AOL Inc. v. King Kong
Claim Number: FA1007001333474
Complainant is AOL
Inc. (“Complainant”), represented by James
R. Davis, of Arent Fox LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <wwwaolnews.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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 2, 2010.
On July 2, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <wwwaolnews.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. 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 July 7, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 27, 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@wwwaolnews.com. Also on July 7, 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 August 2, 2010, 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.
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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant offers computer and telecommunications services, including computerized research and reference materials in the fields of business, finance, entertainment and news reporting.
Complainant operates a website resolving from the <aolnews.com> domain name.
Complainant holds registrations for its AOL mark with both
the United States Patent and Trademark Office (“USPTO”) (including service mark
Reg. No. 1,977,731, issued June 4, 1996) and
Respondent registered the disputed domain name on January 29, 2010.
The disputed domain name resolves to a website offering links to third-party news services that compete directly with those provided by Complainant.
Respondent’s <wwwaolnews.com> domain name is confusingly similar to Complainant’s AOL mark.
Respondent is not commonly known by the disputed domain name.
Respondent does not have any rights to or legitimate interests in the domain name <wwwaolnews.com>.
Respondent registered and uses the <wwwaolnews.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark and 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."
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 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.
The registrations of Complainant’s AOL service mark and trademark with governmental trademark authorities are sufficient to establish Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that complainants had established rights in marks where the marks were registered with a trademark authority); see also Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005); “Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark office (‘USPTO’).”
Respondent’s <wwwaolnews.com> domain name is confusingly similar to Complainant’s AOL mark. The domain name merely adds to the mark the prefix “www,” the descriptive term “news,” and the generic top-level domain (“gTLD”) “.com”. The addition of the “www” prefix does not avoid confusing similarity between the domain name and Complainant’s mark. See Register.com Inc. v. House, FA 167970 (Nat. Arb. Forum Aug. 22, 2003) (finding the prefix “www” followed by a trademark with no period separating them does not distinguish the mark from the domain name); see also Marie Claire Album v. Blakely, D2002-1015 (WIPO Dec. 23, 2002) (holding that the letters "www" are not distinct in the "Internet world," and thus a respondent 's <wwwmarieclaire.com> domain name is confusingly similar to a complainant's MARIE CLAIRE trademark).
Similarly, the addition of a descriptive term and a gTLD does not adequately distinguish a disputed domain name from a mark. See Eastman Chem. Co. v. Patel, FA 524752 (Nat. Arb. Forum Sept. 7, 2005): “Therefore, the Panel concludes that the addition of a term descriptive of Complainant’s business, the addition of a hyphen, and the addition of the gTLD ‘.com’ are insufficient to distinguish Respondent’s domain name from Complainant’s mark.” 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).
As a result, the Panel finds that Respondent’s <wwwaolnews.com>
domain name is confusingly similar
to Complainant’s AOL mark under Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights to and legitimate interests in the <wwwaolnews.com> domain name. Complainant has established a prima facie case in support of its allegations on this issue. The burden therefore shifts to Respondent to prove that it has rights to or legitimate interests in the disputed domain name. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that:
complainant must first
make a prima facie case that respondent
lacks rights and legitimate interests in the disputed domain names under Policy
¶ 4(a)(ii), and then the burden shifts to respondent to show it does have
rights or legitimate interests.
Respondent has failed to submit a Response to these proceedings. We are therefore entitled to infer that Complainant’s allegations are true. 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.
We will nonetheless examine the record before us, by reference to the criteria set out in Policy ¶ 4(c), to determine 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 is not commonly known by the disputed domain
name. Moreover, the WHOIS information
for the disputed domain name lists the registrant only as “King Kong” which
does not resemble the <wwwaolnews.com> domain name. On this record, we are constrained to
conclude that Respondent is not commonly known by the disputed domain name so
as to have demonstrated that it has rights to or legitimate interests in the domain pursuant
to Policy ¶ 4(c)(ii). See, for example, M. Shanken Commc’ns v.
WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006)
(finding that a respondent was not commonly known by the
<cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the
WHOIS information and other evidence in the record); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA
715089
(Nat.
Arb. Forum July 17, 2006) (concluding that a respondent was not
commonly known by the <coppertown.com> domain name where there was no
evidence in the record, including the relevant WHOIS information, suggesting
that that respondent was commonly known by the disputed domain name).
We also observe that Complainant contends, without objection from Respondent, that Respondent’s disputed domain name resolves to a website that features third-party commercial links to news services that compete with the services provided by Complainant. In the circumstances here presented, we may comfortably presume that Respondent receives income in the form of click-through or similar fees for each visit by an Internet user to a website associated with one of these links. Respondent’s use of the disputed domain name in this manner is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the contested domain name pursuant to Policy ¶ 4(c)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that a respondent was not using the <tesco-finance.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by maintaining a web page with misleading links to a complainant’s competitors in the financial services industry); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding that a respondent was not using a disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by redirecting Internet users to a commercial search engine website with links to websites that may be of interest to a complainant’s customers, presumably earning “click-through fees” in the process).
The Panel therefore finds that Policy ¶ 4(a)(ii) is satisfied.
Respondent’s <wwwaolnews.com> domain name resolves to a website containing third-party hyperlinks, which in turn resolve to the websites of Complainant’s competitors in the news service business. Thus Internet users interested in Complainant’s new services may instead utilize the new services of a competitor owing to Respondent’s use of a domain name which is confusingly similar to Complainant’s mark. Respondent’s use of the disputed domain name in the manner alleged disrupts Complainant’s news service business, which constitutes evidence of bad faith registration and use of the subject domain name pursuant to 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 contested domain name to attract Internet users to a website containing links to the websites of a complainant’s commercial competitors represents bad faith registration and use of the domain under Policy ¶ 4(b)(iii)); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007): “This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”
Respondent presumably benefits financially from the links carried
on its website through the receipt of a fee for each time an Internet user
clicks on a hyperlink and thus accesses an associated third-party website. Because of the confusing similarity between
the contested domain name and Complainant’s mark, Internet users may become
confused as to the possibility of Complainant’s sponsorship of or affiliation
with the domain name <wwwaolnews.com> and its resolving
website. Respondent is thus evidently attempting
to profit from that confusion.
Respondent’s use of the <wwwaolnews.com> domain name in
this way constitutes bad faith registration and use of the domain under Policy
¶ 4(b)(iv). See
Respondent is using the disputed domain name
to operate a website which features links to competing and non-competing
commercial websites from which Respondent presumably receives referral
fees. Such use for Respondent’s own
commercial gain is evidence of bad faith registration and use pursuant to
Policy ¶ 4(b)(iv).
See also 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 of a domain name that was confusingly similar to a complainant’s mark by using it to offer links to third-party websites featuring services similar to those offered by that complainant).
For these reasons, the Panel finds thatPolicy ¶ 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 disputed <wwwaolnews.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: August 4, 2010
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