DECISION

America Online, Inc v. Network Solution, Inc.

Claim Number:  FA0308000183895

PARTIES

Complainant is America Online, Inc., Dulles, VA, USA (“Complainant”) represented by James R Davis II, of Arent Fox Kintner Plotkin & Kahn, LLC.  Respondent is Network Solution, Inc., Paphos, Cyprus (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <map-quest.org>, registered with Direct Nic.com.

PANEL

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.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on August 12, 2003; the Forum received a hard copy of the Complaint on August 15, 2003.

On August 13, 2003, Direct Nic.com confirmed by e-mail to the Forum that the domain name <map-quest.org> is registered with Direct Nic.com and that Respondent is the current registrant of the name. Direct Nic.com has verified that Respondent is bound by the Direct Nic.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 August 19, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 8, 2003 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@map-quest.org by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On September 19, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <map-quest.org> domain name is identical to Complainant’s MAPQUEST mark.

2. Respondent does not have any rights or legitimate interests in the <map-quest.org> domain name.

3. Respondent registered and used the <map-quest.org> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, America Online, Inc, owns the MAPQUEST mark and uses it, inter alia, in connection with the providing of travel- and mapping-related services. The MAPQUEST brand is rated among the top-ten most powerful U.S. Internet brands by NetRatings and is listed as the number-one mapping and travel website as determined by comScore Media Metrix. In addition to the common-law rights Complainant has accrued in the MAPQUEST mark due to widespread use of the mark in commerce, Complainant has obtained registrations of the mark worldwide (e.g. U.S. Reg. No. 2,145,962, registered on the Princpal Register of the U.S. Patent and Trademark Office on March 24, 1998). Complainant has also used its mark online at the <mapquest.com> domain name.

Respondent, Network Solution, Inc., registered the <map-quest.org> domain name on May 10, 2003, without license or authorization by Complainant to use the MAPQUEST mark. Respondent initially used the disputed domain name to host a website that purported to offer “online, interactive aerial photos” which could be manipulated by Internet users in a manner similar to the method used with maps provided by Complainant at the <mapquest.com> domain name. Subsequently, Respondent used the disputed domain name to host a series of hyperlinks divided into a broad array of categories.

DISCUSSION

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.

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.

Identical and/or Confusingly Similar

Complainant has established rights in the MAPQUEST mark through registration of the mark in many jurisdictions worldwide, including the United States. See 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 Respondent operates.  It is sufficient that Complainant can demonstrate a mark in some jurisdiction); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO April 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether Complainant’s mark is registered in a country other than that of Respondent’s place of business).

Respondent’s <map-quest.org> domain name is identical to Complainant’s MAPQUEST mark. The addition of the top-level domain “.org” does not factor into any analysis under Policy ¶ 4(a)(i), and Respondent’s addition of a hypen to Complainant’s mark has been held inconsequential when determining confusing similarity under the Policy. See Chernow Communications Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (“that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).

Accordingly, the Panel finds that the <map-quest.org> domain name is identical to Complainant’s MAPQUEST mark under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent currently uses the disputed domain name to host a series of hyperlinks that link to commercial websites unrelated to Complainant’s MAPQUEST mark. Using Complainant’s mark to lure Internet users to the disputed domain name, presumably with the intent of receiving referral fees for each link clicked on by those users, is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name. Thus, Policy ¶¶ 4(c)(i) and (iii) do not apply to Respondent. See eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating that the "use of complainant’s entire mark in infringing domain names makes it difficult to infer a legitimate use"); see also Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that Respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to Complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name).

In light of Respondent’s failure to Respond, the fact that it names itself as “Network Solutions, Inc.,” and the widespread fame surrounding the MAPQUEST mark, the Panel finds that Respondent was not commonly known by the disputed domain name prior to registration, rendering Policy ¶ 4(c)(ii) inapplicable to Respondent. See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one “would be hard pressed to find a person who may show a right or legitimate interest” in a domain name containing Complainant's distinct and famous NIKE trademark).

Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the <map-quest.org> domain name under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent registered a domain name that was identical to Complainant’s famous and registered MAPQUEST mark. Absent any showing by Respondent to the contrary, the Panel infers that Respondent knew of Complainant’s MAPQUEST mark, and of the goodwill surrounding that mark, when it registered the disputed domain name. Thus, Respondent’s registration was an attempt to create a likelihood of confusion with Complainant’s mark. As Respondent’s use of the disputed domain name entails no more than a list of hyperlinks to various commercial websites, presumably with the sole purpose of generating revenue from Internet users who click on those links after being ensnared by Respondent’s infringing domain name, Respondent’s activities evidence bad faith use and registration pursuant to Policy ¶ 4(b)(iv). See Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where Respondent directed Internet users seeking Complainant’s site to its own website for commercial gain); see also ESPN, Inc. v. Ballerini, FA 95410 (Nat. Arb. Forum Sept. 15, 2000) (finding bad faith where Respondent linked the domain name to another website, presumably receiving a portion of the advertising revenue from the site by directing Internet traffic there and thus using a domain name to attract Internet users for commercial gain).

The Panel thus finds that Respondent registered and used the <map-quest.org> domain name in bad faith, and that Policy ¶ 4(a)(iii) is satisfied.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <map-quest.org> domain name be TRANSFERRED from Respondent to Complainant.

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated:  September 30, 2003

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