AOL Inc. v. Pidgirnij Igor Mihailovich
Claim Number: FA1210001468062
Complainant is AOL Inc. (“Complainant”), represented by James R. Davis of Arent Fox LLP, Washington, D.C., USA. Respondent is Pidgirnij Igor Mihailovich (“Respondent”), Ukraine.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pornaol.com>, registered with GoDaddy.com, 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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 19, 2012; the National Arbitration Forum received payment on October 19, 2012.
On October 22, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <pornaol.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 22, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 13, 2012 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@pornaol.com. Also on October 22, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 November 24, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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 (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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
Complainant owns the AOL mark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. 1,977,731 registered June 4, 1996). Complainant also owns a trademark registration for its AOL mark with the State Intellectual Property Service of Ukraine (“SIPS”) (Reg. No. 24,878 registered May 15, 2002). See Annex B. Complainant owns rights in the AOL.COM trademark through its USPTO registration (Reg. No. 2,325,291 registered March 7, 2000). See Annex C. Complainant uses its AOL family of marks to identify its services, which include access to computer databases, networks, and research in a variety of topics, including business, finance, news, weather, sports, games, movies, travel, and other more. Complainant uses the AOL.COM mark in connection with its website at the <aol.com> domain name. Complainant’s website receives over a million visitors each day, and Complainant continues to advertise its services using the AOL and AOL.COM marks and has spent a substantial amount of money on advertising its brand, resulting in widespread recognition of the AOL name.
Respondent registered the <pornaol.com> domain name, which resolves to a commercial website that displays “graphic pornographic images,” and offers visitors video downloads, advertisements, and links to other websites. The <pornaol.com> domain name is confusingly similar to Complainant’s AOL.COM mark. Respondent is not commonly known by the disputed domain name, or authorized to use the mark in any way. Respondent does not have make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name. Respondent registered and uses the <pornaol.com> domain name in bad faith, and makes a commercial profit from the website. Respondent had constructive and actual knowledge of Complainant’s rights in the AOL marks when it registered the <pornaol.com> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant has rights in its AOL.COM and AOL marks.
2. Respondent’s <pornaol.com> domain name is confusingly similar to Complainant’s marks.
3. Respondent has no rights to or legitimate interests in the domain name.
4. Respondent registered and used the domain name 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."
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.
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.”).
Complainant asserts rights in its marks through its USPTO registrations of the AOL mark (e.g., Reg. 1,977,731 registered June 4, 1996) and the AOL.COM mark (Reg. No. 2,325,291 registered March 7, 2000). Complainant also claims trademark rights in its AOL mark through its trademark registration with Ukraine’s SIPS (Reg. No. 24,878 registered May 15, 2002). In Victoria’s Secret Stores Brand Mgmt., Inc. v. Bitarov, FA 1359279 (Nat. Arb. Forum Dec. 23, 2010), the panel concluded that the complainant’s USPTO and SIPS registrations established complainant’s rights in its mark. The Panel finds that Complainant’s rights in its AOL and AOL.COM marks are secured through its USPTO and SIPS registrations, under Policy ¶ 4(a)(i).
Complainant asserts that the <pornaol.com> domain name is confusingly similar to its AOL.COM mark, because the domain name includes the generic term “porn,” which is shorthand for “pornography.” The Panel finds that using Complainant’s entire mark and adding only a generic term renders the <pornaol.com> domain name confusingly similar to Complainant’s AOL.COM mark pursuant to Policy ¶ 4(a)(i). See Mattel, Inc. v. domainsforsalenow@hotmail.com, FA 187609 (Nat. Arb. Forum Oct. 6, 2003) (“Respondent has merely added the descriptive word ‘porn’ to Complainant's registered BARBIE mark, and the addition of this word does not create a notable distinction between Complainant's mark and the domain name currently in dispute.”).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant contends that Respondent is not commonly known by the <pornaol.com> domain name, and supports its contention with evidence showing that the domain name’s registrant is identified in the WHOIS record as “Pidgirnij Igor Mihailovich.” See Annex E. InTercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003), the panel stated that there was no support in the WHOIS information that implied that the respondent was commonly known by the disputed domain name and found that Policy ¶ 4(c)(ii) did not apply. The Panel concludes that the WHOIS information does not show that Respondent is commonly known by the <pornaol.com> domain name, and determines that Respondent thus does not possess rights or legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii).
Complainant argues that Respondent links the <pornaol.com> domain name to a website displaying graphic pornographic content, including video downloads, links to other websites, and advertisements. Complainant argues that one of the displayed links offers a pharmaceutical product for sale and assists visitors to Respondent’s other site to sell pharmaceuticals. The Panel concludes that Respondent uses the <pornaol.com> domain name in a way that does not reflect 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) due to Respondent’s use of the domain name to offer pornographic content and pharmaceutical products to website visitors. See Paws, Inc. v. Zuccarini, FA 125368 (Nat. Arb. Forum Nov. 15, 2002) (holding that the use of a domain name that is confusingly similar to an established mark to divert Internet users to an adult-oriented website “tarnishes Complainant’s mark and does not evidence noncommercial or fair use of the domain name by a respondent”); see also Vanderbilt Univ. v. U Inc., FA 893000 (Nat. Arb. Forum Feb. 19, 2007) (holding that the respondent did not have rights or legitimate interests in a domain name where it was redirecting Internet users to its own website promoting the respondent’s books unrelated to the complainant).
Complainant argues that Respondent’s bad faith registration and use is apparent because Respondent uses the <pornaol.com> domain name to feature adult-oriented material and the domain name causes consumer confusion. Complainant alleges that Respondent makes a commercial profit due to the commercial nature of the offered video downloads, advertisements, and links to other websites, including a website belonging to Respondent that sells pharmaceutical products. In Google Inc. v. Bassano, FA 232958 (Nat. Arb. Forum Mar. 8, 2004), the panel determined that the respondent used the disputed domain name to attract Internet users to a website that posted adult-oriented content, which was an indicator of bad faith registration and use. The panel in T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006), concluded that the respondent’s registration and use of a confusingly similar domain name to the complainant’s mark to reroute Internet traffic to a “links page” that generated profit for the respondent constituted bad faith registration and use. The Panel determines that by featuring adult-oriented material at the resolving website, as well as links to other commercial sites, including Respondent’s own website, demonstrates that Respondent registered and uses the <pornaol.com> domain name in bad faith under Policy ¶ 4(b)(iv) by confusing customers and attracting traffic to its website in exchange for financial gain.
Complainant argues that Respondent’s constructive and actual knowledge of Complainant’s mark at the time Respondent registered the <pornaol.com> domain name is evidence of Respondent’s bad faith registration. Complainant alleges that its AOL well-known and famous mark constitute actual notice, and Complainant’s trademark registrations serve as constructive notice. The Panel declines to find Respondent’s bad faith based only on constructive knowledge under Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Nat. Arb. Forum Apr. 8, 2008) ("There is no place for constructive notice under the Policy."). The Panel finds, however, that Respondent had actual knowledge of Complainant’s AOL and AOL.COM marks based on the fame and notoriety associated with the marks, and concludes that Respondent registered the <pornaol.com> domain name in bad faith under Policy ¶ 4(a)(iii). See Immigration Equality v. Brent, FA 1103571 (Nat. Arb. Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii).").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <pornaol.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: December 5, 2012
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page