AOL Inc. v. Purna Baniya aka MJ Corporation
Claim Number: FA1309001520588
Complainant is AOL Inc. (“Complainant”), represented by James R. Davis of Arent Fox LLP, Washington, D.C., USA. Respondent is Purna Baniya aka MJ Corporation (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name here at issue is <supportaol.com>, which is registered with GODADDY.COM, LLC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electron-ically on September 20, 2013; the National Arbitration Forum received payment on September 20, 2013.
On September 20, 2013, GODADDY.COM, LLC confirmed by e-mail to the Nat-ional Arbitration Forum that the <supportaol.com> domain name is registered with GODADDY.COM, LLC and that Respondent is the current registrant of the name. 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 September 23, 2013, the Forum served the Complaint and all Annexes, in-cluding a Written Notice of the Complaint, setting a deadline of October 15, 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, administrat-ive, and billing contacts, and to postmaster@supportaol.com. Also on Septem-ber 23, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Re-spondent 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 October 16, 2013, pursuant to Complainant's request to have the dispute de-cided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 Not-ices, 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant uses its AOL.COM trademark in connection with the marketing of computer services, including the leasing of access time to computer databases, computer bulletin boards and computerized research and reference materials.
Complainant has registered its AOL.COM service mark with the United States Patent and Trademark Office (“USPTO”), on file as Registry No. 2,325,291, registered March 7, 2000.
Respondent registered the disputed <supportaol.com> domain name on January 23, 2013.
The domain name is confusingly similar to Complainant’s AOL.COM mark.
Respondent has not been commonly known as <supportaol.com>.
Complainant has not authorized Respondent’s use of the AOL.COM trademark in a domain name.
Respondent’s use of the <supportaol.com> domain name is not a bona fide offer-ing of goods and services or a legitimate noncommercial or fair use.
The domain name resolves to a commercial website offering technical support services that directly compete with those provided by Complainant under its AOL.COM mark.
Respondent uses the disputed domain name to pass itself off as Complainant.
Respondent has no rights to or legitimate interests in the domain name.
The disputed domain name diverts Internet users seeking services offered under Complainant’s AOL.COM mark to Respondent’s competing website, thus disrupt-ing Complainant’s business.
The disputed domain name misleads Internet users seeking the services offered under Complainant’s AOL.COM mark.
Respondent profits commercially from its registration and use of the domain name by directing increased business to Respondent’s competing website.
Respondent knew of Complainant and its rights in the AOL.COM trademark when it registered the <supportaol.com> domain name.
Respondent has misrepresented its willingness to transfer the domain name to Complainant.
Respondent’s registration and use of the domain name demonstrates bad faith.
B. Respondent
Respondent failed to submit a response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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 can-celled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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 representa-tions 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 Verti-cal Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reason-able inferences of fact in the allegations of a UDRP 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 has rights in the AOL.COM service mark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark author-ity, the USPTO. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demon-strates a UDRP complainant’s rights in a mark under Policy ¶ 4(a)(i)).
This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here the India). See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether a UDRP complainant has reg-istered its trademark in the country in which a respondent resides, only that it can establish rights in its mark in some jurisdiction).
Turning to the central question arising under Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <supportaol.com> domain name is con-fusingly similar to Complainant’s AOL.COM mark. The domain name fully incorp-orates the mark and merely adds the generic term “support,” which describes an aspect of Complainant’s business. This alteration of the mark, made in creating the domain name, does not avoid a finding of confusing similarity under the standards of the Policy. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding a respondent’s <amextravel.com> do-main name confusingly similar to a 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)).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that re-spondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent 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 has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to deter-mine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant asserts, and Respondent does not deny,
that Respondent has not been commonly known as <supportaol.com>, and that Complainant has not authorized Respondent to use its AOL.COM mark in a do-main name. Moreover, the pertinent WHOIS information identifies the regis-trant of the <supportaol.com> domain name only as “Purna Baniya aka MJ Corpora-tion,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the contested domain name so as to have acquired rights to or legitimate interests in it within the meaning of Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), the panel there concluding that a respondent was not commonly known by disputed domain names, and so failed to show that it had acquired rights to or legitimate interests in them as described in Policy ¶ 4(c)(ii), where the relevant WHOIS information, as well as all other evidence in the record, gave no indica-tion that that respondent was commonly known by the domain names, and where a UDRP complainant had not authorized that respondent to register a domain name containing its mark. See also Ultimate Elecs., Inc. v. Nichols, FA 195683 (Nat. Arb. Forum Oct. 27, 2003):
[O]ther than Respondent’s infringing use of the … mark on its web page and in its domain name . . . there is no evidence that Re-spondent is commonly known by the … domain name pursuant to Policy ¶ 4(c)(ii),….
We next observe that Complainant asserts, without objection from Respondent, that Respondent’s use of the <supportaol.com> domain name 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), In that the domain name resolves to a commer-cial website that offers technical support services in competition with those pro-vided by Complainant under its AOL.COM mark. In the circumstances here pre-sented, we may comfortably presume that Respondent profits from this use of the domain name. Such a use is neither 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 Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002), finding that a respondent’s use of a disputed domain name to redirect Internet users to a financial services website which competed with a UDRP complainant’s financial services website, was not a use protected under Policy ¶¶ 4(c)(i) or 4(c)(iii).
In the instant proceedings, the Panel finds that the technical support services offered on Respondent’s website directly compete with those provided by Complainant under its AOL.COM mark. Accordingly, the Panel holds that Respondent’s use of the <supportaol.com> domain name is not protected as a bona fide offering of goods and services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s registration and use of the <supportaol.com> domain name demonstrates bad faith, as provided in Policy ¶ 4(b)(iii), in that the domain name diverts Internet users seeking services offered under Complainant’s AOL.COM mark to Respondent’s competing website, thus disrupting Complainant’s business. See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005):
Respondent is appropriating Complainant’s mark to divert Com-plainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).
We are also convinced by the evidence that Respondent’s registration and use of the <supportaol.com> domain name shows bad faith within the contemplation of Policy ¶ 4(b)(iv), in that Respondent seeks to profit by employing the domain name, which is confusingly similar to Complainant’s AOL.COM service mark, to mislead Internet users seeking Complainant’s services. See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where a respondent registered a domain name that was confusingly similar to a UDRP complainant’s mark to host a commercial website offering services similar to those offered by that complainant under its mark).
Finally, under this head of the Policy, the evidence shows that Respondent uses the disputed domain name to pass itself off as Complainant, which further dem-onstrates Respondent’s bad faith registration and use of the domain name by giving Internet users the false impression that Respondent’s resolving website is operated by Complainant. See, for example, Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001), the panel there finding bad faith regis-tration and use of a disputed domain name sufficient to satisfy Policy ¶ 4(a)(iii) where a respondent used the domain name to misrepresent itself as a UDRP Complainant.
The Panel thus finds that complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby GRANTED.
Accordingly, it is Ordered that the <supportaol.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: October 24, 2013
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