondent’s intent to disrupt Complainant’s business and take advantage of
Complainant’s goodwill surrounding its mark.
The Panel, therefore, find that Respondent engages in bad faith
registration and use pursuant to Policy ¶ 4(b)(iii). See Travant
Solutions, Inc. v. Cole, FA 203177 (Nat.
Arb. Forum Dec. 6, 2003) (“Respondent
registered and used the domain name in bad faith, pursuant to Policy ¶
4(b)(iii), because it is operating on behalf of a competitor of Complainant . .
.”); see
also Disney Enters., Inc. v. Noel,
FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name
confusingly similar to Complainant's mark to divert Internet users to a
competitor's website. It is a reasonable inference that Respondent's purpose of
registration and use was to either disrupt or create confusion for
Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii)
[and] (iv).”).
Respondent is likely receiving compensation in the form of click-through fees from its use of the confusingly similar disputed domain names. The Panel finds that this use is an attempt by Respondent to profit from the goodwill Complainant has established in its MAPQUEST mark. And this is further support in finding bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through the respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using the complainant’s famous marks and likeness); see also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
The Panel finds that Complainant has 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 <mapquestgasprices.com> and <gaspricesmapquest.com> domain names be TRANSFERRED from Respondent to Complainant.
James A Crary, Panelist
Dated: December 17, 2008
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