The Complainant is Oath Inc., United States of America (“United States”), internally represented.
The Respondent is Private Registration, NameBrightPrivacy.com, United States / Stan Karp, Ukraine. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 24, 2021. On May 25, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 25, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 1, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 3, 2021. The Center verified that the Complaint together with the amended Complaint satisfied 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 10, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 30, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 12, 2021. The Center appointed Antony Gold as the sole panelist in this matter on July 20, 2021. 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 Since 1989, the Complainant has offered Internet users a wide variety of services in relation to computing, computer software and computer networks as well as email and other related services. As at June 2017, based on the number of unique visitors to its website, the Complainant was ranked seventh among multi-platform digital properties in the United States. The Complainant provides its services under the mark AOL. This mark is protected by many trade mark registrations, both in the United States and internationally, including, by way of example only, United States service mark, registration number 1,977,731, for AOL in classes 35, 38 and 42, registered on June 4, 1996. The disputed domain name was registered on January 28, 2020. It used to resolve to a third party website which displays pornographic content. The disputed domain name is currently inactive. 5. Parties’ Contentions A. Complainant The Complainant says that the disputed domain name is confusingly similar to its AOL trade marks, in that it incorporates its AOL trade mark in its entirety, and the addition of the term “career” is insufficient to distinguish the disputed domain name from the Complainant’s mark. In fact, additions to a domain name which relate to a complainant’s business increase the likelihood of confusion and association between the domain name holder and the trade mark owner. The Complainant says also the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has not authorized or licensed or otherwise permitted the Respondent to register or use the disputed domain name and there is no connection between the Complainant and the Respondent. The Respondent has not sought or obtained any trade mark registrations for AOL, nor could it have done so given the Complainant’s prior rights. Nor has the Respondent made a legitimate commercial or noncommercial fair use of the disputed domain name. The Respondent has chosen to register the disputed domain name to capitalize on the consumer recognition of the Complainant’s famous AOL trade marks; see Wal-Mart Stores, Inc. v. John Boland,WIPO Case No. D2014-2052. By using the disputed domain name in a way that provides no indication that the address is directed to explicit content, the Respondent is diverting Internet users to a website that may substantially offend some of the Complainant’s actual and prospective customers; see Microsoft Corporation v. Paul Horner,WIPO Case No. D2002-0029. This is particularly the case when the Respondent’s use of the dictionary term “careers” suggests that the disputed domain name might relate to potential opportunities at the Complainant’s companies. Lastly, the Complainant says that the disputed domain name was registered and is being used in bad faith. It is clear that the Respondent was aware of the Complainant’s rights in its AOL mark when it registered and began using the disputed domain name. By registering the disputed domain name with knowledge of the Complainant’s rights, the Respondent acted in bad faith. The Respondent registered and is using the disputed domain name to take advantage of the goodwill and reputation of the Complainant’s AOL marks. Registration and use of a domain name that is confusingly similar to a well-known mark is indicative of opportunistic bad faith; see Costco Wholesale Membership Inc. and Costco Wholesale Corporation v. Almantas Kakareka and Hostmaster Oneandone, 1&1 Internet, Inc.,WIPO Case No. D2007-1833. Additionally, registration and use of a domain name which includes a famous trade mark without proving rights or legitimate interests comprises bad faith registration and use; see Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163. Moreover, the Respondent registered and is using the disputed domain name to attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation or endorsement of its website. The disputed domain name is so obviously indicative of the Complainant’s AOL marks that the Respondent’s use of the disputed domain name will inevitably lead to confusion of some sort and the Respondent is seeking, without authorization or consent, to capitalize on the repute of the Complainant’s AOL marks. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Dealing, first, with the Respondent’s failure to file a response to the Complaint, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under these Rules, the Panel shall be entitled to draw such inferences from this omission as it considers appropriate. Paragraph 4(a) of the Policy provides that the Complainant proves each of the following three elements in order to succeed in its Complaint: (i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant has provided details of the many registered trade and service marks it owns for AOL, including the service mark in respect of which full details have been provided above. It has thereby established its rights in this mark. As a technical requirement of registration, the generic Top-Level Domain (“gTLD”), that is “.com” in the case of the disputed domain name, is typically disregarded when assessing confusing similarity. The disputed domain name comprises the Complainant’s AOL mark followed by a hyphen and the word “careers”. The hyphen is of negligible significance in this context and the addition of the word “careers” does not prevent the disputed domain name from being considered confusingly similar to the Complainant’s mark. As explained at section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”): “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”. The Complainant’s AOL service mark is clearly recognizable within the disputed domain name and the Panel accordingly finds that it is confusingly similar to a service mark in which the Complainant has rights. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides, without limitation examples of circumstances whereby a respondent might demonstrate that it has rights or legitimate interests in a domain name. In summary, these are if a respondent has used or prepared to use the domain name in connection with a bona fide offering of goods and services, if a respondent has been commonly known by the domain name, or if a respondent has made 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 in issue. Having regard to the repute and distinctive character of the Complainant’s brand coupled with the confusing similarity between the disputed domain name and the Complainant’s mark, the disputed domain name has evidently been chosen by the Respondent in order to attract visitors to its website who are likely to have been searching for a website connected with the Complainant. Irrespective of the specific content of the website to which the disputed domain name resolves, use of a third party’s mark in a domain name in order to increase Internet traffic to a website does not comprise a bona fide offering of goods and services, although the nature of the Respondent’s website may be regarded as an exacerbating factor; see, for example, Agfa-Gevaert N.V. v. Domain Admin / Privacy Protect, LLC (PrivacyProtect.org) / Leng Da Ge,WIPO Case No. D2020-2637. The second of the circumstances set out at paragraph 4(c) is inapplicable; there is no evidence to indicate that the Respondent has been commonly known by the disputed domain name. Nor is the third circumstance applicable; the registration of the disputed domain name is plainly intended to produce some commercial benefit for the Respondent and the confusing similarity between the disputed domain name and the Complainant’s mark is such as not to amount to fair use of it. In this respect, see section 2.5.1 of the WIPO Overview 3.0; “[W]here a domain name consists of a trademark plus an additional term (at the second- or Top-Level), UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner”. Once a complainant has made out a prima facie case that a respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the respondent to show that it does have such rights or legitimate interests. In the absence of any response from the Respondent to the Complaint, it has failed to satisfy that burden and the Panel accordingly finds that the Respondent has no rights or legitimate interests with respect to the disputed domain name. C. Registered and Used in Bad Faith As at the date of registration of the disputed domain name in January 2020, the Complainant’s business had been established for over 30 years and it had been using its AOL mark for approximately 25 years. The incorporation within the disputed domain name of the Complainant’s mark, coupled with the failure of the Respondent to provide any explanation which might be a bona fide justification for its registration of the disputed domain name, provides a strong indication that Respondent was aware of the Complainant and its mark as at the date of registration of the disputed domain name and registered it in order to take unfair advantage of it. As the panel found in Herbalife International, Inc. v. Surinder S. Farmaha,WIPO Case No. D2005-0765, “the registration of a domain name with the knowledge of the complainant’s trademark registration amounts to bad faith”. See also Costco Wholesale Membership Inc. and Costco Wholesale Corporation v. Almantas Kakareka and Hostmaster Oneandone, 1&1 Internet, Inc.(supra). The Panel therefore finds the Respondent’s registration of the disputed domain name to have been in bad faith. Paragraph 4(b) of the Policy sets out, without limitation, circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The circumstance set out in paragraph 4(b)(iv) of the Policy is if a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website. The use to which the Respondent has put the disputed domain name falls within the circumstance described at paragraph 4(b)(iv) in that the Respondent is using the fame of the Complainant’s mark in order to attract Internet users to its website who are likely to assume that from the fact that the disputed domain name features the Complainant’s AOL mark, that the disputed domain name is connected with the Complainant and its services. The fact that such users would realize, on reaching the Respondent’s website, that this is not the case is immaterial because the Respondent will have achieved its objective of luring them to its website in order, it is assumed, to earn revenue from such visits. See for example, Yahoo! Inc. v. Hildegard Gruener,WIPO Case No. D2016-2491. There is no conceivable good faith use which the Respondent could make of the disputed domain name, nor has the Respondent attempted to explain or justify its position, through service of a response to these proceedings or otherwise. These factors collectively point to bad faith registration and use of the disputed domain name and the fact that the Respondent’s website displays explicit content, further confirms the Respondent’s bad faith. See, by way of example, Six Continents Hotels, Inc. v. Seweryn Nowak,WIPO Case No. D2003-0022. The Panel accordingly finds that the disputed domain name was registered and is being used in bad faith. 7. Decision For 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 Antony Gold
Sole Panelist
Date: August 3, 2021
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