AOL Inc. v. Ahmed Saif Shrikhande
Claim Number: FA1003001311484
Complainant is AOL Inc. (“Complainant”), represented by James
R. Davis, of Arent Fox LLP,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <icq-com.com>, <ww-icq.com>, <wwwwicq.com> and <winampde.com>, registered with Internetworx Ltd. & Co. Kg.
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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 4, 2010.
The National Arbitration Forum made several attempts to receive verification from Internetworx Ltd. & Co. Kg., that the <icq-com.com>, <ww-icq.com>, <wwwwicq.com> and <winampde.com> domain names are registered with Internetworx Ltd. & Co. Kg. and that Respondent is the current registrant of the names. The Forum also made several attempts to receive verification from Internetworx Ltd. & Co. Kg. that Respondent is bound by the Internetworx Ltd. & Co. Kg. 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”). Internetworx Ltd. & Co. Kg. did not reply to the Forum’s verification requests.
On March 22, 2010 the Forum reported to ICANN that Internetworx Ltd. & Co. Kg. was non-compliant with the Forum’s verification requests. On March 24, 2010 the Forum notified ICANN and the parties that the case would proceed without verification due to Internetworx Ltd. & Co. Kg.’s failure to comply with the Forum’s verification requests.
On March 31, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 20, 2010 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@icq-com.com, postmaster@ww-icq.com, postmaster@wwwwicq.com and postmaster@winampde.com by e-mail. Also on March 31, 2010, the Written Notice of the Complaint, notifying Respondent of the email 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 22, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin 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 "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. 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 <icq-com.com>, <ww-icq.com>, <wwwwicq.com> and <winampde.com> domain names are confusingly similar to Complainant’s ICQ mark.
Respondent’s <winampde.com> domain name is confusingly similar to Complainant’s WINAMP mark.
2. Respondent does not have any rights or legitimate interests in the <icq-com.com>, <ww-icq.com>, <wwwwicq.com> and <winampde.com> domain names.
3. Respondent registered and used the <icq-com.com>, <ww-icq.com>, <wwwwicq.com> and <winampde.com>domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, AOL Inc., is global provider of computer, entertainment and online services. Complainant owns several trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its ICQ mark (e.g. Reg. No. 2,411,657 issued on Dec. 12, 2000) and WINAMP mark (e.g. Reg. No. 2,557,585 issued on April 9, 2002). Complainant further holds trademark registrations with the United Arab Emirates Intellectual Property Office (“UAEIPO) for its ICQ mark (Reg. No. 37,672 issued on April 19, 2003).
Respondent, Ahmed Saif Shrikhande, registered the <icq-com.com>, <ww-icq.com>, <wwwwicq.com> and <winampde.com>domain names from September 23, 2009 to October 5, 2009. Respondent’s disputed domain names resolve to websites that display Complainant’s marks and products while offering downloadable versions of Complainant’s products.
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.
The Panel finds that Complainant has established rights in
its ICQ (USPTO Reg. No. 2,411,657 issued on Dec. 12, 2000); UAEIPO (UAEIPO Reg.
No. 37,672 issued on April 19, 2003) and WINAMP (USPTO Reg. No. 2,557,585
issued on April 9, 2002) marks under Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s
federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks
were adequate to establish its rights in the mark pursuant to Policy ¶
4(a)(i)); see also Google,
Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that
the complainant had established rights in the GOOGLE mark through its holding
of numerous trademark registrations around the world); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding
that it is irrelevant whether the complainant has registered its trademark in
the country of the respondent’s residence).
Complainant argues that the <icq-com.com>, <ww-icq.com> and <wwwwicq.com>
domain names are confusingly similar to its ICQ mark. The disputed domain names all contain
Complainant’s ICQ mark with different variations of the elements surrounding
the mark and all of the disputed domain names include the generic top-level
domain (“gTLD”) “.com.” Complainant
contends that Respondent’s use of misspellings, added hyphens and missing
punctuation do not make the disputed domain names distinctive from its ICQ
mark. The Panel agrees and finds that
Respondent’s disputed domain names are confusingly similar to Complainant’s ICQ
mark under Policy ¶ 4(a)(i). See Health
Devices Corp. v.
Complainant further argues that the <winampde.com> domain name is confusingly similar to Complainant’s WINAMP mark. Complainant notes that the disputed domain name contains its mark entirely with the addition of the letters “d” and “e” as well as the gTLD “.com.” The Panel finds that Respondent’s <winampde.com> domain name is confusingly similar to Complainant’s WINAMP mark under Policy ¶ 4(a)(i) because adding letters to Complainant’s mark along with a gTLD does not make the disputed domain name distinct from Complainant’s mark. See Amazon.com, Inc. v. Ikhizamah, D2002-1168 (WIPO Mar. 17, 2003) (holding that the <zamazon.com> domain name was confusingly similar to the complainant’s AMAZON.COM mark); see also Kelson Physician Partners, Inc. v. Mason, CPR003 (CPR 2000) (finding that <kelsonmd.com> is identical or confusingly similar to the complainant’s federally registered service mark, KELSON).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant declares that Respondent does not have any rights or legitimate interests in the <icq-com.com>, <ww-icq.com>, <wwwwicq.com> and <winampde.com> domain names. Complainant is required to make a prima facie case in support of these allegations. Once Complainant has produced a prima facie case the burden of proof shifts to Respondent to show that it holds rights or legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”). The Panel finds that the Complainant has produced a prima facie case. Due to the Respondent’s failure to respond to these proceedings, the Panel may assume Respondent does not have any rights or legitimate interests in the disputed domain names. The Panel, however, will examine the record to determine whether Respondent possesses rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c). See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond).
Complainant contends that Respondent is not commonly known by the disputed domain names, nor has Complainant given Respondent permission to use its marks. The WHOIS information identifies, “Ahmed Saif Shrikhande” as the registrant of the disputed domain names, and there is no further evidence on record that Respondent is commonly known by the disputed domain names. The Panel finds that Respondent is not commonly known by the disputed domain names for purposes of Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also 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 disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant further alleges that Respondent does not have
rights or legitimate interests in the disputed domain name because Respondent
is using the disputed domain names to operate a commercial website offering
Complainant’s products for download.
Complainant contends that Respondent’s use of its marks to offer
unauthorized products of Complainant is not a use in connection with a bona fide offering of goods or services
or a legitimate noncommercial or fair use.
The Panel finds that Respondent’s use of the disputed domain names to
offer Complainant’s products, as though it were Complainant, without
authorization from Complainant is not 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 Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb.
Forum May 30, 2003) (finding that the respondent attempts to pass itself off as
the complainant online, which is blatant unauthorized use of the complainant’s
mark and is evidence that the respondent has no rights or legitimate interests
in the disputed domain name); see also
Nokia Corp. v. Eagle, FA 1125685 (Nat. Arb. Forum Feb. 7, 2008) (finding the respondent’s use
of the disputed domain name to pass itself off as the complainant in order to
advertise and sell unauthorized products of the complainant was not a bona
fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the
disputed domain name pursuant to Policy ¶ 4(c)(iii)).
Respondent is taking advantage of Internet users that are
trying to reach Complainant’s websites by using common misspellings of the
elements Complainant’s ICQ mark and related official <icq.com> domain
name as seen in the <icq-com.com>, <ww-icq.com>,
<wwwwicq.com> domain names.
The Panel finds that Respondent’s engagement in what is commonly
referred to as typosquatting is evidence that Respondent lacks any rights or
legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii). See Microsoft Corp. v. Domain Registration
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent’s use of four disputed domain names that infringe upon its trademark rights is evidence that Respondent registered and used the disputed domain names in bad faith. The Panel finds that where Respondent has registered multiple domain names within a close period of time that infringe on Complainant’s marks that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(ii). See Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)); see also Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)).
Complainant also argues that Respondent’s use of the disputed domain names to display Complainant’s products, and offer them to Internet users results in a disruption to Complainant’s online services business. Complainant contends that Respondent’s use of confusingly similar domain names to divert Internet users to Respondent’s websites offering Complainant’s products is evidence of bad faith registration and use. The Panel finds that Respondent’s use of the <icq-com.com>, <ww-icq.com>, <wwwwicq.com> and <winampde.com> domain names to divert Internet customers seeking Complainant’s official websites to its own website where Respondent offers Complainant’s products is evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See Caterpillar Inc. v. Vine, FA 97097 (Nat. Arb. Forum June 22, 2001) (“Respondent registered each of the disputed domain names in order to gain customers and to disrupt Complainant's business of authorizing dealers to sell its CATERPILLAR equipment.”); see also Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from the respondent, a watch dealer not otherwise authorized to sell the complainant’s goods, to the complainant).
Complainant further contends that Respondent’s use of the confusingly similar domain names to attract Internet users to its website where it displays Complainant’s products and offers them for download results in confusion to Internet users as to Complainant’s affiliation with the websites. Complainant argues that this type of use is further evidence of bad faith registration and use. The Panel finds that Respondent’s use the confusingly similar <icq-com.com>, <ww-icq.com>, <wwwwicq.com> and <winampde.com> domain names to intentionally attract Internet users to its websites, presumably for financial gain, is further evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by displaying the complainant’s mark on its website and offering identical services as those offered by the complainant).
The Panel has already determined that Respondent has engaged
in typosquatting with respect to the <icq-com.com>, <ww-icq.com>
and <wwwwicq.com> domain names. This practice has been found to constitute
evidence by itself of bad faith registration and use under Policy ¶ 4(a)(iii). See Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005) (finding that the
respondent’s registration and use of the <nextell.com> domain name was in
bad faith because the domain name epitomized typosquatting in its purest form);
see also Microsoft Corp. v.
Domain Registration
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 <icq-com.com>, <ww-icq.com>, <wwwwicq.com> and <winampde.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: April 28, 2010
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