AOL Inc. v. Domain Name
Claim Number: FA1008001341839
Complainant is AOL Inc. (“Complainant”), represented by James R. Davis, of Arent Fox LLP, Washington, D.C., USA. Respondent is Domain Name (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <searchaol.com>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 18, 2010.
On August 21, 2010, Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com confirmed by e-mail to the National Arbitration Forum that the <searchaol.com> domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com and that Respondent is the current registrant of the name. Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com has verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com 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 August 30, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 20, 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@searchaol.com by e-mail. Also on August 30, 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 October 4, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 (the "Rules") "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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant operates an interactive online service and provides computer services, such as access time to computer databases, computer networks, and computerized research and reference materials in the fields of business, finance, news, weather, sports, games, music, theater, education, travel, lifestyle, and telecommunications services.
Complainant owns service mark rights for AOL, which are registered with the United States Patent and Trademark Office (“USPTO”), including Reg. No. 1,977,731, issued June 4, 1996.
Respondent is not commonly known by the disputed domain name and is not licensed or authorized to use the AOL mark.
Respondent registered the <searchaol.com> domain name on October 5, 1999.
The disputed domain name redirects to the <favoriteconsumerbrands.com> domain, which promotes the products of Coca-Cola and other companies.
Respondent’s <searchaol.com> domain name is confusingly similar to Complainant’s AOL service mark.
Respondent does not have any rights to or legitimate interests in the <searchaol.com> domain name.
Respondent registered and uses the <searchaol.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant owns trademark registrations for the AOL and AOL.COM marks with the USPTO. Under Policy ¶ 4(a)(i), USPTO trademark registrations are sufficient evidence of Complainant’s rights in these marks. See AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where a complainant submitted evidence of its mark registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”). Thus is so even where Respondent does not live or operate in the country where the mark is registered. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that a mark be registered in the country in which a respondent operates, it being sufficient that a complainant can demonstrate rights in a mark in some jurisdiction).
Respondent’s <searchaol.com> domain name is confusingly similar to Complainant’s AOL mark as the only additions to the mark are the generic term “search” and the generic top-level domain (“gTLD”) “.com.” The addition of a generic term to Complainant’s mark in forming the offending domain name does not avoid a finding of confusing similarity. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding a respondent’s <amextravel.com> domain name confusingly similar to a complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Warner Bros. Entm’t Inc. v. Sadler, FA 250236 (Nat. Arb. Forum May 19, 2004) (finding that the addition of generic terms to a complainant’s HARRY POTTER mark in a respondent’s <shop4harrypotter.com> and <shopforharrypotter.com> domain names failed to avoid the conclusion of confusing similarity between the mark and the domain names).
Similarly, attaching a gTLD to Complainant’s mark is irrelevant to a Policy ¶ 4(a)(i) analysis. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a competing mark).
Therefore, the Panel finds that Respondent’s <searchaol.com> domain name is confusingly similar to Complainant’s AOL mark for purposes of Policy ¶ 4(a)(i).
Complainant argues that Respondent lacks rights and legitimate interests in the disputed domain name. Once Complainant makes out a prima facie case on this point, the burden shifts to Respondent to demonstrate its rights to or legitimate interests in the disputed domain names. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006):
complainant must first make a prima facie case that respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to respondent to show it does have rights or legitimate interests.
As Complainant has presented the prima facie case required by Policy ¶ 4(a)(ii), Respondent has acquired the burden of demonstrating rights to or legitimate interests in the disputed domain name. Respondent, however, has failed to respond to the allegations of the Complaint filed in this proceeding, and so has failed to meet the burden of demonstrating its rights or legitimate interests. Accordingly, we are free to conclude that Respondent has no rights to or legitimate interests in the contested domain name. See Am. Online, Inc. v. AOL Int’l, D2002-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where a respondent failed to respond to a complaint filed under the Policy); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002):
Respondent’s failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.
Nonetheless we elect to examine the evidence before us, in light of the considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by observing that Complainant alleges, and Respondent does not deny, that Respondent is not commonly known by the disputed domain name and is not licensed or authorized to use the AOL mark. Moreover, The WHOIS information for the <searchaol.com> domain name does not reflect that Respondent is commonly known by the disputed domain name. The Panel thus finds that Respondent lacks rights to or legitimate interests in the <searchaol.com> domain name under Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Saunders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests in a contested domain name because a respondent was not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).
We also note that Complainant contends, without objection from Respondent, that Respondent uses the <searchaol.com> domain name to route Internet users to the <favoriteconsumerbrands.com> domain name, which hosts a commercial website promoting the products of Coca-Cola and other companies. Using Complainant’s mark in this way is not 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). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that a respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)); see also Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that a respondent’s commercial use of a contested domain name suggested that that respondent lacked rights to or legitimate interests in the domain).
The Panel therefore finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s <searchaol.com> domain name redirects Internet users to the <favoriteconsumerbrands.com> domain name, which is a commercial website promoting the products of Coca-Cola and other brands. It is evident that Respondent uses Complainant’s AOL mark in this manner to attract Internet users seeking the services of or information about Complainant, thus creating a likelihood of confusion as to the possible relationship between Complainant and the brands advertised on the resolving website. In the circumstances here presented, we may comfortably presume that Respondent profits financially from the commercial traffic thus generated. Respondent’s activities therefore demonstrate bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use of a contested domain name under Policy ¶ 4(b)(iv) where a respondent diverted Internet users searching for a complainant to its own website, likely profiting in the process); see also Bank of Am. Corp. v. Out Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003), stating, in holding that disputed domain names were registered and used in bad faith pursuant to Policy ¶ 4(b)(iv), that:
[s]ince the disputed domain names contain entire versions of Complainant’s marks and are used for something completely unrelated to their descriptive quality, a consumer searching for Complainant would become confused as to Complainant’s affiliation with the resulting search engine website.
For this reason, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <searchaol.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: October 12, 2010
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