America Online, Inc. v. USACOOP.COM a/k/a
Bingo Giant
Claim Number: FA0203000105763
PARTIES
Complainant
is America Online, Inc., Dulles, VA
(“Complainant”) represented by James R.
Davis, of Arent Fox. Respondent is USACOOP.COM a/k/a Bingo Giant, Portsmouth, NH (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <aolmalls.com>,
<aolmalls.net>, <aolmarketplace.com>, <aolmarketplace.net>, and <aolbingo.net>, registered with Tucows, Go Daddy Software.
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.
Hon.
Ralph Yachnin as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on March 6, 2002; the Forum received a hard copy of the
Complaint on March 11, 2002.
On
March 7, 2002, Tucows, Go Daddy Software confirmed by e-mail to the Forum that
the domain names <aolmalls.com>,
<aolmalls.net>, <aolmarketplace.com>, <aolmarketplace.net>, and <aolbingo.net> are registered with Tucows, Go Daddy Software
and that Respondent is the current registrant of the names. Tucows, Go Daddy Software has verified that
Respondent is bound by the Tucows, Go Daddy Software 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
March 11, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of April 1,
2002 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@aolmalls.com, postmaster@aolmalls.net,
postmaster@aolmarketplace.com, postmaster@aolmarketplace.net, and
postmaster@aolbingo.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
April 5, 2002, pursuant to Complainant’s request to have the dispute decided by
a single-member Panel, the Forum appointed Hon. Ralph Yachnin 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
The <aolmalls.com>,
<aolmalls.net>, <aolmarketplace.com>, <aolmarketplace.net>, and <aolbingo.net> domain names are confusingly similar to Complainant's
AOL and AOL.COM marks.
Respondent
has no rights or legitimate interests in the disputed domain names.
Respondent
registered and used the disputed domain names in bad faith.
B.
Respondent
Respondent
failed to submit a Response.
FINDINGS
Complainant is the owner of numerous
trademark registrations worldwide for its AOL mark, including U.S. trademark
registration Nos. 1,977,731 and 1,984,337.
Complainant uses its AOL mark in relation to computer services,
computing and computer software, computer bulletin boards and reference
materials in the fields of business, finance, news, weather, sports, computing
and computer software, games, music, theater, movies, travel, education,
lifestyles, hobbies and topics of general interest, computerized dating
services, computerized shopping via telephone and computer terminals and
telecommunication services including email, and facsimile transmission.
Complainant uses its AOL.COM mark as a
domain name for its website.
Complainant’s mark is famous and it has used its mark extensively and
continuously in interstate and international commerce in connection with the
advertising and sale of its Internet and computer-related services. Complainant has invested substantial sums of
money in developing and marketing its services and marks. As a result, Complainant’s mark
distinguishes Complainant as one of the most readily recognized and famous
companies on the Internet. Complainant
has over 30 million subscribers and operates one of the most widely used
interactive online services in the world.
Respondent registered the disputed domain
names on April 14, 2001. Respondent is
using the domain names in a way that can confuse Internet users. Respondent makes references to “Americans On
Line Bingo” and “Americans On Line Malls” on its commercial website located at
the domain names. Furthermore, the
services offered at Respondent’s website have been offered by Complainant’s
service for many years before Respondent began to operate its website.
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 the 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 the 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 the Respondent is identical or confusingly
similar to a trademark or service mark in which the Complainant has rights; and
(2)
the 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, through registration, and
continuous use has established that it has rights in the AOL and AOL.COM
marks. Furthermore, Respondent’s domain
names <aolmalls.com>,
<aolmalls.net>, <aolmarketplace.com>, <aolmarketplace.net>, and <aolbingo.net> are
confusingly similar to Complainant’s marks because they incorporate the
entirety of Complainant’s marks and merely add generic terms to Complainant’s
AOL and AOL.COM marks. 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 the Complainant combined with a generic
word or term); see also Sony
Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that
“[n]either the addition of an ordinary descriptive word…nor the suffix ‘.com’
detract from the overall impression of the dominant part of the name in each
case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied).
The Panel finds that Policy ¶ 4(a)(i) has
been satisfied.
Rights or Legitimate Interests
Respondent has failed to come forward
with a Response and therefore it is presumed that Respondent has no rights or
legitimate interests in the disputed domain names. See 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, when Respondent fails to
submit a Response the Panel is permitted to make all inferences in favor of
Complainant. See Talk City, Inc.
v. Robertson, D2000-0009, (WIPO Feb. 29, 2000)
(“In the absence of a response, it is appropriate to accept as true all
allegations of the Complaint”).
Respondent is using confusingly similar
domain names in order to offer services that are similar to Complainant’s
services. Respondent is also using
slogans such as “Americans On Line Bingo” on its websites creating a likelihood
of confusion as the source, sponsorship and affiliation of the disputed domain
names. This type of use is not
considered to be a bona fide offering of goods or services pursuant to Policy ¶
4(c)(i) or legitimate noncommercial or fair use pursuant to Policy ¶
4(c)(iii). See Big Dog Holdings, Inc. v. Day, FA 93554
(Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was
diverting consumers to its own website by using Complainant’s trademarks); see
also State Farm Mut. Auto. Ins. Co.
v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000) (finding that
“unauthorized providing of information and services under a mark owned by a
third party cannot be said to be the bona fide offering of goods or services”);
see also Caterpillar Inc. v. Quin,
D2000-0314 (WIPO June 12, 2000) (finding that Respondent does not have a
legitimate interest in using the domain names <caterpillarparts.com> and
<caterpillarspares.com> to suggest a connection or relationship, which
does not exist, with Complainant's mark CATERPILLAR).
Respondent, known to this Panel as
USACOOP.COM a/k/a Bingo Giant, has not come forward with any evidence that it
is commonly known as <aolmalls.com>,
<aolmalls.net>, <aolmarketplace.com>, <aolmarketplace.net>, or <aolbingo.net> and
therefore Respondent has not established that it has rights or legitimate
interests in the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO
Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was
not commonly known by the mark and never applied for a license or permission
from Complainant to use the trademarked name); see also Broadcom Corp. v. Intellifone Corp., FA
96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests
because Respondent is not commonly known by the disputed domain name or using
the domain name in connection with a legitimate or fair use).
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Registration and Use in Bad Faith
Respondent has engaged in a pattern of
registering infringing domain names by registering <aolmalls.com>, <aolmalls.net>, <aolmarketplace.com>,
<aolmarketplace.net>, and <aolbingo.net>. Engaging
in pattern of registering infringing domain names is evidence of bad faith
pursuant to Policy ¶ 4(b)(ii). See Harcourt, Inc. v. Fadness, FA 95247
(Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of
several infringing domain names satisfies the burden imposed by the Policy ¶
4(b)(ii)); see also YAHOO! Inc. v. Syrynx, Inc. & Hamilton, D2000-1675 (WIPO Jan. 30, 2001) (finding a bad
faith pattern pursuant to Policy ¶ 4(b)(ii) in Respondent's registration of two
domain names incorporating Complainant's YAHOO! mark).
Based on the famous
nature of Complainant’s AOL and AOL.COM marks it can be inferred that
Respondent was on notice as to the existence of Complainant’s marks when it
registered the infringing domain names.
Therefore, Respondent’s registration of the infringing domain names
despite this notice is evidence of bad faith.
See
Entrepreneur Media, Inc. v. Smith,
279
F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an
alleged infringer chooses a mark he knows to be similar to another, one can
infer an intent to confuse"); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr.
17, 2000) (finding that evidence of bad faith includes actual or constructive
knowledge of a commonly known mark at the time of registration).
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 the requested relief
shall be hereby granted.
Accordingly, it is Ordered that the
domain names <aolmalls.com>,
<aolmalls.net>, <aolmarketplace.com>, <aolmarketplace.net>, and <aolbingo.net> be transferred from Respondent to
Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: April 10, 2002
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page