AOL LLC v. David Hanley
Claim Number: FA0912001297790
Complainant is AOL
LLC (“Complainant”), represented by James
R. Davis, of Arent Fox LLP,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <wwwtuaw.com> and <wwwparentdish.com>, registered with Godaddy.com, 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 8, 2009; the National Arbitration Forum received a hard copy of the Complaint on December 9, 2009.
On December 8, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <wwwtuaw.com> and <wwwparentdish.com> domain names are registered with Godaddy.com, Inc. and that Respondent is the current registrant of the names. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, 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 December 9, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 29, 2009 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@wwwtuaw.com postmaster@wwwparentdish.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 7, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 <wwwtuaw.com> domain name is confusingly similar to Complainant’s TUAW mark.
Respondent’s <wwwparentdish.com> domain name is confusingly similar to Complainant’s PARENTDISH mark.
2. Respondent does not have any rights or legitimate interests in the <wwwtuaw.com> and <wwwparentdish.com> domain names.
3. Respondent registered and used the <wwwtuaw.com> and <wwwparentdish.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, AOL LLC, provides information and services through Complainant’s PARENTDISH and TUAW marks. Under Complainant’s PARENTDISH mark, Complainant provides information and services relating to parenting. Complainant uses its TUAW mark to offer information and services concerning Apple Inc. Complainant has used its TUAW mark for this purpose since 2004. Complainant promotes both marks extensively on its many different webpages, such as <aol.com>. Complainant operates websites resolving from both <parentdish.com> and <tuaw.com> domain names. Complainant holds a trademark registration with the United States Patent and Trademark Office (“USPTO”) for its PARENTDISH mark (Reg. No. 3,672,810 August 25, 2009).
Respondent, David Hanley, registered the <wwwtuaw.com> and <wwwparentdish.com> domain names no earlier than October 8, 2009. The disputed domain names resolve to websites containing hyperlinks to Complainant’s competitors in the information and services industry. The resolving websites also each offer the disputed domain names for sale for $2,000.
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 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.”).
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 registered the PARENTDISH mark with the USPTO (Reg. No. 3,672,810 August 25, 2009). The Panel finds that Complainant has established rights in the PARENTDISH mark pursuant to Policy ¶ 4(a)(i). See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority); see also 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).
Complainant does not hold a trademark registration with the
USPTO for its TUAW mark. However,
governmental trademark registration is not necessary to establish rights under
Policy ¶ 4(a)(i). Previous panels have
determined that a federal registration is not required so long as the
Complainant can establish common law rights through proof of sufficient
secondary meaning associated with the mark.
See SeekAmerica Networks Inc. v.
Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not
require that the complainant's trademark or service mark be registered by a
government authority or agency for such rights to exist); see also Artistic
Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8,
2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration
if a complainant can establish common law rights in its mark).
Complainant uses the TUAW mark to offer information and services related to a third-party, Apple Inc. Complainant began offering these services in 2004 and has continuously promoted the mark and services since that time. Complainant receives substantial sales and marketing activity from its website resolving from the <www.tuaw.com> domain name. Complainant has invested a substantial amount of money in developing and marketing its information and services under its TUAW mark. Complainant has established common law rights in the TUAW mark through continuous and extensive commercial use predating Respondent’s registration of the disputed domain name under Policy ¶ 4(a)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the complainant could establish common law rights in its GW BAKERIES mark through consistent and continuous use of the mark, which helped the mark become distinctive and generate “significant goodwill”); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (concluding that the complainant had established common law rights in the ARTISTIC PURSUIT mark by using the mark in commerce before Respondent registered the disputed domain name).
Complainant contends Respondent’s <wwwtuaw.com> domain name confusingly similar to
Complainant’s TUAW mark. The disputed
domain name includes Complainant’s entire mark, adds the generic prefix “www,”
and adds the generic top-level domains (“gTLD”) “.com.” Previous panels have held the addition of a
generic prefix and a gTLD fail to adequately distinguish a disputed domain name
from a complainant’s mark. See Neiman Marcus Group, Inc. v. S1A,
FA 128683 (Nat. Arb. Forum Dec. 6, 2002) (holding confusing similarity has been
established because the prefix “www” does not sufficiently differentiate the
<wwwneimanmarcus.com> domain name from the complainant's NEIMAN-MARCUS
mark); see also Dana Corp. v. $$$
This Domain Name Is For Sale $$$, FA 117328 (Nat. Arb. Forum Nov. 19, 2002)
(finding the respondent's <wwwdana.com> domain name confusingly similar
to the complainant's registered DANA mark because the complainant's mark remains
the dominant feature); see also Jerry Damson, Inc. v.
Complainant contends Respondent’s <wwwparentdish.com> domain name is confusingly
similar to Complainant’s PARENTDISH mark.
The disputed domain name combines Complainant’s mark with the generic
prefix “www” and the gTLD “.com.” The
Panel finds the addition of a generic prefix and a gTLD are insufficient to
distinguish the disputed domain name from Complainant’s mark. See
supra Neiman Marcus Group, Inc. v. S1A; see also supra Dana Corp. v. $$$ This Domain Name Is For
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have any
rights or legitimate interests in the <wwwtuaw.com> and <wwwparentdish.com>
domain names. The burden shifts to
Respondent to prove that it does have rights or legitimate interests pursuant
to Policy ¶ 4(a)(ii) once Complainant makes a prima facie case in support of its allegations. The Panel finds Complainant has made a
sufficient prima facie case. The Panel may assume that Respondent does not
have rights or legitimate interests in the disputed domain name because of
Respondent’s failure to respond to the Complaint. However, the Panel will
examine the record to determine whether Respondent has rights or legitimate
interests in the disputed domain names under Policy ¶ 4(c). See Do the Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to
[contest complainant’s allegations] is tantamount to admitting the truth of
complainant’s assertions in this regard.”); see
also Bank of Am. Corp. v.
McCall, FA 135012 (Nat. Arb. Forum Dec.
31, 2002) (“Respondent's failure to respond not only results in its failure to
meet its burden, but also will be viewed as evidence itself that Respondent
lacks rights and legitimate interests in the disputed domain name.”).
Complainant contends that Respondent is not commonly known
by the disputed domain
names and that Respondent has never been the owner or licensee of either of the
PARENTDISH or TUAW marks. The WHOIS
records for the disputed domain names both list the domain name registrant as
“David Hanley.” Furthermore, Respondent
has failed to show any evidence contrary to Complainant’s contentions. Because there is no evidence that Respondent
has ever been commonly known by the PARENTDISH or TUAW marks, the Panel finds
that Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Am. W.
Airlines, Inc. v. Paik, FA 206396 (Nat.
Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name
under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration
information, Respondent is not commonly known by the [<awvacations.com>]
domain name.”); 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").
Respondent uses the <wwwtuaw.com> and <wwwparentdish.com> domain names to operate websites featuring hyperlinks and advertisements related to Complainant’s competitors in the information and services industry. Respondent likely receives click through fees from the aforementioned hyperlinks. The Panel finds this use of confusingly similar disputed domain names is not a not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or legitimate noncommercial or fair uses of the domain names under Policy ¶ 4(c)(iii). See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Respondent further offers the <wwwtuaw.com> and <wwwparentdish.com> domain names for sale on the respective resolving websites. The disputed domain names are offered for sale at $2,000 for each disputed domain name. The Panel finds an offer to sell the disputed domain names is evidence that Respondent has no rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)).
In addition, Respondent’s use of the <wwwtuaw.com> and <wwwparentdish.com> domain names constitutes typosquatting. The Panel finds that Respondent’s use of domain names that capitalize on a common typographical error, omitting the period between the “www” prefix and Complainant’s mark, to redirect Internet users seeking Complainant’s website fails to establish rights or interests pursuant to Policy ¶ 4(a)(ii). See RE/MAX Int’l, Inc. v. Seocho, FA 142046 (Nat. Arb. Forum Feb. 25, 2003) (finding that the respondent has no rights or legitimate interests in the <wwwremax.com> domain name as it is merely using the complainant’s mark to earn profit from pop-up advertisements); see also Medline, Inc. v. Domain Active Pty. Ltd., FA 139718 (Nat. Arb. Forum Feb. 6, 2003) (“Considering the nonsensical nature of the [<wwwmedline.com>] domain name and its similarity to Complainant’s registered and distinctive [MEDLINE] mark, the Panel concludes that Policy ¶ 4(c)(ii) does not apply to Respondent.”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent offers to sell the <wwwtuaw.com> and <wwwparentdish.com> domain names for $2,000 each on the respective resolving websites. Respondent is attempting to sell the confusingly similar disputed domain names for more than Respondent’s out-of-pocket costs of registering the disputed domain names. The Panel finds Respondent’s attempt to sell the disputed domain names for more than its out-of-pocket costs constitutes bad faith registration and use under Policy ¶ 4(b)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name); see also Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002) ("[w]hat makes an offer to sell a domain [name] bad faith is some accompanying evidence that the domain name was registered because of its value that is in some way dependent on the trademark of another, and then an offer to sell it to the trademark owner or a competitor of the trademark owner").
Respondent’s <wwwtuaw.com> and <wwwparentdish.com> domain
names resolve to websites featuring hyperlinks and advertisements of
Complainant’s competitors. The website
resolving from the <wwwtuaw.com> domain name contains hyperlinks
to competing Apple Inc. news websites; the <wwwparentdish.com> domain
name resolves to a website featuring hyperlinks to competing parenting
information and services websites.
Internet users interested in these information and services may visit
competing websites instead of Complainant’s websites because of Respondent’s
use of the confusingly similar disputed domain names. Therefore, the Panel finds Respondent’s use
of the confusingly similar disputed domain names disrupts Complainant’s
business, which constitutes bad faith registration and use under Policy ¶
4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982
(Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly
similar domain name to attract Internet users to a directory website containing
commercial links to the websites of a complainant’s competitors represents bad
faith registration and use under Policy ¶ 4(b)(iii)); see
also Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854
(Nat. Arb. Forum Apr. 10, 2007) (holding that where the respondent’s website featured
hyperlinks to competing websites and included a link to the complainant’s
website, the respondent’s use of the <redeemaamiles.com> domain name
constituted disruption under Policy ¶ 4(b)(iii)).
The Panel infers
Respondent receives click-through fees from the aforementioned hyperlinks and
advertisements. Respondent attempts to
profit from the confusion of Internet users as to Complainant’s association and
sponsorship of the disputed domain names, resolving websites, and featured
hyperlinks. The Panel concludes this use
of the disputed domain names constitutes bad faith registration and use under
Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb.
Forum July 18, 2006) (finding that the respondent engaged in bad faith
registration and use by using a domain name that was confusingly similar to the
complainant’s mark to offer links to third-party websites that offered services
similar to those offered by the complainant); 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).
Furthermore, Respondent has engaged in typosquatting through its use of the <wwwtuaw.com> and <wwwparentdish.com> domain names, which capitalize on common typographical errors, namely eliminating the period between the “www” prefix and Complainant’s marks. Therefore, the Panel finds Respondent’s use of the disputed domain names constitutes bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Diners Club Int’l Ltd. v. Domain Admin******It's all in the name******, FA 156839 (Nat. Arb. Forum June 23, 2003) (“Registering a domain name which entirely incorporates a famous mark with the addition of the “www” prefix evidences not only actual knowledge of a trademark holder’s rights in that mark but an intent to ensnare Internet users who forget to type the period between the “www” and a second-level domain name while attempting to reach Complainant’s URL.”); see also Black & Decker Corp. v. Khan, FA 137223 (Nat. Arb. Forum Feb. 3, 2003).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wwwtuaw.com> and <wwwparentdish.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: January 19, 2010
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