AOL Inc. v. Stanley Pace and S. Pace
Claim Number: FA1008001338748
Complainant is AOL Inc. ("Complainant"), represented by James R. Davis of Arent Fox LLP, Washington, D.C., USA. Respondent is Stanley Pace and S. Pace ("Respondent"), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <sobefanhouse.com>, registered with DYNADOT, LLC; <aolvedio.com>, <joystig.com>, and <freeaolgames.com> registered with FABULOUS.COM PTY LTD.; and <winampskins.com>, registered with NAME PANTHER.COM LLC.
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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 3, 2010; the National Arbitration Forum received payment on August 3, 2010.
On August 4, 2010, DYNADOT, LLC confirmed by e-mail to the National Arbitration Forum that the <sobefanhouse.com> domain name is registered with DYNADOT, LLC and that Respondent is the current registrant of the name. DYNADOT, LLC has verified that Respondent is bound by the DYNADOT, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 10, 2010, FABULOUS.COM PTY LTD. confirmed by e-mail to the National Arbitration Forum that the <aolvedio.com>, <joystig.com>, and <freeaolgames.com> domain names are registered with FABULOUS.COM PTY LTD. and that Respondent is the current registrant of the names. FABULOUS.COM PTY LTD. has verified that Respondent is bound by the FABULOUS.COM PTY LTD. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 10, 2010 NAMEPANTHER.COM LLC confirmed by e-mail to the National Arbitration Forum that the <winampskins.com> domain name is registered with NAMEPANTHER.COM LLC and that Respondent is the current registrant of the name. NAMEPANTHER.COM LLC has verified that Respondent is bound by the NAMEPANTHER.COM LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 18, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 7, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@sobefanhouse.com, postmaster@aolvedio.com, postmaster@joystig.com, postmaster@freeaolgames.com, and postmaster@winampskins.com. Also on August 18, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
On September 13, 2010 the Parties requested an Order to Stay the Administrative Proceeding for a period of forty-five days pursuant to Supp. Rule 6(b)(i), that was approved by the Forum. On October 22, 2010 the Complainant requested that the Order to Stay be lifted and the request was granted on October 22, 2010.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 9, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon as Panelist.
By defaulting, the Respondent admits to the allegations and waives any objection. The late response was not considered by the Panelist in this Decision.
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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 the Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <sobefanhouse.com> domain name is confusingly similar to Complainant’s FANHOUSE mark.
Respondent’s <aolvedio.com> and <freeaolgames.com> domain names are confusingly similar to Complainant’s AOL.COM mark.
Respondent’s <joystig.com> domain name is confusingly similar to Complainant’s JOYSTIQ mark.
Respondent’s <winampskins.com> domain name is confusingly similar to Complainant’s WINAMP mark.
2. Respondent does not have any rights or legitimate interests in the <sobefanhouse.com>, <aolvedio.com>, <joystig.com>, <freeaolgames.com>, and <winampskins.com> domain names.
3. Respondent registered and used the <sobefanhouse.com>, <aolvedio.com>, <joystig.com>, <freeaolgames.com>, and <winampskins.com> domain names. in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, AOL Inc., is an international provider of computer, entertainment and online services. Complainant owns the following trademark registrations with the United States Patent and Trademark Office ("USPTO"):
AOL Reg. No. 1,977,731 issued June 4, 1996
AOL.COM Reg. No. 2,325,292 issued March 7, 2000
FANHOUSE Reg. No. 3,235,718 issued May 1, 2007
JOYSTIQ Reg. No. 3,246,051 issued May 29, 2007
WINAMP Reg. No. 2,557,585 issued April 9, 2002
Respondent registered the domain names from October 27, 2005 to July 25, 2010 and none of the domain name registrations predate Complainant’s trademark registrations. Respondent’s <joystig.com> domain name was listed on the domain auction website of <sedo.com>.
Complainant has submitted evidence showing that Respondent has been the respondent in multiple previous UDRP proceedings, where Respondent has been ordered by previous UDRP panels to transfer the domain names to the respective complainants in those cases. See The Neiman Marus Grp, Inc. v. Pace, FA 820337 (Nat. Arb. Forum November 20, 2006); see also Kinecta Fed. Credit Union v. Pace, FA 1153943 (Nat. Arb. Forum May 2, 2008); see also 24 Hour Fitness USA, Inc. v. Pace, FA 1315664 (Nat. Arb. Forum May 10, 2010).
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” The Panel finds that Complainant has presented sufficient information to show that one entity is controlling all five domain names and will proceed with the instant case in that light.
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 has established rights in its AOL (e.g., Reg. No. 1,977,731 issued June 4, 1996); AOL.COM (e.g., Reg. No. 2,325,292 issued March 7, 2000); FANHOUSE (e.g., Reg. No. 3,235,718 issued May 1, 2007); JOYSTIQ (e.g., Reg. No. 3,246,051 issued May 29, 2007); and WINAMP marks (e.g., Reg. No. 2,557,585 issued April 9, 2002) under Policy ¶ 4(a)(i) through its trademark registrations with the USPTO. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations).
Complainant argues that the Respondent’s <sobefanhouse.com> domain name is confusingly similar to Complainant’s FANHOUSE mark. The Panel notes that the domain name contains Complainant’s mark entirely while adding the generic term “sobe” and the generic top-level domain (“gTLD”) “.com.” Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark under 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 Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).
Complainant also contends Respondent’s <aolvedio.com> and <freeaolgames.com> domain names are confusingly similar to Complainant’s AOL.COM mark. Again the Panel finds that the disputed domain names contain Complainant’s entire mark with the additions of the generic term “vedio” which is presumed to be a misspelled version of the term “video,” or the generic and descriptive terms “free” and “games,” as well as the gTLD “.com.” Therefore the <aolvedio.com> and <freeaolgames.com> domain names are confusingly similar to Complainant’s AOL mark under Policy ¶ 4(a)(i). See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Jerry Damson, supra.
Complainant further argues that Respondent’s <joystig.com> domain name is confusingly similar to Complainant’s JOYSTIQ mark. Complainant contends that Respondent simply used a commonly misspelling of Complainant’s mark by replacing the letter “q” in the mark with the letter “g” in the domain name along with adding the gTLD “.com” and that such changes do not render the domain name distinct from Complainant’s mark. The Panel agrees and finds that the <joystig.com> domain name is confusingly similar to Complainant’s JOYSTIQ mark under Policy ¶ 4(a)(i). See Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”); see also Intelius, Inc. v. Hyn, FA 703175 (Nat. Arb. Forum July 5, 2006) (finding the <intellus.com> domain name to be confusingly similar to the complainant’s INTELIUS mark because the domain name differed from the mark by one letter and was visually similar); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., supra.
Lastly, Complainant asserts that Respondent’s <winampskins.com> domain name is confusingly similar to Complainant’s WINAMP mark. Complainant argues that the disputed domain name contains its entire mark while adding the descriptive term “skins” which is a reference to Complainant’s product offerings and the gTLD “.com.” The Panel finds that the <winampskins.com> domain name is confusingly similar to Complainant’s WINAMP mark under Policy ¶ 4(a)(i). See Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”); see also Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007) (“The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not possess rights and legitimate interests in the <sobefanhouse.com>, <aolvedio.com>, <joystig.com>, <freeaolgames.com>, and <winampskins.com> domain names under Policy ¶ 4(a)(ii). Complainant is required to produce a prima facie case in support of these allegations. Once Complainant has produced a prima facie case the burden of proof shifts to Respondent to display that it does possess rights and legitimate interests in the disputed domain names. See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (finding that if the complainant satisfies its prima facie burden, “then the burden shifts to the respondent to show that it does have rights or legitimate interest in the subject domain names.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). The Panel finds that Complainant has established a prima facie case that Respondent lacks rights and legitimate interests in the <sobefanhouse.com>, <aolvedio.com>, <joystig.com>, <freeaolgames.com>, and <winampskins.com> domain names. Respondent has failed to respond to these proceedings, and as such the Panel finds that it may infer that Respondent lacks rights and legitimate interests in the disputed domain names. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“[Rule 14(b)] expressly provide[s] that the Panel ‘shall draw such inferences’ from the Respondent’s failure to comply with the rules ‘as it considers appropriate.”). However, the Panel will analyze the evidence on record to determine whether Respondent has rights and legitimate interests in the disputed domain names under Policy ¶ 4(c).
Complainant contends that Respondent is not commonly known by the disputed domain names. Complainant further contends that Respondent has not been given permission to use Complainant’s marks in any way. The WHOIS information for each domain name identifies “Stanley Pace” or “S. Pace” as the registrant. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant contends that Respondent was attempting to auction the <joystig.com> domain name to the highest bidder through the auction website <sedo.com>. Complainant submits evidence to show that it contacted <sedo.com> about this issue and that the website voluntarily deleted the advertised domain name from its website, and that such deletion was verified on June 29, 2010 via e-mail from <sedo.com> to Complainant’s counsel. The Panel finds that Respondent’s attempt to sell the disputed domain name through an auction website is evidence that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“UDRP precedent is clear that auctioning domains does not constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use of domains.”); 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).
The Panel finds that Complainant has failed to submit sufficient evidence indicating Respondent’s use of the <sobefanhouse.com>, <aolvedio.com>, <freeaolgames.com>, and <winampskins.com> domain names. It is Complainant’s burden to establish a prima facie case in support of its assertions that Respondent lacks rights and legitimate interests in the domain names. See Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that absent a showing of any facts by the complainant that establish the respondent lacks rights or legitimate interests in the disputed domain name, the panel may decline to transfer the disputed domain name). The Panel finds that Complainant has not met its burden under Policy ¶ 4(a)(ii), and as such declines to transfer the <sobefanhouse.com>, <aolvedio.com>, <freeaolgames.com>, and <winampskins.com> domain names to Complainant. See VeriSign Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000) (“Respondent's default, however, does not lead to an automatic ruling for Complainant. Complainant still must establish a prima facie case showing that under the Uniform Domain Name Dispute Resolution Policy it is entitled to a transfer of the domain name.”); see also Yao Ming v. Evergreen Sports, Inc., FA 154140 (Nat. Arb. Forum May 29, 2003) (“Complainant has not alleged any facts related to Respondent's use of the disputed domain name. The Complaint merely asserts a legal conclusion. Thus, the Panel has no knowledge of Respondent's use of the domain name upon which to base a decision under Policy ¶ 4(a)(ii) and (iii).”); see also O.C. Seacrets, Inc. v. S. TradeWINs, Inc., FA 328042 (Nat. Arb. Forum Oct. 29, 2004) (“Complainant has provided no evidence as to the use of the <jamaicausa.com> domain name and has merely asserted that Respondent has no rights or legitimate interests, which is not sufficient to support a finding that Respondent lacks rights or legitimate interests.”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii) as to the <joystig.com> domain name, but has failed to satisfy the requirements of Policy ¶ 4(a)(ii) with respect to the remaining domain names.
Complainant has submitted evidence to show that Respondent’s only use of the <joystig.com> domain name was attempting to auction the domain name to the highest bidder on the domain name auction website of <sedo.com>. Complainant contends that such use is evidence of bad faith registration and use under Policy ¶ 4(b)(i). The Panel agrees and finds that Respondent’s attempted sale and apparent willingness to dispose of its rights in the disputed domain name is evidence of bad faith registration and use under 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); see also Banca Popolare Friuladria S.p.A. v. Zago, D2000-0793 (WIPO Sept. 3, 2000) (finding bad faith where the respondent offered the domain names for sale).
Complainant has submitted evidence to show that Respondent has been the respondent in previous UDRP proceedings, where Respondent has been ordered by previous UDRP panels to transfer the domain names to the respective complainants. See The Neiman Marus Grp, Inc. v. Pace, FA 820337 (Nat. Arb. Forum November 20, 2006); see also Kinecta Fed. Credit Union v. Pace, FA 1153943 (Nat. Arb. Forum May 2, 2008); see also 24 Hour Fitness USA, Inc. v. Pace, FA 1315664 (Nat. Arb. Forum May 10, 2010). Complainant contends that Respondent’s previous adverse rulings against it are evidence of Respondent’s bad faith pattern of registering and using trademark infringing domain names, and should be considered as evidence of bad faith in the instant proceeding. The Panel agrees and finds that Respondent’s pattern of registering domain names in bad faith is evidence of bad faith registration and use under Policy ¶ 4(b)(ii) in the instant proceeding. See Sony Kabushiki Kaisha v. Anderson, FA 198809 (Nat. Arb. Forum Nov. 20, 2003) (finding a pattern of registering domain names in bad faith pursuant to Policy ¶ 4(b)(ii) when the respondent previously registered domain names incorporating well-known third party trademarks); see also Nat’l Abortion Fed’n v. Dom 4 Sale, Inc., FA 170643 (Nat. Arb. Forum Sept. 9, 2003) (finding bad faith pursuant to Policy ¶ 4(b)(ii) because the domain name prevented the complainant from reflecting its mark in a domain name and the respondent had several adverse decisions against it in previous UDRP proceedings, which established a pattern of cybersquatting).
The Panel finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(iii) as to the <joystig.com> domain name.
The Panel finds that since it need not discuss Policy ¶ 4(a)(iii) in reference to the <sobefanhouse.com>, <aolvedio.com>, <freeaolgames.com>, and <winampskins.com> domain names because Complainant has failed to satisfy the requirements of Policy ¶ 4(a)(ii), thereby barring a ruling in its favor for the additional domain names.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED for the <joystig.com> domain name and DENIED for the <sobefanhouse.com>, <aolvedio.com>, <freeaolgames.com>, and <winampskins.com> domain names.
Accordingly, it is Ordered that the <joystig.com> domain name be TRANSFERRED from Respondent to Complainant. It is further Ordered that the <sobefanhouse.com>, <aolvedio.com>, <freeaolgames.com> and <winampskins.com> domain names be REMAIN with Respondent.
Louis E. Condon, Panelist
Dated: November 19, 2010
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page