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Generic Top Level Domain Name (gTLD) Decisions |
America Online, Inc. v. Martin Caetano
Claim
Number: FA0409000325922
Complainant is America Online, Inc. (“Complainant”), represented
by James R. Davis, of Arent Fox PLLC, 1050
Connecticut Avenue, NW, Washington, DC 20036.
Respondent is Martin Caetano (“Respondent”),
Wilson F. Aldunate 1342 ap. 30, Montevideo 11100, Uruguay.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <descargar-winamp.net>, registered with Go
Daddy Software, 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.
The
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on September 10, 2004;
the Forum received a hard copy of the
Complaint on September 13, 2004.
On
September 10, 2004, Go Daddy Software, Inc. confirmed by e-mail to the Forum
that the domain name <descargar-winamp.net> is registered with Go
Daddy Software, Inc. and that Respondent is the current registrant of the name.
Go Daddy Software, Inc. has
verified that Respondent is bound by the Go Daddy
Software, 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
September 14, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"),
setting
a deadline of October 4, 2004 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@descargar-winamp.net 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
October 10, 2004, 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.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <descargar-winamp.net>
domain name is confusingly similar to Complainant’s WINAMP mark.
2. Respondent does not have any rights or
legitimate interests in the <descargar-winamp.net> domain name.
3. Respondent registered and used the <descargar-winamp.net>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant uses
the WINAMP mark in connection with, among other things, providing music
services and general interest information
on the Internet. Complainant holds several registrations with
the U.S. Patent and Trademark Office (“USPTO”) for the WINAMP mark, including
Reg. Nos.
2,809,981 and 2,734,590 (registered on February 3, 2004 and July 8, 2003
respectively).
Respondent
registered the <descargar-winamp.net> domain name on May 10, 2004. The domain name resolves to a commercial
website that provides links to other commercial websites that use the WINAMP
mark and logo
and provide online music services and links. Moreover, the website that the domain name
resolves to provides links to adult-oriented websites.
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.
Complainant has
established rights in the WINAMP mark through registration with the USPTO. See Men’s Wearhouse, Inc. v. Wick, FA
117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered
marks hold a presumption that they are inherently
distinctive and have acquired
secondary meaning.”); see also Janus
Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding
that Panel decisions have held that registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this
assumption).
Respondent’s <descargar-winamp.net>
domain name is confusingly similar to Complainant’s WINAMP mark because the
domain name fully incorporates the mark and merely adds
the Spanish word
“descargar,” which means “download” and adds a hyphen. The mere addition of a generic word and a
hyphen is insufficient to distinguish the domain name from Complainant’s
mark. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH,
D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain
name in dispute contains the identical mark of Complainant
combined with a
generic word or term); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002)
(finding that because the subject domain name incorporates the VIAGRA mark in
its entirety, and
deviates only by the addition of the word “bomb,” the domain
name is rendered confusingly similar to Complainant’s mark); see also Chernow Communications, Inc. v. Kimball,
D2000-0119 (WIPO May 18, 2000) (“the use or absence of punctuation marks, such
as hyphens, does not alter the fact that a name is
identical to a mark").
Moreover, the
addition of the generic top-level domain “.net” is insufficient to distinguish
the domain name from Complainant’s mark.
See Little Six, Inc. v.
Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding that
<mysticlake.net> is plainly identical to Complainant’s MYSTIC LAKE
trademark and service mark); see also Nike, Inc. v. Coleman, D2000-1120 (WIPO Nov. 6, 2000) (finding that
the domain name <nike.net> is identical to Complainant’s famous NIKE
mark).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Due to
Respondent’s failure to respond to the Complaint, the Panel infers that
Respondent lacks rights and legitimate interests in
the <descargar-winamp.net>
domain name. See Parfums Christian Dior v. QTR Corp.,
D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response,
Respondent has failed to invoke any circumstance which
could demonstrate any
rights or legitimate interests in the domain name); see also Pavillion Agency, Inc. v. Greenhouse Agency
Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to
respond can be construed as an admission that they have no
legitimate interest
in the domain names).
Furthermore,
nothing in the record indicates that Respondent is commonly known by the <descargar-winamp.net>
domain name. Moreover, Respondent
is not authorized or licensed to register or use domain names that incorporate
Complainant’s mark. Therefore, the
Panel concludes that Respondent lacks rights and legitimate interests in the
domain name pursuant to Policy ¶ 4(c)(ii).
See Tercent Inc. v. Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS
information implies that Respondent is ‘commonly
known by’ the disputed domain
name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Charles Jourdan Holding AG v. AAIM,
D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests
where (1) Respondent is not a licensee of Complainant;
(2) Complainant’s prior
rights in the domain name precede Respondent’s registration; (3) Respondent is
not commonly known by the
domain name in question).
In addition,
Respondent’s <descargar-winamp.net> domain name takes advantage of
the goodwill associated with Complainant’s mark by using the misleading domain
name to link to commercial
websites related to Complainant’s business and to
adult-oriented websites. Respondent’s
commercial use of the misleading domain name does not constitute 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 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); see also MSNBC Cable, LLC v. Tysys.com,
D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in
the famous MSNBC mark where Respondent attempted to
profit using Complainant’s
mark by redirecting Internet traffic to its own website).
Moreover,
Respondent’s <descargar-winamp.net> domain name resolves to a
website that provides links to adult-oriented websites. Such use tarnishes Complainant’s mark and
does not fall within the parameters of Policy ¶¶ 4(c)(i) or (iii). Therefore, the Panel concludes that such use
is evidence that Respondent lacks rights and legitimate interests in the domain
name. See ABB Asea Brown
Boveri Ltd. v. Quicknet, D2003-0215 (WIPO May 26, 2003) (stating
that the fact that the “use of the disputed domain name in connection with
pornographic images
and links tarnishes and dilutes [Complainant’s mark]” was
evidence that Respondent had no rights or legitimate interests in the disputed
domain name); see also McClatchy Mgmt. Serv., Inc. v. Carrington,
FA 155902 (Nat. Arb. Forum June 2, 2003) (holding that Respondent’s use of the disputed domain names to divert Internet users to a website that features
pornographic material, had been “consistently held” to be neither
a bona fide
offering of goods or services . . . nor a legitimate noncommercial or fair
use).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s <descargar-winamp.net>
domain name is confusingly similar to Complainant’s mark and resolves to a
commercial website that provides links to other commercial
sites and
adult-oriented websites. The Panel
concludes that Respondent registered and used the domain name in bad faith
pursuant to Policy ¶ 4(b)(iv) because the domain
name is confusingly similar to
Complainant’s mark and is used for commercial gain. See Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22,
2002) (finding that, if Respondent profits from its diversionary use of
Complainant's mark when
the domain name resolves to commercial websites and
Respondent fails to contest the Complaint, it may be concluded that Respondent
is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see
also 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).
Furthermore, the
mere fact that the <descargar-winamp.net> domain name is
confusingly similar to Complainant’s mark and resolves to a website that
provides links to adult-oriented websites
is evidence of bad faith registration
and use pursuant to Policy ¶ 4(a)(iii).
See Wells Fargo & Co. v. Party Night Inc., FA 144647
(Nat. Arb. Forum Mar. 18, 2003) (finding that Respondent’s
tarnishing use of the disputed domain names to redirect Internet users to adult-oriented websites was evidence
that the domain names were being used in bad faith); see also National
Ass’n of Stock Car Auto Racing, Inc. v. RMG Inc – BUY or LEASE by E-MAIL,
D2001-1387 (WIPO Jan. 23, 2002) (“it is now well known that pornographers rely
on misleading domain names to attract users by confusion,
in order to generate
revenue from click-through advertising, mouse-trapping, and other pernicious
online marketing techniques”).
The Panel finds
that 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 <descargar-winamp.net> domain name be TRANSFERRED
from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated:
October 25, 2004
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