AOL Inc. v. Above.com Domain Privacy
Claim Number: FA1302001485082
Complainant is AOL Inc. (“Complainant”), represented by James R. Davis of Arent Fox LLP, District of Columbia. Respondent is Above.com Domain Privacy (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <huffintgonpost.com>, <hufpost.com>, <huffingtomnpost.com>, <huffingtonppst.com>, <huiffingtonpost.com>, <huffingtonpostcom.com>, <huffingtonpoist.com>, <huffingtonpopst.com>, <huffiongtonpost.com>, <hufftingtonpost.com>, <huffingftonpost.com>, <huffingtonopst.com>, <huffingtoonpost.com>, <huffingyonpost.com>, <huffibgtonpost.com>, <hyuffingtonpost.com>, <huffingtonposy.com>, <huffingtopnpost.com>, and <hiuffingtonpost.com>, registered with Above.com Pty Ltd.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 13, 2013; the National Arbitration Forum received payment on February 13, 2013.
On Feb 13, 2013, Above.com Pty Ltd confirmed by e-mail to the National Arbitration Forum that the <huffintgonpost.com>, <hufpost.com>, <huffingtomnpost.com>, <huffingtonppst.com>, <huiffingtonpost.com>, <huffingtonpostcom.com>, <huffingtonpoist.com>, <huffingtonpopst.com>, <huffiongtonpost.com>, <hufftingtonpost.com>, <huffingftonpost.com>, <huffingtonopst.com>, <huffingtoonpost.com>, <huffingyonpost.com>, <huffibgtonpost.com>, <hyuffingtonpost.com>, <huffingtonposy.com>, <huffingtopnpost.com>, and <hiuffingtonpost.com> domain names are registered with Above.com Pty Ltd and that Respondent is the current registrant of the names. Above.com Pty Ltd has verified that Respondent is bound by the Above.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 February 14, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 6, 2013 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@huffintgonpost.com, postmaster@hufpost.com, postmaster@huffingtomnpost.com, postmaster@huffingtonppst.com, postmaster@huiffingtonpost.com, postmaster@huffingtonpostcom.com, postmaster@huffingtonpoist.com, postmaster@huffingtonpopst.com, postmaster@huffiongtonpost.com, postmaster@hufftingtonpost.com, postmaster@huffingftonpost.com, postmaster@huffingtonopst.com, postmaster@huffingtoonpost.com, postmaster@huffingyonpost.com, postmaster@huffibgtonpost.com, postmaster@hyuffingtonpost.com, postmaster@huffingtonposy.com, postmaster@huffingtopnpost.com, postmaster@hiuffingtonpost.com. Also on February 14, 2013, 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.
At the request of the parties, this matter was stayed until April 9, 2013, when the stay was lifted. During the stay of administrative proceedings seven of the disputed domain names were transferred to Complainant. Thus, Complainant requests that the Decision address only the remaining twelve domain names that were not transferred which are: <huffintgonpost.com>, <hufpost.com>, <huffingtomnpost.com>, <huffingtonppst.com>, <huiffingtonpost.com>, <huffingtonpostcom.com>, <huffingtonpoist.com>, <huffingtonpopst.com>, <huffiongtonpost.com>, <huffingtonposy.com>, <huffingtopnpost.com>, and <hiuffingtonpost.com>. The Decision will therefore pertain only to the foregoing domain names.
On April 11, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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
1. Complainant owns rights in THE HUFFINGTON POST mark through its registrations with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,095,331 registered May 23, 2006) and through its popularity and recognition.
2. Respondent registered the <huffintgonpost.com>, <hufpost.com>, <huffingtomnpost.com>, <huffingtonppst.com>, <huiffingtonpost.com>, <huffingtonpostcom.com>, <huffingtonpoist.com>, <huffingtonpopst.com>, <huffiongtonpost.com>, <huffingtonposy.com>, <huffingtopnpost.com>, and <hiuffingtonpost.com> domain names on March 23, 2010.
3. Respondent is not commonly known by the domain names and is not licensed or authorized to use Complainant’s marks in any way.
4. Respondent’s domain names are typographical errors of complainant’s marks.
5. Respondent uses the disputed domain names to resolve to websites to feature commercial links for third parties as well as explicit adult content.
6. Respondent had actual knowledge of Complainant’s rights in its marks when Respondent registered the disputed domain names.
7. Respondent registered the disputed domain names for the purpose of profiting from potential consumer confusion caused by Respondent’s use of the disputed domain names.
8. Respondent is operating commercial websites, providing links to third parties as well as graphic adult content.
9. Respondent commercially benefits from the click-through fees associated with the use of the websites resolving from the disputed domain names.
10. Respondent has a pattern of cybersquatting behavior.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for in THE HUFFINGTON POST mark. Respondent’s <huffintgonpost.com>, <hufpost.com>, <huffingtomnpost.com>, <huffingtonppst.com>, <huiffingtonpost.com>, <huffingtonpostcom.com>, <huffingtonpoist.com>, <huffingtonpopst.com>, <huffiongtonpost.com>, <huffingtonposy.com>, <huffingtopnpost.com>, and <hiuffingtonpost.com> domain names are confusingly similar to Complainant’s THE HUFFINGTON POST mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <huffintgonpost.com>, <hufpost.com>, <huffingtomnpost.com>, <huffingtonppst.com>, <huiffingtonpost.com>, <huffingtonpostcom.com>, <huffingtonpoist.com>, <huffingtonpopst.com>, <huffiongtonpost.com>, <huffingtonposy.com>, <huffingtopnpost.com>, and <hiuffingtonpost.com> domain names, and that Respondent registered and uses the domain names in bad faith.
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."
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.
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.”).
Complainant claims that it has rights in THE HUFFINGTON POST mark through its registrations with the United States Patent and Trademark Office (“USPTO”) and through its popularity and recognition (Reg. No. 3,095,331 registered May 23, 2006). Evidence of registration with a national trademark authority is sufficient to establish rights in a given mark under Policy ¶ 4(a)(i). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO). To establish rights in a mark, a complainant need not register the mark in the country in which the respondent resides or operates. 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 Policy ¶ 4(a)(i) whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).[1]
Complainant asserts that the disputed domain names are common misspellings of Complainant’s mark and are therefore confusingly similar under Policy ¶ 4(a)(i). Respondent’s <huffintgonpost.com>, <hufpost.com>, <huffingtomnpost.com>, <huffingtonppst.com>, <huiffingtonpost.com>, <huffingtonpostcom.com>, <huffingtonpoist.com>, <huffingtonpopst.com>, <huffiongtonpost.com>, <huffingtonposy.com>, <huffingtopnpost.com>, and <hiuffingtonpost.com> domain names all contain major components of Complainant’s THE HUFFINGTON POST mark. All of Respondent’s domain names are misspelled versions of Complainant’s mark because they either add an additional letter, remove a letter or replace a letter with an incorrect one. The <hufpost.com> domain name predominantly features an abbreviation of Complainant’s mark. The <huffingtonpostcom.com> domain name features the term “com” to the end of Complainant’s mark. All of the disputed domain names add the generic top-level domain (gTLD) “.com.” These variations are insufficient to differentiate a disputed domain name from a given mark under Policy ¶ 4(a)(i). See Starwood Capital Grp. Global LLC v. Resort Realty, FA 1043061 (Nat. Arb. Forum Sept. 6, 2007) (“Furthermore, the addition of the generic top-level domain ‘.com’ does nothing to eliminate the confusing similarity, as a top-level domain is a requirement for all domain names.”); see also 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 . . .”); Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”); Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”); Borders Props., Inc. v. Hewitt, FA 114618 (Nat. Arb. Forum July 23, 2002) (“The added ‘com’ does not defeat a confusing similarity claim because it takes advantage of a common typographical error. It is a basic mistake to type ‘com’ twice without typing the period after the targeted search term . . . [t]herefore, Respondent’s domain name is confusingly similar to Complainant’s mark.”). The Panel therefore finds that Respondent’s <huffintgonpost.com>, <hufpost.com>, <huffingtomnpost.com>, <huffingtonppst.com>, <huiffingtonpost.com>, <huffingtonpostcom.com>, <huffingtonpoist.com>, <huffingtonpopst.com>, <huffiongtonpost.com>, <huffingtonposy.com>, <huffingtopnpost.com>, and <hiuffingtonpost.com> domain names are confusingly similar to Complainant’s THE HUFFINGTON POST mark.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“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 holds that Complainant has made a prima facie case.
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain names because it is not commonly known by them under Policy ¶ 4(c)(ii). Complainant argues that Respondent is not licensed or authorized by Complainant to use its mark in any way. A Respondent is not commonly known by a domain name if the Respondent fails to provide evidence establishing that it is so known. See 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 domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The Panel thus finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii).
Complainant claims that Respondent’s <huffintgonpost.com>, <hufpost.com>, <huffingtomnpost.com>, <huffingtonppst.com>, <huiffingtonpost.com>, <huffingtonpostcom.com>, <huffingtonpoist.com>, <huffingtonpopst.com>, <huffiongtonpost.com>, <huffingtonposy.com>, <huffingtopnpost.com>, and <hiuffingtonpost.com> domain names resolve to pages featuring commercial advertisements that provide links to third party services as well as graphic adult content. Complainant further claims that Respondent is receiving revenue from the links featured on the resolving websites. The Panel notes that the <huffintgonpost.com> and <huffingtonpostcom.com> domain names feature links such as, “Election Map,” “Huffington Post,” “Obama Harp,” “Math Answers for Algebra” and “Aluminum Fences.” The latter website resolves to pages entitled “AdultFriendFinder” which features explicit adult content. The <huffingtonposy.com> and <huffingtonppst.com> domain names resolve to a website featuring links such as, “IPhone 5,” “Huffington Post,” “McDonalds Jobs,” and “Typing Jobs. “The <huffiongtonpost.com> domain name resolves to a page featuring links including, “Meru Wlan Software,” “Wireless Network Setup,” and “Silver Linings Playbook.” The <huffingtonpoist.com> domain name features links such as, “Furniture Sale at Macy’s,” and “Masters in accounting.” Respondent’s <huffintgonpost.com> and <huffingtonppst.com> domain names feature similar links including, “Music Studies College,” “Huffington Post,” “Barack Obama News,” “Obama For President,” “Home Remodeling Services,” and “Cheap Portable Barricades.”
Evidence such as this indicates that a respondent does not have rights or a legitimate interest in a disputed domain name because it is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name under Policy ¶ 4(c)(i) and ¶ 4(c)(iii). See Paws, Inc. v. Zuccarini, FA 125368 (Nat. Arb. Forum Nov. 15, 2002) (holding that the use of a domain name that is confusingly similar to an established mark to divert Internet users to an adult-oriented website “tarnishes Complainant’s mark and does not evidence noncommercial or fair use of the domain name by a respondent”); see also Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names). The Panel agrees and finds accordingly.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant claims that Respondent has registered and uses the disputed domain names in bad faith under Policy ¶ 4(b)(iv). Complainant argues that Respondent is attempting to attract and confuse Internet users through the use of its domain names that are confusingly similar to Complainant’s mark. Complainant also claims Respondent’s disputed domain names resolve to websites featuring commercial links to third parties, some of which contain graphic adult content. Complainant also contends that Respondent is receiving revenue through pay-per-click links featured on the resolving websites. Using a confusingly similar domain name to resolve to websites featuring third party links and explicit adult content in order to commercially profit, is bad faith use and registration under Policy ¶ 4(b)(iv). See Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For Sale, FA 857581 (Nat. Arb. Forum Jan. 4, 2007) (holding that the respondent’s use of the disputed domain name to maintain a pay-per-click site displaying links unrelated to the complainant and to generate click-through revenue suggested bad faith registration and use under Policy ¶ 4(b)(iv)); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was commercially gaining from the likelihood of confusion between the complainant’s AIM mark and the competing instant messaging products and services advertised on the respondent’s website which resolved from the disputed domain name); Google Inc. v. Bassano, FA 232958 (Nat. Arb. Forum Mar. 8, 2004) (holding that the respondent’s use of the <googlesex.info> domain name to intentionally attract Internet users to a website featuring adult-oriented content constituted bad faith registration and use under Policy ¶ 4(b)(iv)). The Panel therefore finds that Respondent registered and uses the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant also contends that in light of the fame and notoriety of Complainant's THE HUFFINGTON POST mark, it is inconceivable that Respondent could have registered the <huffintgonpost.com>, <hufpost.com>, <huffingtomnpost.com>, <huffingtonppst.com>, <huiffingtonpost.com>, <huffingtonpostcom.com>, <huffingtonpoist.com>, <huffingtonpopst.com>, <huffiongtonpost.com>, <huffingtonposy.com>, <huffingtopnpost.com>, and <hiuffingtonpost.com> domain names without actual knowledge of Complainant's rights in the mark. The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and find that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
The Panel finds 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 <huffintgonpost.com>, <hufpost.com>, <huffingtomnpost.com>, <huffingtonppst.com>, <huiffingtonpost.com>, <huffingtonpostcom.com>, <huffingtonpoist.com>, <huffingtonpopst.com>, <huffiongtonpost.com>, <hufftingtonpost.com>, <huffingftonpost.com>, <huffingtonopst.com>, <huffingtoonpost.com>, <huffingyonpost.com>, <huffibgtonpost.com>, <hyuffingtonpost.com>, <huffingtonposy.com>, <huffingtopnpost.com>, and <hiuffingtonpost.com> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: April 23, 2013
[1] The Panel finds it unnecessary to consider Complainant’s arguments regarding common law right for THE HUFFINGTON POST and HUFFINGTON POST marks.
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