AOL Inc. v. Pauta's International SA
Claim Number: FA1108001402910
Complainant is AOL Inc. (“Complainant”), represented by James R. Davis of Arent Fox LLP, Washington, D.C., USA. Respondent is Pauta's International SA (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain names at issue are <huffpo.com>, <mapqwest.net>, and <moivefone.com>, registered with Dotster, 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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 11, 2011; the National Arbitration Forum received payment on August 11, 2011.
On August 11, 2011, Dotster, Inc. confirmed by e-mail to the National Arbitration Forum that the <huffpo.com>, <mapqwest.net>, and <moivefone.com> domain names are registered with Dotster, Inc. and that Respondent is the current registrant of the names. Dotster, Inc. has verified that Respondent is bound by the Dotster, Inc. 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 12, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 1, 2011 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@huffpo.com, postmaster@mapqwest.net, and postmaster@moivefone.com. Also on August 12, 2011, the Written Notice of the Complaint, notifying Respondent of the e-mail 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 7, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (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" 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 Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <huffpo.com> domain name is confusingly similar to Complainant’s THE HUFFINGTON POST mark.
Respondent’s <mapqwest.net> domain name is confusingly similar to Complainant’s MAPQUEST mark.
Respondent’s <moivefone.com> domain name is confusingly similar to Complainant’s MOVIEFONE mark.
2. Respondent does not have any rights or legitimate interests in the <huffpo.com>, <mapqwest.net>, and <moivefone.com> domain names.
3. Respondent registered and used the <huffpo.com>, <mapqwest.net>, and <moivefone.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, AOL Inc., owns numerous brand names and trademarks used for providing information and services on the Internet. Complainant uses the THE HUFFINGTON POST, MAPQUEST, and MOVIEFONE marks in connection with various entertainment, computer, and Internet-related goods and services. Complainant registered <huffingtonpost.com>, <huffpost.com>, <mapquest.com>, and <moviefone.com> domain names, in connection with its marks. Complainant holds a trademark registration with the United States Patent and Trademark Office (“USPTO”) for THE HUFFINGTON POST (Reg. No. 3,095,331 registered May 23, 2006; filed April 25, 2005), MAPQUEST (Reg. No. 2,129,378 registered January 13, 1998), and MOVIEFONE marks (Reg. No. 2,614876 registered September 3, 2002).
Respondent, Pauta's International SA, registered the <huffpo.com> domain name on May 17, 2005, the <mapqwest.net> domain name on June 18, 2004, and the <moivefone.com> domain name on June 23, 2004. The disputed domain names all resolve to various types of directory websites, each displaying third-party links to websites, some of which relate Complainant’s business of providing online news, entertainment, and Internet-related goods and services.
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 argues that it has established rights in the THE HUFFINGTON POST, MAPQUEST, and MOVIEFONE marks. Previously, panels have held that a complainant can establish rights in a mark through trademark registration with a national authority. 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 Automotive Racing Products, Inc. v. Linecom, FA 836787 (Nat. Arb. Forum Dec. 21, 2006) (finding that the Complainant’s federal trademark registration established its rights in the mark under Policy ¶ 4(a)(i)). Complainant is not required to register its marks with the country of Respondent as it holds trademark registrations in the United States. See KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Complainant has a trademark registration for the THE HUFFINGTON POST (Reg. No. 3,095,331 registered May 23, 2006; filed April 25, 2005), MAPQUEST (Reg. No. 2,129,378 registered January 13, 1998), and MOVIEFONE (Reg. No. 2,614876 registered September 3, 2002). Past panels have determined that a complainant’s rights may date back to the date it filed for its trademark registration. See Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”); see also Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date). Thus, the Panel holds that Complainant has proved its rights in THE HUFFINGTON POST, MAPQUEST, and MOVIEFONE marks, pursuant to Policy ¶ 4(a)(i), via its USPTO registrations.
Moreover, Complainant claims that Respondent’s <huffpo.com> domain name is confusingly similar to THE HUFFINGTON POST mark. The disputed domain name uses Complainant’s mark, deletes the article “the,” deletes the spaces between the words of the mark, adds the generic top-level domain (“gTLD”) “.com,” and abbreviates the mark to replicate the common shorthand reference to Complainant’s service, “huffpo.” The Panel finds that the deletion of spaces and addition of a gTLD do not factor into a Policy ¶ 4(a)(i) analysis. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i). Respondent also removes the article “the” from Complainant’s mark which does not sufficiently distinguish the disputed domain name. See Mega Soc. v. LoSasso, FA 215404 (Nat. Arb. Forum Jan. 30, 2004) (finding that the <megasociety.net> and <megasociety.com> domain names were identical or confusingly similar to Complainant's THE MEGA SOCIETY mark). Lastly, the disputed domain name abbreviates the words of Complainant’s mark to create the common shorthand term for Complainant’s “THE HUFFINGTON POST” brand. The Panel finds that such abbreviation does not remove the disputed domain name from the realm of confusing similarity. See Coca-Cola Co. v. Busch, 44 F.Supp. 405, 410 (E.D.Pa. 1942) (“[T]he abbreviation of the trade-mark which the public has used and adopted as designating the product of the [trademark owner] is equally as much to be protected as the trademark itself . . .”). The Panel concludes that Respondent’s <huffpo.com> domain name is confusingly similar to Complainant’s THE HUFFINGTON POST mark under Policy ¶ 4(a)(i).
Complainant asserts that Respondent’s <mapqwest.net> domain name is confusingly similar to its MAPQUEST mark. The disputed domain name incorporates the entire mark and changes it only by misspelling the mark by a single letter and adding the gTLD “.net.” The Panel finds that neither of these changes help to avoid a finding of confusing similarity under Policy ¶ 4(a)(i). See 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 Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Thus, the Panel holds that the <mapqwest.net> domain name is confusingly similar to Complainant’s MAPQUEST mark pursuant to Policy ¶ 4(a)(i).
Finally, Complainant claims that the <moivefone.com> domain name is confusingly similar to Complainant’s MOVIEFONE mark since the domain name simply alters the mark by transposing two letters of the mark and adding the gTLD “.com.” The Panel finds that transposing letters of a mark does not sufficiently distinguish the disputed domain name. See Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding <googel.com> to be confusingly similar to the complainant’s GOOGLE mark and noting that “[t]he transposition of two letters does not create a distinct mark capable of overcoming a claim of confusing similarity, as the result reflects a very probable typographical error”). Additionally, the affixation of the gTLD does not factor into a Policy ¶ 4(a)(i) analysis. See 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.”). The Panel concludes that Respondent’s <moivefone.com> domain name is confusingly similar to Complainant’s MOVIEFONE mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been met.
Complainant argues that Respondent does not have any rights or legitimate interests in the disputed domain names. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel found that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c). Here, Complainant has presented a prima facie case in support of its claims. The Panel is allowed to assume that Respondent has no rights or legitimate interests under Policy ¶ 4(a)(ii) since Respondent did not reply to the allegations in the Complaint. See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name). However, the Panel opts to first look to the record to determine whether Respondent has rights or legitimate interests under Policy ¶ 4(c).
Complainant contends that Respondent is not commonly known by the disputed domain names. The WHOIS information identifies Respondent as “Pauta's International SA,” which is not similar to the disputed domain name. Furthermore, Complainant states that it has not licensed or authorized Respondent to use any of its marks within the disputed domain names. The Panel concludes that Respondent is not commonly known by the disputed domain names, according to Policy ¶ 4(c)(ii), as no evidence indicates otherwise. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); 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).
Respondent’s disputed domain names all resolve to a type of directory website, each one featuring third-party links somewhat related to the confusingly similar domain names, such as related news and political websites, movie information, and travel and map information and services. Respondent likely collects click-through fees from these links. The Panel finds that Respondent’s use of the disputed domain names to host websites intending to redirect Internet users to potentially competing websites for Respondent’s profit is not 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 Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not 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 also ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use 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)).
The Panel finds that Policy ¶ 4(a)(ii) has been met.
Although Complainant does not specifically address this argument, the Panel may discuss whether Respondent’s registration and use of the disputed domain names disrupts Complainant’s business conducted under its THE HUFFINGTON POST, MAPQUEST, and MOVIEFONE marks. Respondent’s resolving websites feature links to third-party sites that may be of interest to Complainant’s customers and therefore divert business away from Complainant. The Panel concludes that Respondent’s use of confusingly similar disputed domain names for such a purpose constitutes bad faith under Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors).
The Panel infers that Respondent collects click-through fees from the previously mentioned third-party links. Internet users searching online for Complainant’s THE HUFFINGTON POST, MAPQUEST, and/or MOVIEFONE websites may find Respondent’s confusingly similar disputed domain names instead. The use of Complainant’s marks in the disputed domain names creates a likelihood of confusion as to Complainant’s sponsorship of, or affiliation with, the disputed domain name and Respondent tries to capitalize on this confusion by collecting click-through fees. The Panel finds that Respondent registered and is using the disputed domain names in bad faith according 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 DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”).
The Panel finds that Policy ¶ 4(a)(iii) has been met.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <huffpo.com>, <mapqwest.net>, and <moivefone.com> domain names be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: September 19, 2011
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