America Online, Inc. v. Andy Tran d/b/a
SmartBuy Corporation
Claim
Number: FA0507000515489
Complainant is America Online, Inc. (“Complainant”), represented
by James R. Davis of Arent Fox PLLC, 1050
Connecticut Avenue, NW, Washington, DC 20036.
Respondent is Andy Tran d/b/a SmartBuy Corporation (“Respondent”), 1401 North Batavia Street,
Suite 111, Orange, CA 92867, US.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <topaol.com>, registered with Tucows
Inc. and <softicq.com>, <aolet.com>, <yougotvoicemail.com>, <yougotfemale.com>
and <aimreach.com>, registered with Enom, Inc..
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.
John
J. Upchurch as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on July
14, 2005; the National Arbitration Forum received a hard copy of the Complaint
on July 18, 2005.
On
July 14, 2005, Tucows Inc. confirmed by e-mail to the National Arbitration
Forum that the domain name <topaol.com> is registered with Tucows
Inc., Enom, Inc. and that Respondent is the current registrant of the
name. Tucows Inc. has verified that
Respondent is bound by the Tucows Inc. registration agreement and has thereby
agreed to resolve domain-name disputes brought by third parties in accordance
with ICANN's Uniform Domain Name Dispute Resolution Policy (the
"Policy").
On
July 15, 2005, Enom, Inc. confirmed by e-mail to the National Arbitration Forum
that the domain names <aolet.com>, <softicq.com>, <yougotvoicemail.com>,
<yougotfemale.com> and <aimreach.com> are registered
with Enom, Inc. and that Respondent is the current registrant of the
names. Enom, Inc. has verified that
Respondent is bound by the Enom, Inc. registration agreement and has thereby
agreed to resolve domain-name disputes brought by third parties in accordance
with ICANN's Uniform Domain Name Dispute Resolution Policy (the
"Policy").
On
July 25, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
August 15, 2005 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent's registration as technical, administrative and billing
contacts, and to postmaster@topaol.com, postmaster@aolet.com, postmaster@softicq.com,
postmaster@yougotvoicemail.com, postmaster@yougotfemale.com and postmaster@aimreach.com
by e-mail.
Having
received no Response from Respondent, the National Arbitration Forum
transmitted to the parties a Notification of Respondent Default.
On
August 23, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed John J.
Upchurch 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." 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 <topaol.com>, <aolet.com>,
<softicq.com>, <yougotvoicemail.com>, <yougotfemale.com>
and <aimreach.com> domain names are confusingly similar to
Complainant’s AOL, ICQ, AIM and YOU’VE GOT MAIL marks.
2. Respondent does not have any rights or
legitimate interests in the <topaol.com>, <aolet.com>,
<softicq.com>, <yougotvoicemail.com>, <yougotfemale.com>
and <aimreach.com> domain names.
3. Respondent registered and used the <topaol.com>,
<aolet.com>, <softicq.com>, <yougotvoicemail.com>,
<yougotfemale.com> and <aimreach.com> domain names in
bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, America Online, Inc., is a global leader in
the computer, entertainment and online services industries. Complainant uses its AOL, ICQ, AIM and
YOU’VE GOT MAIL marks in connection with a wide range of information and
services over the Internet and through tradiational media.
Complainant holds numerous trademark registrations with the United States
Patent and Trademark Office (“USPTO”) for the AOL (Reg. No. 1,977,731 issued
June 4, 1996), ICQ (Reg. No. 2,411,657 issued December 12, 2000), AIM (Reg. No.
2,423,368 issued January 23, 2001) and YOU’VE GOT MAIL (Reg. No. 2,628,523
issued October 1, 2002) marks.
Complainant has invested substantial sums of money to develop and market
its products, services and famous marks.
Complainant has spent millions of dollars to promote and advertise its
marks via network and cable television, radio broadcasts, newspapers and other
print periodicals.
Respondent registered the <topaol.com> domain name on November 23, 2003. Respondent registered the <aimreach.com>
domain name on March 6, 2004, the <yougotvoicemail.com> and <yougotfemale.com>
domain names on March 7, 2004, the <aolet.com> domain name on
April 5, 2004, and the <softicq.com> domain name on April 11,
2004. The disputed domain names resolve
to directory websites that feature generic search engines and links to various
third-party businesses. Presumably,
Respondent receives referral fees from these websites.
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 in the Complaint as true. See Bayerische Motoren Werke AG v.
Bavarian AG, FA 110830 (Nat. Arb. Forum June 17, 2002) (finding
that, in the absence of a response, the panel is free to make inferences from
the very failure to respond and assign greater weight to certain circumstances
than it might otherwise do); see also 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).
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 has
provided evidence of its registrations of the AOL, ICQ and YOU’VE GOT MAIL
marks with the USPTO. Complainant’s
registration of its mark with a federal authority is sufficient to establish a prima
facie case of Complainant’s rights in the marks for purposes of Policy ¶
4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration
of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the
mark.”); see also Janus
Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel
decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable
presumption that the mark is inherently distinctive.").
The <topaol.com>,
<aolet.com>, <softicq.com> and <aimreach.com>
domain names include either Complainant’s AOL, ICQ or AIM mark in its entirety
in addition to a generic or descriptive term or combination of letters and the
generic top-level domain (“gTLD”) “.com.”
The addition of a generic or descriptive term or letter combination and
a gTLD to Complainant’s registered and famous marks is not sufficient to
distinguish the disputed domain names from Complainant’s mark. Therefore, the <topaol.com>, <aolet.com>,
<softicq.com> and <aimreach.com> domain names are
confusingly similar to Complainant’s marks pursuant to Policy ¶ 4(a)(i). See Busy Body, Inc. v. Fitness Outlet
Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding that "the addition of
the generic top-level domain (gTLD) name ‘.com’
is . . . without legal significance since use of a gTLD is
required of domain name registrants"); see also Am. Online, Inc.
v. Tencent Commc’ns Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000)
(finding that <oicq.net> and <oicq.com> are confusingly similar to
the complainant’s mark, ICQ); see also L.L. Bean, Inc. v.
ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000) (finding that
combining the generic word “shop” with the complainant’s registered mark
“llbean” does not circumvent the complainant’s rights in the mark nor avoid the
confusing similarity aspect of the Policy).
The <yougotvoicemail.com>
domain name is confusingly similar to Complainant’s YOU’VE GOT MAIL mark,
because the disputed domain name is comprised of the dominant features of
Complainant’s mark, omitting only the contraction “’ve” and adding the generic
or descriptive term “voice.” See
Modern Props, Inc. v. Wallis, FA 152458 (Nat. Arb. Forum June 2, 2003)
(“Notwithstanding the analysis by Respondent, ‘modprops’ is a contraction or
shorthand for ‘Modern Props.’ ‘Mod’ cononotes [sic] ‘modern’ regardless of any
other dictionary meanings, so the names are substantially similar in
meaning.”); see also Down E. Enter. Inc. v. Countywide Commc’ns,
FA 96613 (Nat. Arb. Forum Apr. 5, 2001) (finding the domain name
<downeastmagazine.com> confusingly similar to the complainant’s common
law mark DOWN EAST, THE MAGAZINE OF MAINE); see also Sony Kabushiki
Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that
“[n]either the addition of an ordinary descriptive
word . . . nor the suffix ‘.com’ detract from the overall
impression of the dominant part of the name in each case, namely the trademark
SONY” and thus Policy ¶ 4(a)(i) is satisfied).
The Panel finds
that Complainant has satisfied Policy ¶ 4(a)(i) for the <topaol.com>,
<aolet.com>, <softicq.com>, <yougotvoicemail.com>
and <aimreach.com> domain names.
Although the <yougotfemale.com>
domain name might sound somewhat similar to Complainant’s YOU’VE GOT MAIL mark,
the Panel does not find the domain name to be confusingly similar to the mark. See Copart, Inc. v. SalvageNow,
D2000-0417 (WIPO June 28, 2000) (finding that the domain name at issue
<copart.net> is not identical to nor substantially similar to the mark
registered and used by the complainant, "CI Copart Inc. Salvage Auto
Auctions"); see also Dollar Fin. Group, Inc. v. Oakridge, FA
94977 (Nat. Arb. Forum July 17, 2000) (finding that the domain names,
<tillpaydayloan.com>, <tillpaydayloans.com>,
<untilpaydayloan.com>, and <untilpaydayloans.com> are not identical
or confusingly similar to the complainant’s CASH ‘TIL PAYDAY and CASH ‘TIL
PAYDAY LOANS trademarks and service marks).
Thus, the Panel
finds that Complainant has not satisfied Policy ¶ 4(a)(i) for the <yougotfemale.com>
domain name.
It has been
established under the Policy that the complainant has the initial burden of
proving that the respondent lacks rights and legitimate interests in the
disputed domain names. In Compagnie
Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May
14, 2001), the panel held:
Proving
that the Respondent has no rights or legitimate interests in respect of the
Domain Name requires the Complainant to prove a negative. 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.
Id.; see also Do The Hustle, LLC
v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that where the
complainant has asserted that the respondent has no rights or legitimate
interests with respect to the domain name it is incumbent on the respondent to
come forward with concrete evidence rebutting this assertion because this
information is “uniquely within the knowledge and control of the
respondent”). Having found that
Complainant has met its initial burden by establishing a prima facie
case, the Panel will now analyze whether Respondent has met its burden to
establish rights or legitimate interests in the disputed domain names under
Policy ¶ 4(c).
Complainant
argues that Respondent is not commonly known by the disputed domain names and
that Complainant has not authorized or licensed Respondent to use any of
Complainant’s registered marks. The
WHOIS information for Respondent does not indicate any affiliation with the <topaol.com>,
<aolet.com>, <softicq.com>, <yougotvoicemail.com>,
<yougotfemale.com> and <aimreach.com> domain names
other than Respondent’s registration of the domain names. Without a response from Respondent, the
Panel has before it no evidence to challenge Complainant’s assertions that
Respondent is not commonly known by the disputed domain names. Therefore, Respondent has not established
rights or legitimate interests in the disputed domain names under Policy ¶
4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA
96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not
have rights in a domain name when the respondent is not known by the mark); see
also Wells Fargo & Co. v. Onlyne Corp.
Services11, Inc., FA 198969 (Nat. Arb.
Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed
domain [name], one can infer that Respondent, Onlyne Corporate Services11, is
not commonly known by the name ‘welsfargo’ in any derivation.”); see also
RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting
Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known
by the domain name prior to registration of the domain name to prevail").
Complainant has
submitted evidence that the disputed domain names are being used to forward
Internet users searching for Complainant’s products and services to directory
websites that feature generic search engines and links to various businesses
unrelated to Complainant. Presumably,
Respondent earns commissions for linking Internet users to these third-party
websites through Respondent’s websites.
Respondent’s use of domain names that are confusingly similar to
Complainant’s marks for Respondent’s commercial benefit is not in connection
with a bona fide offering of goods or services under Policy ¶ 4(c)(i)
and it is not a legitimate noncommercial or fair use of the domain names 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).”); see also WeddingChannel.com
Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that
the respondent’s use of the disputed domain name to
redirect Internet users to websites unrelated to the complainant’s mark,
websites where the respondent presumably receives a referral fee for each
misdirected Internet user, was not a bona fide offering of goods or
services as contemplated by the Policy).
Furthermore, in failing to submit a response to Complainant’s
allegations, Respondent has neglected to provide any evidence that would
challenge Complainant’s prima facie case. Thus, the Panel finds that Respondent has not established rights
or legitimate interests in the disputed domain names under Policy ¶ 4(c)(i) or
(iii). See Charles Jourdan Holding AG v. AAIM,
D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the panel to draw
adverse inferences from the respondent’s failure to reply to the complaint); see
also CMGI, Inc. v. Reyes,
D2000-0572 (WIPO Aug. 8, 2000) (finding that the respondent’s failure to
produce requested documentation supports a finding for the complainant).
The Panel finds
that Complainant has satisfied Policy ¶ 4(a)(ii).
The disputed
domain names resolve to websites that features generic search engines and links
to a variety of products and services.
By using Complainant’s famous marks in the disputed domain names,
Respondent is creating a likelihood of confusion and attempting to attract
Internet users to Respondent’s website for Respondent’s commercial gain. Respondent’s activities are evidence of bad
faith registration and use under Policy ¶ 4(b)(iv). See H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat.
Arb. Forum Jan. 8, 2003) (finding that the disputed domain name was registered
and used in bad faith pursuant to Policy ¶ 4(b)(iv) through the respondent’s
registration and use of the infringing domain name to intentionally attempt to
attract Internet users to its fraudulent website by using the complainant’s
famous marks and likeness); see also Am.
Univ. v. Cook, FA 208629 (Nat. Arb. Forum
Dec. 22, 2003) (“Registration and use of a domain name that incorporates
another's mark with the intent to deceive Internet users in regard to the
source or affiliation of the domain name is evidence of bad faith.”); see
also Drs. Foster & Smith,
Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith
where the respondent directed Internet users seeking the complainant’s site to
its own website for commercial gain).
Furthermore,
based on the fame of Complainant’s AOL, ICQ, AIM and YOU’VE GOT MAIL marks,
Respondent’s use of the marks within the disputed domain names suggests that
Respondent knew of Complainant’s rights in the marks when Respondent registered
the disputed domain names and intended to take advantage of Complainant’s
goodwill in the mark. In addition,
Complainant’s registration of its marks with the USPTO bestows upon Respondent
constructive knowledge of Complainant’s rights in its marks. Thus, Respondent’s registration of domain
names that are confusingly similar to Complainant’s marks despite knowledge of
Complainant’s rights in the marks is evidence of bad faith registration and use
under Policy ¶ 4(a)(iii). See Digi
Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that
“there is a legal presumption of bad faith, when Respondent reasonably should
have been aware of Complainant’s trademarks, actually or constructively”); see
also Samsonite Corp. v. Colony
Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of
bad faith includes actual or constructive knowledge of a commonly known mark at
the time of registration); see also Orange Glo Int’l v. Blume, FA
118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed
on the Principal Register of the USPTO, a status that confers constructive
notice on those seeking to register or use the mark or any confusingly similar
variation thereof.”).
The Panel finds
that Complainant has satisfied Policy ¶ 4(a)(iii).
Having
established all three elements required under the ICANN Policy as to the <topaol.com>,
<aolet.com>, <softicq.com>, <yougotvoicemail.com>
and <aimreach.com> domain names, the Panel concludes that relief
shall be GRANTED in regards to these domain names.
Accordingly, it
is Ordered that the <topaol.com>, <aolet.com>, <softicq.com>,
<yougotvoicemail.com> and <aimreach.com> domain names
be TRANSFERRED from Respondent to Complainant.
However, having
failed to establish the first element required under the ICANN Policy, the
Panel concludes that relief shall be DENIED as to the <yougotfemale.com>
domain name.
John
J. Upchurch, Panelist
Dated: August 29, 2005
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page