AOL LLC v. Mark Interrante
Claim Number: FA0604000681239
Complainant is AOL LLC (“Complainant”), represented by James R. Davis, of Arent Fox PLLC, 1050 Connecticut Avenue, NW, Washington, DC 20036. Respondent is Mark Interrante (“Respondent”), 9807 FM 620 N, #18204, Austin, TX 78726.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <aolgoogle.com>, registered with Go Daddy Software, 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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 17, 2006; the National Arbitration Forum received a hard copy of the Complaint on April 19, 2006.
On April 18, 2006, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <aolgoogle.com> domain name is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, 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 April 20, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 10, 2006 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@aolgoogle.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 15, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Thereafter, under dates of May 16 and 17, 2006, Respondent submitted untimely responses to the Complaint. Those responses were not accompanied by any evidence independent of Respondent’s allegations except for what purports to be a partial reprint of a record from the United States Patent and Trademark Office.
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.
Although the responses to the Complainant filed by Respondent were untimely, the Panel has determined, in the interests of justice, to consider the essential assertions contained in those responses.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant holds multiple registrations for the AOL trademark and service mark with the United States Patent and Trademark Office (“USPTO”), including Reg. No. 1,977,731 issued June 4, 1996, and Reg. No. 1,984,337 issued June 4, 1996.
Complainant has used its AOL mark in connection with promoting its Internet services, including search engine services, since 1989.
Complainant has enjoyed a lengthy business relationship with a third party, Google Inc., which also provides Internet search-engine services.
Respondent registered the <aolgoogle.com> domain name on December 17, 2004.
Internet users who access this domain name are directed to a generic search-engine website that competes with services offered by Complainant.
Respondent is not commonly known by the disputed domain name, nor is Respondent authorized by Complainant to use Complainant’s mark.
In e-mail correspondence dated in April of 2006, Complainant demanded that Respondent cease using the disputed domain name and transfer it to Complainant, and set a deadline of April 14, 2006, for Respondent’s response to that demand.
Respondent’s <aolgoogle.com> domain name is confusingly similar to Complainant’s AOL mark.
Respondent does not have any rights or legitimate interests in the <aolgoogle.com> domain name.
Respondent registered and uses the <aolgoogle.com> domain name in bad faith.
Respondent failed to submit a timely Response in this proceeding, and its untimely responses to the Complaint are unsupported by proof except for what purports to be a partial reprint of a record from the United States Patent and Trademark Office.
B. Respondent’s assertions are, in substance, as follows:
Respondent is the owner of the trademark a.o.l.g.o.o.g.l.e.
The same mark was first used in commerce in December of 2004.
The purpose of Respondent’s domain name is to support an Internet search engine.
(1) the domain name registered by Respondent is confusingly similar to a trademark and a 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 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."
In view of Respondent's failure to submit a timely response, the Panel is entitled to 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 to draw such inferences as 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 a 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:
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.
Notwithstanding Respondent’s untimely and largely unsubstantiated responses to the Complaint in this proceeding, the Panel will examine all of the allegations and evidence submitted by the parties in reaching its determination.
Complainant has submitted evidence of its registration of the AOL mark with the USPTO. The Panel finds that such evidence establishes Complainant’s rights in the mark pursuant to 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 Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003): “Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”
For its part, Respondent asserts that it has rights in the mark a.o.l.g.o.o.g.l.e. In support of this assertion, Respondent offers what purports to be a partial reprint of a record from the United States Patent and Trademark Office. Omitted from that partial reprint is information indicating that the date of filing of the application is April 14, 2006, only three days prior to the filing of the Complaint in this proceeding. Likewise omitted is the fact that the record submitted is for a newly filed application not yet assigned to an examining attorney. Omitted too is the fact that the date April 14, 2006, is coincident with the date earlier given by Complainant for Respondent to comply with a demand that it cease using the contested domain name.
For present purposes it is
sufficient to note that Complainant’s rights in its AOL mark predate
Respondent’s claimed rights in its purported mark, and that Complainant’s mark
is registered with the relevant national authorities, while Respondent’s
claimed mark has been filed for registration but not yet examined for its
qualifications under law. We turn then
to the question of identity-confusing similarity.
Respondent’s <aolgoogle.com>
domain name includes Complainant’s AOL mark in its
entirety and adds the mark of another well-known Internet services company,
Google Inc., along with the top-level domain “.com.” Top-level domains are required in all Internet domain names, so
that the addition of “.com” to Complainant’s mark does not distinguish
Respondent’s domain name from the competing mark for purposes of Policy
¶ 4(a)(i). See Pomellato S.p.A v. Tonetti,
D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to a
complainant’s mark because the generic top-level domain (gTLD) “.com” after the
name POMELLATO is not relevant). Moreover, the addition of the GOOGLE mark to Respondent’s
domain name also fails to distinguish that domain name from Complainant’s
mark. See America Online, Inc. v.
Janas, FA 203173 (Nat. Arb. Forum Nov. 24, 2003) (finding that the
addition of the third-party mark TIVO to a complainant’s AOL mark did not
negate the confusing similarity of the <aoltivo.com> domain name with
respect to the AOL mark); see also G.D. Searle & Co. v. Pelham,
FA 117911 (Nat. Arb. Forum Sept. 19, 2002) (finding that the addition of other
drug industry names to a mark to form a domain name does not create a distinct
mark capable of overcoming a claim of confusing similarity, but “merely creates
a domain name with severe potential to confuse Internet users as to the source,
sponsorship and affiliation of the domain”).
The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.
Under Policy ¶ 4(a)(ii), the burden is on Complainant to prove that Respondent does not have rights or legitimate interests in the disputed domain name. Once Complainant has made out a prima facie case, the burden shifts to Respondent to show that it has rights or legitimate interests pursuant to Policy ¶ 4(c). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (once a complainant asserts that a respondent has no rights or legitimate interests with respect to a domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001):
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.
It is undisputed here that Respondent uses the <aolgoogle.com> domain name to redirect Internet users to Respondent’s website, which competes with Complainant’s search-engine services. The Panel presumes that Respondent earns click-through fees in return for redirecting traffic from its search-engine website to other websites. Such use of the disputed domain name, which is confusingly similar to Complainant’s mark, is not in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that a respondent was not using contested domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by a complainant under its marks); see also Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that a respondent was not using a disputed domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of a complainant's mark by diverting Internet users to a competing commercial site).
Moreover, Complainant asserts, without contradiction from Respondent, that Respondent is neither commonly known by the <aolgoogle.com> domain name nor authorized by Complainant to use a domain name featuring Complainant’s mark. There is no information in the WHOIS database, nor any other information in the record of this proceeding indicating that Respondent is commonly known by the <aolgoogle.com> domain name. Thus, the Panel concludes that Respondent is not commonly known by the disputed domain name within the meaning of Policy ¶ 4(c)(ii). See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) a respondent is not a licensee of a complainant; (2) complainant’s rights in the domain name precede that of respondent’s domain name registration; and (3) respondent is not commonly known by the domain name in question); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests where a respondent was not commonly known by the mark and never applied for a license or permission from a complainant to use the trademarked name).
For these reasons, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Because Respondent’s <aolgoogle.com> domain
name includes Complainant’s AOL mark, Internet users may mistakenly believe
that the resulting website is affiliated with Complainant. Furthermore, because Respondent’s website
hosts a search-engine, and Complainant’s Internet services include
search-engine services, the likelihood that Internet users will mistakenly
relate Respondent’s website to Complainant increases. The Panel presumes that Respondent receives click-through fees in
exchange for diverting Internet users from its search-engine to other websites. Use of the disputed domain name to take
advantage of such confusion for profit constitutes bad faith registration and
use pursuant to Policy ¶ 4(b)(iv). See
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 Am.
Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21,
2000) (finding bad faith where a respondent registered and used a domain name
confusingly similar to a complainant’s mark to attract users to a website
sponsored by the respondent).
Additionally, it appears that Respondent registered the
contested domain names with either actual or constructive knowledge of Complainant’s
rights in the AOL mark by virtue of Complainant’s prior registration of that
mark with the United States Patent and Trademark Office. Registration of a confusingly similar domain
name despite such actual or constructive knowledge evidences bad faith
registration and use of the domain name pursuant to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys.,
FA 124506 (Nat. Arb. Forum Oct. 24, 2002); see
also Orange Glo Int’l v. Blume,
FA 118313 (Nat. Arb. Forum Oct. 4, 2002).
Finally, Respondent’s filing of
responses in this proceeding containing disingenuous omissions of information
material to the issues presented in those responses is further evidence of
Respondent’s bad faith.
The Panel thus finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <aolgoogle.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: May 23, 2006
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