WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AOL, Inc. v. Justin Seeney
Case No. DCO2010-0017
1. The Parties
The Complainant is AOL, Inc. of Dulles, Virginia, United States of America, represented by Arent Fox LLP, United States of America.
The Respondent is Justin Seeney of Pickering, Ontario, Canada.
2. The Domain Name and Registrar
The disputed domain name <tvsquad.co> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 9, 2010. On September 10, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On September 11, 2010, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s contact details. The Center has verified that the Complaint satisfies the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 15, 2010. In accordance with the Rules, paragraph 5(a), the due date for the Response was October 5, 2010. The Respondent did not submit any Response. Accordingly, the Center notified the parties of the Respondent’s default on October 6, 2010.
The Center appointed Sebastian Hughes as the sole panelist in this matter on October 17, 2010. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
A. The Complainant
The Complainant is a company incorporated in Delaware, the United States of America and the owner of a registration for the trade mark TV SQUAD in the United States of America (“the Trade Mark”). The Complainant is also the owner of the domain name <tvsquad.com>.
B. The Respondent
The Respondent is an individual apparently with an address in Canada.
The disputed domain name <tvsquad.co> was registered on July 20, 2010.
5. Parties’ Contentions
The following facts are alleged by the Complainant in the Complaint and have not been disputed by the Respondent.
The Complainant operates one of the most widely-used interactive online services in the world. Since 2004, it has been using the Trade Mark in respect of the provision of online journals and blogs in the field of television. The Trade Mark has been widely publicised through substantial advertising and marketing activities and significant numbers of users have visited the Complainant’s “www.tvsquad.com” website.
The disputed domain name is identical with or confusingly similar to the Trade Mark and the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The disputed domain name has been registered and used in bad faith for the following reasons:
1. given the history of use of the Trade Mark by the Complainant and the similarity between the disputed domain name and the Trade Mark, the Respondent had both constructive and actual knowledge of the Trade Mark prior to his registration of the disputed domain name;
2. the Respondent is making commercial use of the disputed domain name by operating his blog on the website to which the disputed domain name is resolved (“the Website”), which, at the time of filing of the Complaint, had received over 1,400 visitors;
3. the Respondent has offered to sell the disputed domain name to the Complainant for USD 5,000.00 and has otherwise threatened to sell it to a third party.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration which predate the date of registration of the disputed domain name.
It is well-settled that top level domains are typically to be discounted in determining the question of confusing similarity or identity under the Policy.
The Panel finds that the disputed domain name is identical to the Trade Mark.
The Panel therefore holds that the Complaint fulfills the first condition of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organisation) have been commonly known by the domain name, even if you have acquired no trade mark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
There is no evidence that the Complainant has authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Mark. The Complainant has prior rights in the Trade Mark which precede the Respondent’s registration of the disputed domain name by approximately six years. There is therefore a prima facie case that the Respondent has no rights and legitimate interests in the disputed domain name, and the burden is thus on the Respondent to produce evidence to rebut this presumption (Do The Hustle, LLC v.Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Respondent has failed to show that he has acquired any trade mark rights in respect of the disputed domain name or that the disputed domain name is used in connection with a bona fide offering of goods or services. The Respondent appears to be using the disputed domain name to post a “blog” page of some sort, although no “blog” contact is presently in evidence on the Website.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name.
There has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, which is identical to the Complainant’s Trade Mark. A right to “blog” (if that is indeed what the Respondent is doing) does not necessarily amount to a right to do so via a domain name that is identical to another’s trade mark.
The Panel finds that the Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain name. The Panel therefore finds that the Complaint fulfills the second condition of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Pursuant to paragraph 4(b)(iv) of the Policy, the following conduct amounts to registration and use in bad faith on the part of the Respondent:
“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The Complainant contends the Respondent is making use of the disputed domain name to draw Internet users to the Website and to profit from consumer confusion. The Complainant further contends that the Website contains commercial content. The Panel disagrees. The Website comprises a blog apparently operated by the Respondent. It does not appear that the Website contains any commercial content or that it is being used in a commercial context.
The Panel therefore finds that the public, on visiting the Website, is unlikely to be confused into thinking that the disputed domain name has a connection with the Complainant, contrary to the fact. There is very little likelihood of confusion as to source, sponsorship, affiliation or endorsement of the Website.
The Panel therefore concludes that the Respondent’s registration and use of the disputed domain name does not per se fall under paragraph 4(b)(iv) of the Policy, although the Panel does not accept that the Respondent’s principal intent regarding the disputed domain name is to profit from its incorporation of the Complainant’s Trade Mark through sale to the Complainant (discussed below).
Pursuant to paragraph 4(b)(i) of the Policy, the following conduct amounts to registration and use in bad faith on the part of the Respondent:
“circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name.”
In correspondence between the parties prior to the filing of the Complaint, the Respondent offered to sell the disputed domain name to the Complainant for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the disputed domain name - namely, for the sum of USD 5,000.00. The Respondent also stated “I have other interested buyers for this domain”.
The Panel therefore finds the requisite element of bad faith has been satisfied, under paragraph 4(b)(i) of the Policy.
The Panel also considers the failure of the Respondent to file a Response to the Complaint further supports an inference of bad faith (Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787).
For all the foregoing reasons, the Panel concludes that the disputed domain name has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <tvsquad.co> be transferred to the Complainant.
Dated: October 25, 2010