AOL Inc. v. Domain Administrator & Registrant Registrant c/o Registrant
Claim Number: FA1006001329749
Complainant is AOL
Inc. (“Complainant”), represented by James
R. Davis, of Arent Fox LLP,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <findaol.com>, <aolmailbox.com>, <aolprofiles.com>, <musicchannelaol.com>, <gotoicq.com>, <icqmessenger.com>, and <icq2.com>, registered with Moniker Online Services LLC.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 14, 2010.
On June 15, 2010, Moniker Online Services LLC confirmed by e-mail to the National Arbitration Forum that the <findaol.com>, <aolmailbox.com>, <aolprofiles.com>, <musicchannelaol.com>, <gotoicq.com>, <icqmessenger.com> and <icq2.com> domain names are registered with Moniker Online Services LLC and that Respondent is the current registrant of the names. Moniker Online Services LLC has verified that Respondent is bound by the Moniker Online Services 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 17, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 7, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@findaol.com, postmaster@aolmailbox.com, postmaster@aolprofiles.com, postmaster@musicchannelaol.com, postmaster@gotoicq.com, postmaster@icqmessenger.com and postmaster@icq2.com by e-mail. Also on June 17, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 13, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <findaol.com>, <aolmailbox.com>, <aolprofiles.com>, and <musicchannelaol.com>, domain names are confusingly similar to Complainant’s AOL mark.
Respondent’s <gotoicq.com>, <icqmessenger.com>, and <icq2.com> domain names are confusingly similar to Complainant’s ICQ mark.
2. Respondent does not have any rights or legitimate interests in the <findaol.com>, <aolmailbox.com>, <aolprofiles.com>, <musicchannelaol.com>, <gotoicq.com>, <icqmessenger.com>, and <icq2.com> domain names.
3. Respondent registered and used the <findaol.com>, <aolmailbox.com>, <aolprofiles.com>, <musicchannelaol.com>, <gotoicq.com>, <icqmessenger.com>, and <icq2.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, AOL, Inc., is a global provider of Internet-based entertainment, news, chat, e-mail, and messenger services. Complainant owns several trademark registrations with the United States Patent and Trademark Office ("USPTO") for its AOL mark (e.g., Reg. No. 1,977,731 issued June 4, 1996) and ICQ mark (e.g., Reg. No. 2,411,657 issued Dec. 12, 2000). Complainant also owns trademark registrations with the Hong Kong Intellectual Property Department (“HKIPD”) for its AOL (Reg. No. B07447 issued July 24, 1998) and ICQ mark (Reg. No. B13149 issued Oct. 13, 1998).
Respondent registered the <findaol.com>, <aolmailbox.com>, <aolprofiles.com>, <musicchannelaol.com>, <gotoicq.com>, <icqmessenger.com> and <icq2.com> domain names from August 10, 2002 to October 11, 2005. Respondent’s disputed domain names resolve to websites that display various third-party links to both competing and unrelated websites of Complainant.
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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint 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.”).
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.
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” The Panel finds that Complainant has presented sufficient evidence to indicate that all of the disputed domain names are controlled by the same entity and shall proceed as such.
The Panel finds that Complainant has rights in its AOL mark
through its registrations of the mark with the USPTO (e.g., Reg. No. 1,977,731 issued June 4, 1996) and the HIKIPD (Reg.
No. B07447 issued July 24, 1998) pursuant to Policy ¶ 4(a)(i). The Panel further finds Complainant has
established rights in its ICQ mark through its trademark registrations with the
USPTO (e.g., Reg. No. 2,411,657
issued Dec. 12, 2000) and HKIPD (Reg. No. B13149 issued Oct. 13, 1998) under
Policy ¶ 4(a)(i). See Miller Brewing
Complainant argues that the <findaol.com>, <aolmailbox.com>, <aolprofiles.com>, and <musicchannelaol.com> domain names are confusingly similar to Complainant’s AOL mark. Complainant notes that each domain name contains Complainant’s AOL mark entirely while adding generic or descriptive terms and the generic top-level domain (“gTLD”) “.com.” The Panel finds that the disputed domain names are confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i) where each domain name contains Complainant’s mark and adds a generic or descriptive term and the gTLD “.com.” 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 Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Nat. Arb. Forum Nov. 18, 2005) (holding that the addition of both the word “advisors” and the gTLD “.com” did not sufficiently alter the disputed domain name to negate a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
Complainant also argues that the <gotoicq.com>, <icqmessenger.com>, and <icq2.com>
domain names are confusingly similar to its ICQ mark, because each domain
name contains its mark entirely while adding generic or descriptive terms or
numbers and the gTLD “.com.” The Panel
agrees and finds that the disputed domain names are confusingly similar to
Complainant’s mark under Policy ¶ 4(a)(i).
See supra Arthur Guinness Son & Co. (
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged Respondent does not have rights and legitimate interests in the <findaol.com>, <aolmailbox.com>, <aolprofiles.com>, <musicchannelaol.com>, <gotoicq.com>, <icqmessenger.com>, and <icq2.com> domain names. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”). The Panel finds Complainant has made a sufficient prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain names. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the panel to draw adverse inferences from the respondent’s failure to reply to the complaint); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence). However, the Panel will examine the record to determine whether Respondent has rights and legitimate interests in the disputed domain names under Policy ¶ 4(c).
The WHOIS information does not indicate that the registrant
of the disputed domain names is commonly known by the disputed domain
names. Respondent failed to offer
evidence showing it is commonly known by the <findaol.com>, <aolmailbox.com>, <aolprofiles.com>,
<musicchannelaol.com>, <gotoicq.com>, <icqmessenger.com>,
and <icq2.com> domain names. The Panel finds no other
evidence on record showing Respondent is commonly known by the disputed domain
names. Complainant further asserts that
Respondent is not authorized or licensed to use the AOL or ICQ marks in any
way. Therefore, the Panel finds that
Respondent is not commonly known by the disputed domain names pursuant
to Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent
has no rights or legitimate interests in a disputed domain name where there was
no evidence in the record indicating that the respondent was commonly known by
the disputed domain name); see also Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum
Apr. 18, 2007) (concluding that the respondent was not commonly known by the
<thirteen.com> domain name based on all evidence in the record, and the
respondent did not counter this argument in its response).
Complainant argues that Respondent is using the <findaol.com>, <aolmailbox.com>, <aolprofiles.com>, <musicchannelaol.com>, <gotoicq.com>, <icqmessenger.com>, and <icq2.com> domain names to advertise and provide third-party hyperlinks to businesses offering similar Internet-based chat, entertainment, and computer services as Complainant and links to businesses that are unrelated to Complainant. Complainant contends that Respondent’s use of the disputed domain names is evidence that Respondent lacks rights and legitimate interests in the domain names. The Panel agrees and finds that Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) by maintaining a directory website with links to both competing and unrelated businesses to Complainant, presumably for financial gain. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees); see also Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s disputed domain names resolve to websites that provide Internet users with a search engine and sponsored listings for businesses and websites that offer chat and Internet services in competition with Complainant. The Panel finds that Respondent’s diversion of Internet users, who are seeking Complainant’s products and services, to the products and services of competitors of Complainant results in a disruption of Complainant’s online business. Therefore, the Panel finds that Respondent registered and used the disputed domain names in bad faith under Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors).
Complainant argues that Respondent is using variations of Complainant’s mark to attract Internet users to Respondent’s website where Respondent collects click-through fees associated with the various third-party links displayed thereon. Complainant contends that Respondent’s use as described is evidence that Respondent registered and is using the disputed domain names in bad faith under Policy ¶ 4(b)(iv). The Panel finds that Respondent is using the disputed domain names to intentionally attract Internet users to its website where Respondent displays various third-party links to websites both in competition with and unrelated to Complainant, presumably for financial gain, and that such use is evidence of bad faith under Policy ¶ 4(b)(iv). See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)); see also Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites).
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 relief shall be GRANTED.
Accordingly, it is Ordered that the <findaol.com>, <aolmailbox.com>, <aolprofiles.com>, <musicchannelaol.com>, <gotoicq.com>, <icqmessenger.com>, and <icq2.com> domain names be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: July 26, 2010
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