AOL Inc. v. Skylogic Technologies Private Limited aka Tanuj Mittal
Claim Number: FA1305001498058
Complainant is AOL Inc. (“Complainant”), represented by James R. Davis of Arent Fox LLP, Washington, D.C. Respondent is Skylogic Technologies Private Limited aka Tanuj Mittal (“Respondent”), acting pro se, California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <aolsupport.co> and <aolphonenumber.com>, registered with GoDaddy.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.
Richard DiSalle as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 3, 2013; the National Arbitration Forum received payment on May 3, 2013.
On May 6, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <aolsupport.co> and <aolphonenumber.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.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 May 7, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 28, 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@aolsupport.co, postmaster@aolphonenumber.com. Also on May 7, 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.
An Amended Complaint was filed on May 7, 2013 and was transmitted to the Respondent.
A timely Response was received and determined to be complete on May 13, 2013.
On May 29, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Richard DiSalle 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Policy ¶ 4(a)(i)
a. Complainant offers a wide range of online services, including computer services, bulletin boards, networks, and research and reference materials for business finance, news, weather, sports, games, music, movies, travels, and other similar fields, as well as customer support, under the AOL mark.
b. Complainant spends a substantial amount of resources to develop and market its services and marks, and as a result, Complainant’s AOL has become one of the most readily recognized and famous marks in the world.
c. Complainant owns trademark registrations for the AOL mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,977,731 registered June 4, 1996).
d. Both of the <aolsupport.co> and <aolphonenumber.com> domain names are confusingly similar to Complainant’s AOL mark.
Policy ¶ 4(a)(ii)
e. Respondent is not named or commonly known as AOL, nor is Respondent licensed or authorized to use the AOL mark in this manner.
f. Respondent has no rights or legitimate interests in the infringing domain names.
g. Respondent used the <aolsupport.co> domain name to resolve to a commercial site called “AOL Technical Support” that offered IT support services.
h. Respondent used the <aolphonenumber.com> domain name to resolve to a commercial site containing ads that reference Complainant and numerous unrelated companies.
Policy ¶ 4(a)(iii)
i. Respondent registered the infringing domain names with a bad faith intent to profit from the registration and use of the domain names.
j. The disputed domain names falsely imply that Complainant endorses or is affiliated with Respondent’s IT support services and the companies promoted on Respondent’s websites.
k. Respondent had at least constructive knowledge of Complainant’s rights in the AOL mark based on Complainant’s trademark registrations. Given the fame of the AOL mark and the fact that Respondent has used Complainant’s trademarks on Respondent’s websites, Respondent must have also had actual knowledge of Complainant’s rights at the time the disputed domains were registered.
l. Respondent’s bad faith is further demonstrated by its offer to sell the <aolsupport.co> domain name to Complainant.
m. Specifically, in response to Complainant’s request for the transfer of this domain, Respondent refused but stated it was “looking out to sell the website let me know if your client is interested in buying it.”
B. Respondent
1. Respondent never intended to violate any policies or “infringe any copyrights owned by [Complainant].”
2. Respondent’s primary reason for registering the disputed domain names was to improve its search engine optimization results for Google searches, allowing Respondent to let its customers know that Respondent helps customers who are using AOL e-mail addresses.
a. In fact, Respondent also supports users of Hotmail, Yahoo!, AT&T, and G-mail e-mail accounts as well.
3. Respondent had planned to eventually use the disputed domains to promote its textile business in India.
4. Respondent has offered to sell the disputed domains to Complainant if the domains hold any value to Complainant.
5. Respondent had no knowledge of the alleged infringements until being contacted by Complainant.
6. Respondent’s <aolsupport.co> domain name:
a. Respondent uses this disputed domain name to operate its business, which involves scanning customers’ computers for “Viruses and Trojans” and installing “Security and Optimization software provided by AVG for which [Respondent] hold[s] a Gold Reseller status.”
b. Respondent’s website contains a disclaimer stating that Respondent has no affiliation with Complainant.
c. After being contacted by Complainant, Respondent completely removed its website despite the fact that its use was legitimate.
7. Respondent’s <aolphonenumber.com> domain name:
a. Respondent has never made use of this domain name, and has left the domain parked with its registrar since the time of registration.
b. After being contacted by Complainant, Respondent completely removed its website despite the fact that its use was legitimate.
8. If the Panel determines that Respondent has violated any policies or infringed upon any rights of Complainant, Respondent would be happy to transfer the disputed domains to Complainant without delay.
9. Respondent registered the <aolphonenumber.com> domain name on September 19, 2012, and the <aolsupport.co> domain name on April 8, 2012.
(1) the domain names registered by Respondent are 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 names; and
(3) the domain names have been registered and are being used 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:
(4) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(5) Respondent has no rights or legitimate interests in respect of the domain name; and
(6) the domain name has been registered and is being used in bad faith.
Complainant provides the Panel with evidence of its trademark registration for the AOL mark with the USPTO (e.g., Reg. No. 1,977,731 registered June 4, 1996). The Panel finds that Complainant’s registration of the mark with the USPTO confers rights in the mark pursuant to Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”).
Complainant contends that the <aolsupport.co> and <aolphonenumber.com> domain names are confusingly similar to Complainant’s AOL mark, and asserts that each disputed domain contains Complainant’s mark coupled with the generic terms “support” and “phone number.” The Panel finds that Respondent’s additions of generic terms to Complainant’s mark do not serve to distinguish the disputed domain names for purposes of Paragraph 4(a)(i) of the Policy. 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). The Panel finds that the affixation of a top-level domain to a domain name is not sufficient to distinguish Respondent’s domains from Complainant’s mark under Policy ¶ 4(a)(i). 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.”); see also MEM Consumer Finance Ltd. v. Weston, FA 1439289 (Nat. Arb. Forum May 11, 2012) (stating that the ccTLD “.co” added to the domain name is irrelevant for the purposes of the Policy, as all domain names require a top-level domain). Accordingly, the Panel holds that Respondent’s <aolsupport.co> and <aolphonenumber.com> domain names are confusingly similar to Complainant’s AOL mark within the meaning of Policy ¶ 4(a)(i).
The Panel understands that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See 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 UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant alleges that Respondent is not named or commonly known as AOL, nor is Respondent licensed or authorized to use the AOL mark in this manner. The Panel notes that the WHOIS information on file lists Respondent as “Skylogic Technologies Private Limited aka Tanuj Mittal,” and in light of the evidence present in the record, the Panel concludes that Respondent is not commonly known by the <aolsupport.co> or <aolphonenumber.com> domain names within the meaning of Policy ¶ 4(c)(ii). 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).
Complainant asserts that Respondent has no rights or legitimate interests in the <aolsupport.co> domain name, and contends that Respondent has used the <aolsupport.co> domain name to resolve to a commercial site called “AOL Technical Support” that offered IT support services. The Panel observes that Complainant does not state specifically that Respondent currently uses the <aolsupport.co> domain name to host a webpage containing an IT support services website. The Panel holds that Respondent’s past use of the <aolsupport.co> domain name in connection with a commercial site, where Respondent is able to capitalize on the goodwill Complainant’s mark has garnered, does not constitute 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 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).”).
Complainant also asserts that the <aolphonenumber.com> domain name was used to resolve to a commercial site containing ads that reference Complainant and numerous unrelated companies. The Panel notes that Complainant does not specify that Respondent currently uses the <aolphonenumber.com> domain name in this manner. The Panel concludes that Respondent’s past use of the <aolphonenumber.com> domain name to host ads referring to Complainant and other unrelated entities fails to amount to 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). See Fox News Network, LLC v. Reid, D2002-1085 (WIPO Feb. 18, 2003) (finding that the respondent’s use of the disputed domain name to generate revenue via advertisement and affiliate fees is not a bona fide offering of good or services).
Respondent claims that the website housed at its <aolsupport.co> domain name features a disclaimer. Respondent has not proven the existence of such disclaimer, and the Panel determines that Respondent fails to demonstrate rights or legitimate interests in the <aolsupport.co> domain name. See AltaVista Co. v. AltaVisa, FA 95480 (Nat. Arb. Forum Oct. 31, 2000) (finding that since a disclaimer does not, and could not, accompany the domain name, then the “domain name attracts the consumer’s initial interest and the consumer is misdirected long before he/she has the opportunity to see the disclaimer”).
Complainant argues that Respondent registered and used the <aolsupport.co> domain name in bad faith pursuant to Policy ¶ 4(b)(i), based on Respondent’s offer to sell that domain to Complainant. The Panel holds that Respondent’s willingness to dispose of the disputed domain for valuable consideration constitutes bad faith pursuant to Policy ¶ 4(b)(i). See Marrow v. iceT.com, D2000-1234 (WIPO Nov. 22, 2000) (stating that a panel should not “put much weight on the fact that it was the Complainant who contacted Respondent to see if it was interested in selling the domain name”); see also Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”).
Complainant contends that Respondent registered the disputed domain names with the intent to falsely imply that Complainant endorses or is affiliated with Respondent’s IT support services and the companies promoted on Respondent’s websites, in a bad faith attempt to profit from the use of the domains. Complainant claims that Respondent generates a commercial gain from the operation of each domain, whether it be through the provision of IT support services or by operating a pay-per-click site. The Panel holds that Respondent’s registration and use of the <aolsupport.co> and <aolphonenumber.com> domain names illustrates attraction for commercial gain in bad faith under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
Finally, Complainant alleges that Respondent had at least constructive knowledge of Complainant’s rights in the AOL mark based on Complainant’s trademark registrations. Complainant further alleges that given the fame of the AOL mark and the fact that Respondent has used Complainant’s trademarks on Respondent’s websites, Respondent must have also had actual knowledge of Complainant’s rights at the time the disputed domains were registered. This Panel finds that Respondent had actual knowledge of Complainant's mark and rights, and therefore determines that Respondent registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
The Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <aolsupport.co> and <aolphonenumber.com> domain names be TRANSFERRED from Respondent to Complainant.
Richard DiSalle, Panelist
Dated: June 7, 2013
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