AOL Inc. v Gioacchino Zerbo
Claim Number: FA1009001346202
Complainant is AOL Inc. ("Complainant"), represented by James R. Davis of Arent Fox LLP, Washington D.C., USA. Respondent is Gioacchino Zerbo ("Respondent"), Italy.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwwshoutcast.com>, registered with DOTSTER.
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 September 14, 2010; the National Arbitration Forum received payment on September 14, 2010.
On September 14, 2010, DOTSTER confirmed by e-mail to the National Arbitration Forum that the <wwwshoutcast.com> domain name is registered with DOTSTER and that Respondent is the current registrant of the names. DOTSTER has verified that Respondent is bound by the DOTSTER registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 15, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 5, 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@wwwshoutcast.com. Also on September 15, 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 October 19, 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" 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <wwwshoutcast.com> domain name is confusingly similar to Complainant’s SHOUTCAST mark.
2. Respondent does not have any rights or legitimate interests in the <wwwshoutcast.com> domain name.
3. Respondent registered and used the <wwwshoutcast.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, AOL Inc., provides a variety of Internet-related services. One of these services is digital audio streaming technology that enables Internet users to create and listen to audio content over the Internet via Internet radio networks. Complainant offers these services under its SHOUTCAST mark. Complainant holds trademark registrations with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,395,779 issued October 17, 2000) and the European Union’s Office for Harmonization in the Internal Market (“OHIM”) (Reg. No. 5,688,627 issued December 17, 2007) for its SHOUT CAST mark.
Respondent, Gioacchino Zerbo, registered the <wwwshoutcast.com> domain name on December 9, 2003. The disputed domain name resolves to a website that advertises and promotes services for streaming and hosting audio content that compete with Complainant’s similar services.
Respondent has been a respondent in numerous previous UDRP proceedings in which the panels have transferred disputed domain names from Respondent to the respective complainants. See Compagnie Générale des Etablissements Michelin v. Gioacchino Zerbo, D2010-0865 (WIPO July 19, 2010); see also Ginetta Cars Ltd. v. Gioacchino Zerbo, D2009-0611 (WIPO June 26, 2009); see also LEGO Juris A/S v. Gioacchino Zerbo, D2009-0500 (WIPO June 29, 2009); see also Principal Fin. Servs., Inc. v. Gioacchino Zerbo, D2009-0280 (WIPO Apr. 20, 2009).
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 holds trademark registrations for its SHOUTCAST mark with the USPTO (Reg. No. 2,395,779 issued October 17, 2000) and OHIM (Reg. No. 5,688,627 issued December 17, 2007). The Panel determines that a federal trademark registration is sufficient to establish rights in a mark under Policy ¶ 4(a)(i), even if Complainant has not registered said mark in the country that Respondent resides in. 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 Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Therefore, the Panel finds that Complainant has established rights in its SHOUTCAST mark under Policy ¶ 4(a)(i).
Complainant contends that Respondent’s <wwwshoutcast.com> domain name is confusingly similar to Complainant’s SHOUTCAST mark. The disputed domain name contains Complainant’s mark in its entirety and simply adds the prefix “www” and the generic top-level domain (“gTLD”) “.com” to Complainant’s mark. The Panel holds that these additions do not sufficiently 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 Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Thus, the Panel concludes that Respondent’s <wwwshoutcast.com> domain name is confusingly similar to Complainant’s SHOUTCAST mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent lacks rights and legitimate interests in the <wwwshoutcast.com> domain name. Previous panels have found that when a complainant makes a prima facie case in support of its allegations, the burden shifts to the respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a prima facie case. Due to Respondent’s failure to respond to the Complainant, the Panel may assume that Respondent does not have rights or legitimate interests in the <wwwshoutcast.com> domain name. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the <wwwshoutcast.com> domain name under Policy ¶ 4(c). See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”).
Respondent has failed to respond to these proceedings and has failed to provide evidence that it is commonly known by the <wwwshoutcast.com> domain name. Complainant claims that Respondent is not licensed or authorized to use Complainant’s SHOUTCAST mark. The WHOIS information identifies the domain name registrant as “Gioacchino Zerbo,” which the Panel determines is not similar to the <wwwshoutcast.com> domain name. Based on this evidence, the Panel concludes that Respondent is not commonly known by the <wwwshoutcast.com> domain name pursuant to Policy ¶ 4(c)(ii). See 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); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the 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).
Respondent’s <wwwshoutcast.com> domain name resolves to a website that advertises and promote services that compete with Complainant’s digital audio streaming services. The Panel holds that Respondent’s use of the confusingly similar disputed domain name to advertise and promote competing services is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii). See Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that the respondent’s use of domain names confusingly similar to the complainant’s WAL-MART mark to divert Internet users seeking the complainant’s goods and services to websites competing with the complainant did not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also Carey Int’l, Inc. v. Kogan, FA 486191 (Nat. Arb. Forum July 29, 2005) (holding that the respondent’s use of disputed domain names to market competing limousine services was not a bona fide offering of goods or services under Policy ¶ 4(c)(i), as the respondent was appropriating the complainant’s CAREY mark in order to profit from the mark).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Respondent has been a respondent in numerous previous UDRP proceedings in which the panels have transferred disputed domain names from Respondent to the respective complainants. See Compagnie Générale des Etablissements Michelin v. Gioacchino Zerbo, D2010-0865 (WIPO July 19, 2010); see also Ginetta Cars Ltd. v. Gioacchino Zerbo, D2009-0611 (WIPO June 26, 2009); see also LEGO Juris A/S v. Gioacchino Zerbo, D2009-0500 (WIPO June 29, 2009); see also Principal Fin. Servs., Inc. v. Gioacchino Zerbo, D2009-0280 (WIPO Apr. 20, 2009). The Panel finds these previous UDRP proceedings are evidence of a pattern of bad faith registration and use under Policy ¶ 4(b)(ii). See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants); see also Société Air France v. Mert, D2004-0759 (WIPO Dec. 3, 2004) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the complainant provided evidence of a pattern of registration of “numerous other domain names” by the respondent). Therefore, the Panel determines that Respondent’s use of the <wwwshoutcast.com> domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(ii).
Respondent uses the <wwwshoutcast.com> domain name to resolve to a website that promotes and advertises services that directly compete with Complainant’s audio streaming services. Internet users interested in Complainant’s services may instead utilized the services of Complainant’s competitors due to Respondent’s use of the confusingly similar domain name. The Panel holds that Respondent’s use of the <wwwshoutcast.com> domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business); 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).”).
The Panel infers that Respondent commercially benefits from its use of the <wwwshoutcast.com> domain name to promote and advertise services that compete with Complainant’s services. Internet users may become confused as to Complainant’s association and affiliation with the disputed domain name and resolving website. Respondent is attempting to profit from that confusion. The Panel concludes that Respondent’s use of the <wwwshoutcast.com> domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Toyota Motor Sales U.S.A. Inc. v. Clelland, FA 198018 (Nat. Arb. Forum Nov. 10, 2003) (“Respondent used <land-cruiser.com> to advertise its business, which sold goods in competition with Complainant. This establishes bad faith as defined in Policy ¶ 4(b)(iv).”); see also 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.”).
The Panel finds 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 <wwwshoutcast.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: October 28, 2010
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