AOL Inc. v. 21562719 Ont Ltd
Claim Number: FA1108001402476
Complainant is AOL Inc. (“Complainant”), represented by James R. Davis of Arent Fox LLP, Washington, D.C., USA. Respondent is 21562719 Ont Ltd (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwwhuffingtonpost.com>, registered with Fabulous.com PTY Ltd.
The undersigned certifies that she has acted independently and impartially that and to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically August 9, 2011; the National Arbitration Forum received payment August 9, 2011.
On August 10, 2011, Fabulous.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <wwwhuffingtonpost.com> domain name is registered with Fabulous.com Pty Ltd. and that Respondent is the current registrant of the name. Fabulous.com PTY Ltd. verified that Respondent is bound by the Fabulous.com Pty Ltd. registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 10, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 30, 2011, 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@wwwhuffingtonpost.com. Also on August 10, 2011, 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 September 2, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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. The domain name that Respondent registered, <wwwhuffingtonpost.com>, is confusingly similar to Complainant’s THE HUFFINGTON POST mark.
2. Respondent has no rights to or legitimate interests in the <wwwhuffingtonpost.com> domain name.
3. Respondent registered and used the <wwwhuffingtonpost.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, AOL Inc., is the owner of the THE HUFFINGTON POST mark that is used in connection with the maintenance of a blog site providing news services. Complainant registered its mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,095,331 filed April 25, 2005; registered May 23, 2006). Rights in a mark, pursuant to the policy, date back to the date of filing.
Respondent, 21562719 Ont Ltd, registered the <wwwhuffingtonpost.com> domain name May 10 2005. The disputed domain name resolves to a website that tells Internet users that they have won a prize and to click-through links to the prize that they would like.
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."
Given 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 will draw such inferences as the Panel 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 Complainant to 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 contends that it has rights in the THE HUFFINGTON POST mark, based on its registration of the mark with a federal trademark authority. Registration of a mark with a federal trademark authority is sufficient to demonstrate rights in a mark. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations). The registration need not be within the jurisdiction where Respondent lives and operates. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).
Complainant provided the Panel with evidence of its registration of the THE HUFFINGTON POST mark (Reg. No. 3,095,331 filed April 25, 2005; registered May 23, 2006) with the USPTO. For marks registered with the USPTO, the relevant date of rights in a mark is the filing date. See Phoenix Mortgage Corp. v. Toggas, D2001-0101 (WIPO Mar. 30, 2001) (“The effective date of Complainant's federal rights is . . . the filing date of its issued registration. Although it might be possible to establish rights prior to that date based on use, Complainant has submitted insufficient evidence to prove common law rights before the filing date of its federal registration.”); see also Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”). The Panel finds that Complainant has rights in the THE HUFFINGTON POST mark, dating back to the filing date with the USPTO, April 25, 2005, regardless of Respondent’s location outside of the United States, under Policy ¶ 4(a)(i).
Complainant also contends that Respondent’s <wwwhuffingtonpost.com> domain name is confusingly similar to its mark. Respondent made minor changes to Complainant’s THE HUFFINGTON POST mark within the disputed domain name . Such changes are insufficient to distinguish the disputed domain name from Complainant’s protected mark. Respondent’s domain name removes the article “the” in Complainant’s mark, but does not prevent a finding of confusing similarity between the disputed domain name and the mark. See Buffalo News v. Barry, FA 146919 (Nat. Arb. Forum Mar. 31, 2003) (finding the respondent's <bufalonews.com> domain name confusingly similar to Complainant's THE BUFFALO NEWS mark); see also Mega Soc. v. LoSasso, FA 215404 (Nat. Arb. Forum Jan. 30, 2004) (finding that the <megasociety.net> and <megasociety.com> domain names were identical or confusingly similar to Complainant's THE MEGA SOCIETY mark).
Additionally, Respondent adds “www” as a prefix to Complainant’s mark. The addition of “www” immediately before a mark without a period between the two also does not prevent a finding of confusing similarity between a complainant’s mark and the disputed domain name because it a common typographical error. See Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that the respondent’s domain name <wwwbankofamerica.com> is confusingly similar to the complainant’s registered trademark BANK OF AMERICA because it “takes advantage of a typing error (eliminating the period between the www and the domain name) that users commonly make when searching on the Internet”); see also 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).
Lastly, Respondent’s <wwwhuffingtonpost.com> domain name deletes the space between the words of Complainant’s mark, and adds the generic top-level domain (“gTLD”) “.com” to the end of the mark. Deletion of spaces and addition of gTLDs in domain names, necessary characteristics in domain names, do not distinguish between the domain name and the complainant’s mark. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007), and U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007).
Therefore, the Panel finds that Respondent’s <wwwhuffingtonpost.com> domain name is confusingly similar to Complainant’s THE HUFFINGTON POST mark pursuant to Policy ¶ 4(a)(i).
Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant urges that Respondent has neither rights nor legitimate interests in the disputed domain name. The Panel finds that Complainant made a prima facie case to support this claim. Once Complainant makes a prima facie case, the burden of proof shifts to the respondent to show that it does in fact have such rights or interests. 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.”). Respondent, however, failed to submit a response to the Panel. Although the Panel still reviews the record before making a determination as to whether or not Respondent does have rights or legitimate interests in the <wwwhuffingtonpost.com> domain name, without the benefit of a response from Respondent, the Panel may assume that all reasonable claims made by Complainant are correct. See Eroski, So. Coop. v. Getdomains Ishowflat Ltd., D2003-0209 (WIPO July 28, 2003) (“It can be inferred that by defaulting Respondent showed nothing else but an absolute lack of interest on the domain name.”); see also Euromarket Designs, Inc. v. Domain For Sale VMI, D2000-1195 (WIPO Oct. 26, 2000) (“In the absence of direct evidence, the complainant and the panel must resort to reasonable inferences from whatever evidence is in the record. In addition . . . Paragraph 14(b) of the Rules [authorizes] a panel to draw such inferences from respondent’s failure to respond ‘as it considers appropriate.’”).
A finding by the Panel that Respondent is commonly known by the disputed domain name may result in a finding that Respondent has some rights or legitimate interests in the <wwwhuffingtonpost.com> domain name. Complainant claims that Respondent is not commonly known by the disputed domain name. The Panel looks to the WHOIS record for the <wwwhuffingtonpost.com> domain name as well as any other pertinent information in the record, as guided by M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006), and Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006). Complainant urges that it has not licensed Respondent to use the THE HUFFINGTON POST mark in any capacity. Furthermore, the WHOIS record for the <wwwhuffingtonpost.com> domain name lists “21562719 Ont Ltd” as the domain name registrant. Given that none of the information available suggests a nominal connection between Respondent and the <wwwhuffingtonpost.com> domain name, the Panel finds that Respondent is not commonly known by the <wwwhuffingtonpost.com> domain name pursuant to Policy ¶ 4(c)(ii).
The <wwwhuffingtonpost.com> domain name resolves to a website that purports to promise Internet visitors that they have won a prize and it then directs them to click-through one of a variety of links to claim their prize. The display of unrelated links through a disputed domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006), and Vanderbilt Univ. v. U Inc., FA 893000 (Nat. Arb. Forum Feb. 19, 2007). The Panel finds that Respondent’s use of the disputed domain name to direct Internet users through links unrelated to Complainant is not a bona fide use under a Policy ¶ 4(c)(i) analysis and it is not a legitimate noncommercial or fair use under a Policy ¶ 4(c)(iii) analysis.
The Panel finds that Respondent has no rights to or legitimate interest in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Complainant lastly urges that Respondent registered and is using the <wwwhuffingtonpost.com> domain name in bad faith. The allegations show that Respondent is using the domain name to take advantage of Internet users’ likelihood of confusion upon reaching the disputed domain name that the domain name is affiliated with Complainant and its mark. Internet users, who continue through to the resolving website—and many will click-through the links displayed based on their trust in the goodwill established by Complainant—only to find that they are being misled into a fraudulent scam. Under such circumstances, the Panel is permitted to make an inference that Respondent benefits from these Internet users who are directed through the links displayed. The Panel finds that Respondent’s registration and use of the disputed domain name was, and is, in bad faith pursuant to Policy ¶ 4(b)(iv). See The Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For Sale, FA 857581 (Nat. Arb. Forum Jan. 4, 2007) (holding that the respondent’s use of the disputed domain name to maintain a pay-per-click site displaying links unrelated to the complainant and to generate click-through revenue suggested bad faith registration and use under Policy ¶ 4(b)(iv)); see also T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)).
Complainant contends that Respondent’s registration of the disputed domain name on the day following the launch of the blog associated with Complainant’s THE HUFFINGTON POST mark further demonstrates bad faith. Registration of a domain name following notable, related events may be found to constitute opportunistic bad faith. See Sota v. Waldron, D2001-0351 (WIPO June 18, 2001) (finding that the respondent’s registration of the <seveballesterostrophy.com> domain name at the time of the announcement of the Seve Ballesteros Trophy golf tournament “strongly indicates an opportunistic registration”); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (“If there had been any doubt as to bad faith, the fact that registration was on the same day the news leaked about the merger, which was put in evidence, is a compelling indication of bad faith that [the] respondent has to refute and which he has failed to do. The panel finds a negative inference from this.”). The Huffington Post blog, the website associated with Complainant’s THE HUFFINGTON POST mark, launched May 9, 2005. The following day, May 10, 2005, Respondent registered and began using the <wwwhuffingtonpost.com> domain name. As a result, the Panel finds that Respondent’s bad faith registration and use of the disputed domain name was done as a result of opportunistic bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wwwhuffingtonpost.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: September 8, 2011.
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