AOL Inc. v. Soshi Onoda d/b/a granwill.corporation
Claim Number: FA1008001342401
Complainant is AOL Inc. (“Complainant”), represented by James R. Davis, II, of Arent Fox LLP, Washington D.C., USA. Respondent is Soshi Onoda d/b/a granwill.corporation (“Respondent”), Japan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwwpatch.com>, registered with GMO INTERNET, INC. D/B/A ONAMAE.COM.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 20, 2010; the National Arbitration Forum received payment on August 23, 2010. The Complaint was submitted in both Japanese and English language.
On August 23, 2010, GMO INTERNET, INC. DBA ONAMAE.COM confirmed by e-mail to the National Arbitration Forum that the wwwpatch.com domain name is registered with GMO INTERNET, INC. DBA ONAMAE.COM and that Respondent is the current registrant of the name. GMO INTERNET, INC. DBA ONAMAE.COM has verified that Respondent is bound by the GMO INTERNET, INC. DBA ONAMAE.COM 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 September 2, 2010, the Forum served the Japanese Complaint and all Annexes, including a Japanese Written Notice of the Complaint, setting a deadline of September 22, 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@wwwpatch.com. Also on September 2, 2010, the Japanese 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 October 6, 2010, pursuant to Complainant's request to have the dispute decided by a 1-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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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.
Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the Japanese language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <wwwpatch.com> domain name is identical/confusingly similar to Complainant’s PATCH mark.
2. Respondent does not have any rights or legitimate interests in the <wwwpatch.com> domain name.
3. Respondent registered and used the <wwwpatch.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, AOL Inc., uses its PATCH and PATCH.COM marks to provide news and information tailored to specific communities and cities. Complainant has provided evidence of its registration of the PATCH mark with the European Union’s Office of Harmonization for the Internal Market (“OHIM”) (Reg. No. 8483695 issued August 11, 2009) and with Australia’s Department of Innovation, Industry, Science and Research (“DIISR”) (Reg. No. 1314445 issued August 11, 2009). Complainant also asserts rights in its PATCH.COM mark dating back to February 4, 2009. Complainant’s official website offering these services resolves from the <patch.com> domain name.
Respondent, Soshi Onoda d/b/a granwill.corporation, registered the disputed domain name on February 12, 2009. The disputed domain name resolves to a website featuring links and advertisements for third-party websites, some of which compete with Complainant.
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 its PATCH mark with both the European Union’s OHIM (Reg. No. 8483695 issued August 11, 2009) and with Australia’s DIISR (Reg. No. 1314445 issued August 11, 2009). Previous panels have held that where a complainant registers its mark with a governmental trademark authority, the complainant has sufficiently established rights in the mark pursuant to 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 Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”). As Complainant has registered its PATCH mark with both the OHIM and DIISR, the Panel finds that Complainant has rights in the mark for the purposes of Policy ¶ 4(a)(i).
Additionally, Complainant asserts that it registered the <patch.com> domain name on February 4, 2009 and that as such Complainant has common law rights in the PATCH.COM mark dating back to February 4, 2009. However, Complainant does not submit any additional evidence to support common law rights in its PATCH.COM mark pursuant to Policy ¶ 4(a)(i). The Panel finds that without adequate evidence that Complainant’s PATCH.COM mark has acquired sufficient secondary meaning, Complainant cannot establish common law rights in the PATCH.COM mark dating back to February 4, 2009. See Build-A-Bear Workshop, Inc. v. Pallone, FA 874279 (Nat. Arb. Forum Mar. 1, 2007) (finding that the complainant did not establish common law rights in the BEAR BUILDER or BEAR BUILDERS marks because the evidence it submitted was insufficient to show the mark had acquired any secondary meaning); see also Occidental Hoteles Mgmt., S.A., & Corictal II, S.A. v. Hargrave Arts, LLC, FA 959645 (Nat. Arb. Forum May 21, 2007) (finding that the complainant did not submit sufficient evidence showing that its OCCIDENTAL mark had acquired the necessary secondary meaning for it to establish common law rights pursuant to Policy ¶ 4(a)(i)).
Complainant asserts that Respondent’s <wwwpatch.com> domain name is confusingly similar to Complainant’s PATCH mark. Respondent merely adds the “www” prefix and the generic top-level domain (“gTLD”) “.com” to the entirety of Complainant’s mark. The Panel finds that the addition of the “www” prefix and a gTLD are not sufficient to distinguish the disputed domain name from Complainant’s mark. See Register.com Inc. v. House, FA 167970 (Nat. Arb. Forum Aug. 22, 2003) (finding the prefix “www” followed by the trademark with no period separating them did not distinguish the mark and was confusingly similar); 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 the respondent 's <wwwmarieclaire.com> domain name is confusingly similar to the complainant's MARIE CLAIRE trademark); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).
The Panel finds that Policy ¶ 4(a)(i) is satisfied.
Complainant alleges that Respondent lacks rights and legitimate interests in the disputed domain name. Complainant must first make a prima facie case in support of its allegations, then the burden shifts to Respondent to prove it has rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). The Panel finds that based on the arguments in the Complaint, Complainant has established a prima facie case in support of its contentions and Respondent has failed to submit a Response to these proceedings. See Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (“Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.”); see also F. Hoffmann-La Roche AG v. Di Salvatore, D2006-1417 (WIPO Feb. 1, 2007) (“Proper analysis of paragraph 4(a)(ii) of the Policy shows that the burden of proof shifts from the Complainant to the Respondent once the Complainant has made out a prima facie case that the Respondent has no rights or interests in the domain names.”).
The WHOIS information for the disputed domain name indicates that registrant is “Soshi Onoda d/b/a granwill.corporation.” Without evidence in the record to the contrary, the Panel finds that it can rely on the WHOIS information to determine that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant argues that Respondent’s disputed domain name resolves to a website featuring both links and advertisements for third-party websites, some of which compete with Complainant’s information services. The Panel finds that Respondent’s use of the disputed domain name to financially gain from the receipt of click-through fees and other revenue derived from the links and advertisements is not 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 Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was 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), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites); see also
Wells Fargo & Co. v. Lin Shun Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that using a domain name to direct Internet traffic to a website featuring pop-up advertisements and links to various third-party websites is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) because the registrant presumably receives compensation for each misdirected Internet user).
Complainant asserts that when Complainant contacted Respondent to try and obtain an amicable transfer of the disputed domain name, Respondent replied by stating it would consider transferring the <wwwpatch.com> domain name in exchange for 1,050,000 yen, or roughly $12,300. The Panel finds that Respondent’s offer to sell the disputed domain name for an amount in excess of its out-of-pocket expenses associated with the <wwwpatch.com> domain name is further evidence that Respondent lacks rights and legitimate interests in the disputed domain name. 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
George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (holding that where a respondent makes a “disproportionate” offer to sell its domain name registration to the complainant for more than its out-of-pocket registration costs, there is additional evidence that the respondent lacks rights and legitimate interests in the disputed domain name).
The Panel finds that Policy ¶ 4(a)(ii) is satisfied.
The Panel finds that Respondent registered the disputed domain name on February 12, 2009 which is prior to both of Complainant’s registrations of its PATCH mark with the OHIM and the DIISR. Additionally, Complainant has failed to provide sufficient evidence of common law rights in the PATCH.COM that would effectively predate Respondent’s registration of the <wwwpatch.com> domain name. Therefore, the Panel concludes that Respondent could not have registered the disputed domain name with the requisite bad faith under Policy ¶ 4(a)(iii). See Interep Nat'l Radio Sales, Inc. v. Internet Domain Names, Inc., D2000-0174 (WIPO May 26, 2000) (finding no bad faith where the respondent registered the domain prior to the complainant’s use of the mark); see also Telecom Italia S.p.A. v. NetGears LLC, FA 944807 (Nat. Arb.Forum May 16, 2007) (finding the respondent could not have registered or used the disputed domain name in bad faith where the respondent registered the disputed domain name before the complainant began using the mark).
The Panel finds that Policy ¶ 4(a)(iii) is not satisfied.
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <wwwpatch.com> domain name REMAIN WITH Respondent.
John J. Upchurch, Panelist
Dated: October 13, 2010
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