America Online, Inc. v. Oxford University
a/k/a Oxford U - Domains for Sale Domain-Man.com
Claim Number: FA0206000114654
PARTIES
Complainant
is America Online, Inc., Dulles, VA,
USA (“Complainant”) represented by James
R. Davis, II, of Arent Fox Kintner
Plotkin & Kahn. Respondent is Oxford University a/k/a Oxford U -
Domains for Sale Domain-Man.com, Piggabeen, AUSTRALIA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <7aol.com>,
<aol6.com>, <aolnorth.com>,
<aolprime.com>, <aolseven.net>,
<aolseven.org>, <aolta.com>,
<aolus.net>, <northaol.com>,
<primeaol.com>, <americaonlineinc.net>,
<americaonlineinc.org>, <americaonlines.net>,
<americaonlines.org>, and <americaonlies.com>
registered with DotRegistrar.
PANEL
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on June 20, 2002; the Forum received a hard copy of the
Complaint on June 24, 2002.
On
July 10, 2002, DotRegistrar confirmed by e-mail to the Forum that the domain
names <7aol.com>, <aol6.com>, <aolnorth.com>, <aolprime.com>, <aolseven.net>, <aolseven.org>, <aolta.com>, <aolus.net>, <northaol.com>, <primeaol.com>, <americaonlineinc.net>, <americaonlineinc.org>, <americaonlines.net>, <americaonlines.org> and <americaonlies.com> are registered with DotRegistrar and that
Respondent is the current registrant of the names. DotRegistrar has verified that Respondent is bound by the DotRegistrar
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
July 10, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of July 30,
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@7aol.com, postmaster@aol6.com, postmaster@aolnorth.com,
postmaster@aolprime.com, postmaster@aolseven.net, postmaster@aolseven.org,
postmaster@aolta.com, postmaster@aolus.net, postmaster@northaol.com,
postmaster@primeaol.com, postmaster@americaonlineinc.net, postmaster@americaonlineinc.org,
postmaster@americaonlines.net, postmaster@americaonlines.org and postmaster@americaonlies.com
by e-mail.
Having
received no formal 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
August 7, 2002, pursuant to Complainant’s request to have the dispute decided
by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson 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
formal Response from Respondent.
RELIEF SOUGHT
Complainant
requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following
allegations in this proceeding:
1. Respondent’s domain names are confusingly
similar to Complainant’s registered AOL family of marks and specifically
Complainant’s AOL and AMERICA ONLINE registered marks.
2. Respondent does not have any rights or
legitimate interests in the disputed domain names.
3. Respondent registered and used the
subject domain names in bad faith.
B. Respondent submitted several informal
e-mails to the Forum, none of which substantively addressed the arguments made
by the Complainant. Further, all of
Respondent’s submissions failed to comply with the Rules and the Forum’s
Supplemental Rules. Accordingly, the
Panel will not consider the Respondent’s submissions and will treat this case
as if no Response was received.
FINDINGS
Complainant is the owner of numerous
trademark registrations worldwide for the AOL and AMERICA ONLINE marks (“AOL
family of marks”), which among other things Complainant uses in connection with
providing services and general interest information on the Internet and around
the world. Complainant owns U.S. Patent and Trademark Office Reg. Nos.
1,977,731 and 1,618,148 for the AOL and AMERICA ONLINE marks, which were
registered on June 4, 1996 and October 16, 1990, respectively. Complainant also
owns Australian Reg. Nos. 655,189 and 662,466, which were registered on March
8, 1995 and May 29, 1995, respectively.
Complainant uses its AOL family of marks
in connection with the official AOL Internet website. The AOL and AMERICA
ONLINE marks are used extensively at Complainant’s website. As a result,
consumers associate the AOL and AMERICA ONLINE marks with Complainant’s
services.
Complainant began using the AOL and
AMERICA ONLINE marks as early as 1989 in connection with computer online services
and other Internet-related services. With over thirty-four million subscribers,
AOL operates the most widely used interactive online service in the world. Each
year, millions of Complainant’s customers obtain services under the AOL family
of marks; millions more are exposed to said marks through advertising and
promotion. As a result of these advertising expenditures and sales the
distinctive AOL and AMERICA ONLINE marks have become established and famous
identifiers among the public.
Respondent registered the fifteen
disputed domain names between February 5, 2002 and May 21, 2002. Many of these
domain names were registered after a UDRP dispute that involved these same
parties and a similar situation. In the previous dispute, Respondent was
required to transfer numerous domain names that were infringing on
Complainant’s AOL mark, more specifically, <aol7.net>, <aol7.org>
and <aol-7.net>, among others.
Complainant’s investigation reveals that
Respondent has an extensive history of registering and using infringing domain
names that incorporate famous marks. In addition to the already cited domain
names, Respondent was found to have been a cybersquatter in several ICANN
decisions that included but are not limited to the following: Texas
Instruments Inc. v. DM, D2000-1448 (WIPO), Harvey Norman Retailing Party
Ltd. v. Oxford-University, D2000-0994 (WIPO), and Chancellor Masters
& Scholars at the University of Oxford v. DR Seagle, t/a Mr. Oxford
University.
Furthermore, Respondent’s WHOIS
information includes suggestive Registrant Information, such as: “Oxford U. –
Domains for sale..Domain-Man.com.”
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 formal 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
will draw such inferences as 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 in this
proceeding that it has rights in the AOL family of marks through registration
with various worldwide authorities and by continuous use of the mark in
commerce. Complainant’s AOL family of marks enjoys the protection afforded to
established, famous and distinct marks.
The domain names registered by Respondent
are confusingly similar to Complainant’s registered AOL family of marks. In
general, each of Respondent’s domain names incorporate either Complainant’s AOL
mark or AMERICA ONLINE mark in its entirety with the addition of a typo, an
industry related word, a generic word or a variety of generic top-level domains
(“gTLD”). Although a specific analysis will be conducted concerning each domain
name, Respondent’s past typosquatting behavior is reflected in his present
infringing registration practices.
The domain names registered by
Respondent, <7aol.com>, <aol6.com>, <aolseven.net>
and <aolseven.org>, are confusingly similar to Complainant’s AOL
mark. Complainant utilizes a numbering system to identify its different
versions of AOL software, which coincidentally is currently AOL Version 7.
Respondent’s infringing domain names reflect Complainant’s famous AOL mark in
conjunction with the alphanumeric string that reflects Complainant’s selected
software versions. Thus, Respondent’s domain names are confusingly similar. See
Am. Online, Inc. v. Fu,
D2000-1374 (WIPO Dec. 11, 2000) (finding that adding the suffixes
"502" and "520" to the ICQ trademark does little to reduce
the potential for confusion); see also Space
Imaging LLC v. Brownwell, AF-0298
(eResolution Sept. 22, 2000) (finding confusing similarity where the
Respondent’s domain name combines the Complainant’s mark with a generic term
that has an obvious relationship to the Complainant’s business).
The domain names registered
by Respondent, <aolnorth.com>, <aolprime.com>,
<aolta.com>, <aolus.net>, <northaol.com>
and <primeaol.com>, incorporate Complainant’s AOL mark in
its entirety with the addition of a generic or geographic word or incoherent
combination of letters. Neither the addition of an ordinary descriptive word
nor a geographic qualifier transform Respondent’s domain names into separate
and distinct marks for the purpose of a Policy ¶ 4(a)(i) analysis. Respondent’s
intention of creating a perceived affiliation with Complainant’s established AOL
mark is clear. 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); see
also AXA China Region Ltd. v. KANNET
Ltd., D2000-1377 (WIPO Nov. 29, 2000) (finding that common geographic
qualifiers or generic nouns can rarely be relied upon to differentiate the mark
if the other elements of the domain name comprise a mark or marks in which
another party has rights).
The domain names registered by
Respondent, <americanonlineinc.net>, <americaonlineinc.org>,
<americaonlines.net> and <americaonlies.com>,
incorporate Complainant’s registered AMERICA ONLINE mark in its entirety, with
the exception of the <americaonlies.com> domain name, which
involves a probable Internet user misspelling of Complainant’s mark.
Respondent’s domain names perpetuate an underlying confusion, where Internet
users may erroneously believe they are visiting a website sponsored or
affiliated with Complainant. Respondent’s addition of the common abbreviation
of “Incorporated,” variations of the gTLDs, including “.org,” “.net” and
“.com,” and an “s” to Complainant’s AMERICA ONLINE mark, fails to detract from
the overall dominance of Complainant’s mark. See Treeforms, Inc. v. Cayne Indus. Sales Corp., FA 95856 (Nat. Arb.
Forum Dec. 18, 2000) (finding that confusion would result when Internet users,
intending to access Complainant’s website, think that an affiliation of some
sort exists between Complainant and Respondent, when in fact, no such
relationship would exist); see also Nat’l
Geographic Soc. v. Stoneybrook Inv., FA 96263 (Nat. Arb. Forum Jan. 11,
2001) (finding that the domain name <nationalgeographics.com> was
confusingly similar to Complainant’s “National Geographic” mark); see also 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 the Respondent’s
infringement on a core trademark held by Complainant).
As
previously stated, gTLDs, such as, “.net,” “.org” and “.com,” are not capable
of transforming a confusingly similar second level domain into a distinct mark.
Generic top-level domains are required in domain names and are not considered
influential when conducting a Policy ¶ 4(a)(i) analysis. See Pomellato
S.p.A v. Tonetti,
D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to
Complainant’s mark because the gTLD “.com” after the name POMELLATO is not
relevant); see also Visit Am.,
Inc. v. Visit Am., FA 95093 (Nat. Arb. Forum Aug. 14, 2000) (finding that
the “.com” is part of the Internet address and does not add source identity
significance); see also Kabushiki
Kaisha Toshiba v. Shan Computers, D2000-0325 (WIPO June 27, 2000) (finding
that the domain name <toshiba.net> is identical to the Complainant’s
trademark TOSHIBA).
Accordingly, the Panel finds that Policy
¶ 4(a)(i) has been satisfied.
Although the burden of proof is on
Complainant, Paragraph 4(c) of the Policy advises Respondent how to demonstrate
its rights and legitimate interests in the domain names. Because Complainant
asserts that Respondent does not have any rights or legitimate interests, the
burden shifts to Respondent to demonstrate such rights or interests. See Do
The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding
that once Complainant asserts that Respondent has no rights or legitimate
interests in respect of the domain, the burden shifts to Respondent to provide
credible evidence that substantiates its claim of rights and legitimate
interests in the domain name); see also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000)
(finding no rights or legitimate interests where Respondent fails to respond).
Respondent has failed to submit a formal
Response in this proceeding and Complainant’s allegations are not challenged
and are uncontested. Therefore, the Panel is permitted to make all reasonable
inferences in favor of Complainant. See Vertical Solutions Mgmt., Inc. v. Webnet-Marketing, Inc., FA 95095
(Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable
inferences of fact in the allegations of Complainant to be deemed true); see
also 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’s WHOIS records indicate that
Respondent intends to sell the domain name registrations. As stated in the
Findings, Respondent’s Registrant data is recorded as “Domains for Sale.”
Respondent’s apparent willingness to part with the numerous infringing
registrations indicates its lack of rights or legitimate interests in the
domain names under Policy ¶ 4(a)(ii). See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000)
(finding Respondent’s conduct purporting to sell the domain name suggests it
has no legitimate use); see also Hewlett-Packard
Co. v. High Perf. Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000)
(finding no rights or legitimate interests where the Respondent registered the
domain name with the intention of selling it).
Respondent’s registration of domain names
containing Complainant’s famous marks constitutes an opportunistic attempt to
benefit from the goodwill associated with Complainant’s AOL family of marks.
The AOL marks are so obviously associated with Complainant that anyone else
attempting to assert rights in a domain name incorporating the marks is
presumed to lack rights and legitimate interests. Respondent’s opportunistic
attempts to divert Internet users to its argumentative websites by using
Complainant’s AOL and AMERICA ONLINE marks does not constitute a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a
legitimate noncommercial or fair use of the domain names under Policy ¶
4(c)(iii). See Vapor Blast Mfg.
Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001)
(finding that Respondent’s commercial use of the domain name to confuse and
divert Internet traffic is not a legitimate use of the domain name); see
also 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).
Respondent is not authorized, registered
or licensed to use Complainant’s AOL or AMERICA ONLINE marks. The circumstances
surrounding Respondent’s registration of the infringing domain names suggest
that Respondent is not commonly known by any of the domain names pursuant to
Policy ¶ 4(c)(ii). Respondent entered “Domains for sale” as its Registrant data
on the WHOIS information page of the domain name registrations and is usually
identified by an Oxford University moniker. Because Complainant’s marks benefit
from international fame and recognition, a presumption exists that Respondent
is not commonly known by domain names that incorporate the established marks in
their entirety. 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 Nike,
Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights
or legitimate interests where one “would be hard pressed to find a person who
may show a right or legitimate interest” in a domain name containing
Complainant's distinct and famous NIKE trademark).
Accordingly, the Panel finds that Policy
¶ 4(a)(ii) has been satisfied.
Respondent’s WHOIS information exposes
its motivations behind registering the infringing domain names. “Domains for
sale” implies that Respondent’s intention is to eventually sell or transfer the
domain names. Circumstances indicate that Respondent acquired the infringing
domain names primarily for the purpose of selling, renting or transferring the
registration to Complainant; thus, Respondent’s registration and use constitute
bad faith under Policy ¶ 4(b)(i). See Pocatello Idaho Auditorium Dist. v.
CES Mktg. Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002)
("[w]hat makes an offer to sell a domain [name] bad faith is some
accompanying evidence that the domain name was registered because of its value
that is in some way dependent on the trademark of another, and then an offer to
sell it to the trademark owner or a competitor of the trademark owner"); 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”).
Complainant’s evidence indicates
Respondent has established a pattern of conduct of registering infringing
domain names incorporating Complainant’s marks. Complainant was successful in
acquiring a variety of domain names in a January 29, 2002, dispute that
involved the current Respondent. Respondent’s selective targeting of
Complainant’s marks represents bad faith registration and use pursuant to
Policy ¶ 4(b)(ii) because it is conceivable that Complainant would desire to
reflect its AOL mark in conjunction with the current version of its software. 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 Caterpillar
Inc. v. Miyar, FA 95623
(Nat. Arb. Forum Dec. 14, 2000) (finding that registering multiple
domain names in a short time frame indicates an intention to prevent the mark
holder from using its mark and provides evidence of a pattern of conduct).
Complainant’s AOL family of marks is
internationally recognized as being affiliated with Complainant. Respondent’s
attempts to benefit indirectly from the fame and accompanying Internet traffic
associated with Complainant is an opportunistic attempt to profit from
Complainant’s marks. Respondent operates numerous argumentative websites
containing disparaging remarks about various topics and relies on disseminating
his views via Internet users. Respondent’s opportunistic registration and use
of Complainant’s marks in the subject domain names is bad faith registration
and use under Policy ¶ 4(b)(iv). See Pavillion
Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000)
(finding that the “domain names are so obviously connected with the
Complainants that the use or registration by anyone other than Complainants
suggests ‘opportunistic bad faith’”); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000)
(finding bad faith registration and use where it is “inconceivable that the
respondent could make any active use of the disputed domain names without
creating a false impression of association with the Complainant”); see also Reuters Ltd. v. Teletrust IPR Ltd.,
D2000-0471 (WIPO Sept. 8, 2000) (finding that Respondent demonstrated bad faith
where Respondent was aware of Complainant’s famous mark when registering the
domain name as well as aware of the deception and confusion that would
inevitably follow if he used the domain names).
Based on the above evidence, 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
hereby GRANTED. Accordingly, it
is Ordered that the <7aol.com>, <aol6.com>, <aolnorth.com>, <aolprime.com>, <aolseven.net>, <aolseven.org>, <aolta.com>, <aolus.net>, <northaol.com>, <primeaol.com>, <americaonlineinc.net>, <americaonlineinc.org>, <americaonlines.net>, <americaonlines.org> and <americaonlies.com> domain names be TRANSFERRED from
Respondent to Complainant.
Hon. Carolyn Marks
Johnson, Panelist
Dated: August 21, 2002.
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