DECISION

America Online, Inc. v. Triple E Holdings Limited

Claim Number:  FA0405000281584

PARTIES

Complainant is America Online, Inc. (“Complainant”), represented by James R. Davis, of Arent Fox PLLC, 1050 Connecticut Avenue NW, Washington, DC 20036.  Respondent is Triple E Holdings Limited (“Respondent”), 7525 18^th Ave. S., Richfield, MN 55423.

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <netscepe.com>, <mapqueest.com>, <mapquast.com> and <mapquaest.com>, registered with Bulkregister, Llc.

PANEL

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.

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

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on May 28, 2004; the Forum received a hard copy of the Complaint on June 1, 2004.

On June 2, 2004, Bulkregister, Llc. confirmed by e-mail to the Forum that the domain names <netscepe.com>, <mapqueest.com>, <mapquast.com> and <mapquaest.com> are registered with Bulkregister, Llc. and that Respondent is the current registrant of the names. Bulkregister, Llc. has verified that Respondent is bound by the Bulkregister, Llc. 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 June 3, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 23, 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@netscepe.com, postmaster@mapqueest.com, postmaster@mapquast.com and postmaster@mapquaest.com 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 July 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.

RELIEF SOUGHT

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

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <netscepe.com>, <mapqueest.com> and <mapquast.com> and <mapquaest.com> domain names are confusingly similar to Complainant’s NETSCAPE and MAPQUEST marks.

2. Respondent does not have any rights or legitimate interests in the <netscepe.com>, <mapqueest.com>, <mapquast.com> and <mapquaest.com> domain names.

3. Respondent registered and used the <netscepe.com>, <mapqueest.com>, <mapquast.com> and <mapquaest.com> domain names in bad faith.

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

FINDINGS

Complainant, America Online, Inc., and its affiliated entities Netscape Communications Corp. and MapQuest.com, Inc. (collectively “AOL”), hold numerous trademark registrations with the United States Patent and Trademark Office for the NETSCAPE and MAPQUEST marks (Reg. No. 2,027,551, issued December 31, 1996, Reg. No. 2,129,378, issued January 13, 1998, Reg. No. 76,142,038, issued July 3, 2001 and Reg. No. 2,496,784, issued October 9, 2001).

Complainant uses its NETSCAPE and MAPQUEST marks in connection with providing computer and Internet-related goods and services.  Since its initial adoption, the distinctive NETSCAPE and MAPQUEST marks have been used continuously and extensively in interstate and international commerce in connection with the advertising and sale of a wide variety of goods and services. 

Respondent registered the disputed domain names on December 29, 2001.  Respondent is using the domain names to redirect Internet users to Respondent’s own commercial website providing links to various websites and services, many of which compete directly with the services provided by Complainant under its NETSCAPE and MAPQUEST marks. 

Additionally, Respondent has offered to sell the registrations for the disputed domain names to Complainant for $500.00 each.  Respondent has also exhibited a pattern of infringing upon third-party marks through its registration and ownership of the <adidasgolfshoes.com>, <ccigna.com>, <ddoubleclick.com>, <freeyahooemail.com>, <lluckynugget.com> and <googlees.com> domain names. 

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 names registered by Respondent are 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 names; and

(3) the domain names have been registered and are being used in bad faith.

Identical and/or Confusingly Similar

Complainant has established that it has rights in the NETSCAPE and MAPQUEST marks through registration with the United States Patent and Trademark Office and through continued use of its marks in commerce since 1996 throughout the United States and various countries throughout the world.  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 disputed domain names are confusingly similar to Complainant’s NETSCAPE and MAPQUEST marks because the domain names are an obvious misspelling of Complainant’s marks, and the services provided by Respondent compete directly with those provided by Complainant.  Thus, the Panel finds that misspellings of registered marks do not negate the confusing similarity of Respondent’s domain names pursuant to Policy ¶ 4(a)(i).  See Dow Jones & Co., Inc. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000) (holding that the deliberate introduction of errors or changes, such as the addition of a fourth “w” or the omission of periods or other such generic typos do not change respondent’s infringement on a core trademark held by Complainant); see also Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a Respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to Complainant’s marks).

Words that are spelled differently but are phonetically similar do not negate the confusing similarity of Respondent’s domain name pursuant to Policy 4(a)(i).  See Hewlett-Packard Co. v. Cupcake City, FA 93562 (Nat. Arb. Forum Apr. 7, 2000) (finding that a domain name which is phonetically identical to Complainant’s mark satisfies ¶ 4(a)(i) of the Policy); see also YAHOO! Inc. v. Murray, D2000-1013 (WIPO Nov. 17, 2000) (finding that the domain name <yawho.com> is confusingly similar to Complainant’s YAHOO mark); see also Am. Online, Inc. v. Peppler, FA 103437 (Nat. Arb. Forum Feb. 22, 2002) (finding the word “quest” and “crest” to be similar in sound and, thus, that Respondent’s <mapcrest.com> domain name and Complainant’s MAP QUEST mark are confusingly similar).

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Complainant has asserted that Respondent has no rights to or legitimate interests in the disputed domain names.  Respondent did not file a Response.  Therefore, the Panel may accept any reasonable assertions by Complainant as true.  See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw adverse inferences from Respondent’s failure to reply to the Complaint).

Respondent is using the <netscepe.com>, <mapqueest.com>, <mapquast.com> and <mapquaest.com> domain names to redirect Internet users to Respondent’s own commercial website that provides links to various websites and services, many of which compete directly with the services provided by Complainant.  Respondent’s use of domain names that are confusingly similar to Complainant’s NETSCAPE and MAPQUEST marks to redirect Internet users interested in Complainant’s products to a commercial website that offers a search engine for websites related to Complainant’s products and services is 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 of the domain names pursuant to Policy ¶ 4(c)(iii).  See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that “it would be unconscionable to find a bona fide offering of services in a respondent’s operation of web-site using a domain name which is confusingly similar to the Complainant’s mark and for the same business”); see also Compaq Info. Techs. Group v Scott Jones, FA 99091 (Nat. Arb. Forum Oct. 4, 2001) (finding that Respondent had no rights or legitimate interests in a domain name that it used to redirect Internet users to a commercial website as part of that website’s affiliate program, where the resultant website contained banner ads as well as various links to offers for free merchandise, including merchandise from Complainant's competitor).

Moreover, nothing in the record, including the WHOIS registration information for the disputed domain names, suggests that Respondent is commonly known by the domain names 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 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).

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent registered the domain names for commercial gain.  Respondent’s domain names divert Internet users wishing to search under Complainant’s well-known mark to Respondent’s commercial website through the use of domain names that are confusingly similar to Complainant’s marks.  Respondent’s practice of diversion, motivated by commercial gain, through the use of confusingly similar domain names evidences bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with Complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that Respondent intentionally attempted to attract Internet users to his website for commercial gain by creating a likelihood of confusion with Complainant’s mark and offering the same chat services via his website as Complainant); see also Identigene, Inc. v. Genetest Lab., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where Respondent’s use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that Complainant is the source of or is sponsoring the services offered at the site).

Additionally, evidence of Respondent’s bad faith can be deduced from Respondent’s offer to sell the disputed domain name registrations to Complainant.  Offers to sell a domain name registration in dispute for valuable consideration in excess of Respondent’s out-of-pocket costs evidences bad faith.  See Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where Respondent offered domain names for sale); see also Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”).

Furthermore, Respondent registered the domain names for the primary purpose of disrupting Complainant’s business by redirecting Internet traffic intended for Complainant to Respondent’s website that directly competes with Complainant.  Registration of a domain name, that is confusingly similar to another’s mark, for the primary purpose of disrupting the business of a competitor is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).  See Lubbock Radio Paging v. Venture Tele-Messaging, FA 96102 (Nat. Arb. Forum Dec. 23, 2000) (concluding that domain names were registered and used in bad faith where Respondent and Complainant were in the same line of business in the same market area); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by attracting Internet users to a website that competes with Complainant’s business).

The Panel finds that Policy ¶ 4(a)(iii) has been 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 <netscepe.com>, <mapqueest.com>, <mapquast.com> and <mapquaest.com> domain names be TRANSFERRED from Respondent to Complainant.

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

Dated:  July 15, 2004

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2004/897.html