America Online, Inc. v. Lorna Kang
Claim Number: FA0309000193726
Complainant is America Online, Inc., Dulles, VA
(“Complainant”) represented by James R.
Davis II, of Arent Fox Kintner
Plotkin & Kahn, PLLC.
Respondent is Lorna Kang, Perak,
Malaysia (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <aolautos.com>,
<aolquickbuddy.com>, <aoldsl.com> and <netscaperadio.com>, registered
with Iholdings.Com, Inc. d/b/a Dotregistrar.Com.
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.
Judge
Harold Kalina (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on September 8, 2003; the Forum received a hard copy of the
Complaint on September 10, 2003.
On
September 9, 2003, Iholdings.Com, Inc. d/b/a Dotregistrar.Com confirmed by
e-mail to the Forum that the domain names <aolautos.com>,
<aolquickbuddy.com>, <aoldsl.com> and <netscaperadio.com> are
registered with Iholdings.Com, Inc. d/b/a Dotregistrar.Com and that Respondent
is the current registrant of the names. Iholdings.Com, Inc. d/b/a Dotregistrar.Com
has verified that Respondent is bound by the Iholdings.Com, Inc. d/b/a
Dotregistrar.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
September 12, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of October 2, 2003 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@aolautos.com,
postmaster@aolquickbuddy.com, postmaster@aoldsl.com and postmaster@netscaperadio.com
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
October 12, 2003, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed Judge Harold Kalina (Ret.) 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.
Complainant
requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <aolautos.com>, <aolquickbuddy.com>,
<aoldsl.com> and <netscaperadio.com> domain names
are confusingly similar to Complainant’s AOL, BUDDY LIST, and NETSCAPE marks.
2. Respondent does not have any rights or
legitimate interests in the <aolautos.com>,
<aolquickbuddy.com>, <aoldsl.com> and <netscaperadio.com> domain names.
3. Respondent registered and used the <aolautos.com>, <aolquickbuddy.com>, <aoldsl.com> and <netscaperadio.com> domain names
in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant and
its affiliated entity Netscape Communications Corp., is the owner of numerous
trademarks for the marks AOL, BUDDY LIST, and NETSCAPE. Complainant holds numerous registrations
for its marks with the U.S. Patent and Trademark Office (“USPTO”), including
Reg. Nos. 1,977,731 (AOL – June 4, 1996); 2,167,048 (BUDDY LIST – June 23,
1998) and 2,027,552 (NETSCAPE – December 31, 1996).
Respondent
registered the disputed domain names between November 5, 2001 and May 5,
2002. Respondent’s <aolquickbuddy.com>, <aoldsl.com>
and <netscaperadio.com> domain
names redirect Internet users to commercial websites and search engines. The <aolautos.com>
directs Internet users to commercal websites but not search engines. Respondent has a history of engaging in
cybersquatting. See e.g. Nat’l Wildlife Fed’n v. Kang, FA 170519 (Nat. Arb. Forum
Sept. 9, 2003) (Respondent was ordered to transfer the
<yourbigbackyard.com> and <rangerrickmagazine.com> domain names to
Complainant); see also Qwest Communications Int’l Inc. v. Kang,
FA 158161 (Nat. Arb. Forum July 8, 2003) (Respondent was ordered to transfer
the <wwwqwest.com> domain name to 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.
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
provides various Internet related services, including search engine
services. Complainant has established
rights in the AOL, BUDDY LIST and NETSCAPE marks through their registration
with the USPTO. See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept.
16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that
they are inherently distinctive and have acquired secondary meaning”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5,
2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this
assumption).
Respondent’s <aoldsl.com> and <aolautos.com> domain names are
confusingly similar to Complainant’s AOL mark because the domain names fully
incorporate the mark and merely add the generic acronym “dsl” and generic word
“autos.” Furthermore, Respondent’s <netscaperadio.com> domain name
is confusingly similar to Complainant’s NETSCAPE mark because the domain name
fully incorporates the mark and merely adds the generic word “radio.” Addition of generic words/acronyms to
another’s mark is insufficient to distinguish a domain name from another’s
mark. 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 Complainant combined with a
generic word or term); see also Pfizer, Inc. v. Papol Suger, D2002-0187
(WIPO Apr. 24, 2002) (finding that, because the subject domain name
incorporated the VIAGRA mark in its entirety, and deviated only by the addition
of the word “bomb,” the domain name was rendered confusingly similar to
Complainant’s mark).
Furthermore,
Respondent’s <aolquickbuddy.com>
domain name is confusingly similar to Complainant’s AOL and BUDDY LIST marks
because the domain name fully incorporates the AOL mark and combines it with
the generic term “quick” along with the “buddy” portion of Complainant’s BUDDY
LIST mark. Combining Complainant’s
marks along with a generic word is insufficient to circumvent the Panel from
finding the disputed domain name confusingly similar to Complainant’s
marks. See Nintendo of Am., Inc. v. Pokemon, D2000-1230 (WIPO Nov. 23,
2000) (finding confusing similarity where respondent combined Complainant’s
POKEMON and PIKACHU marks to form the <pokemonpikachu.com> domain name).
Respondent uses
the misleading domain names to redirect Internet users to commercial websites
and competing search engines. The Panel
presumes that Respondent receives “click-through-fees” from Internet vendors
whose websites are visited via Respondent’s domain names. Hence, the Panel concludes that Respondent
has attempted to commercially benefit from the unauthorized use of
Complainant’s marks which constitutes neither a bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair
use pursuant to Policy ¶ 4(c)(iii). See Yahoo! Inc. v. Web Master a/k/a MedGo,
FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (finding that Respondent’s use of a
confusingly similar domain name to operate a pay-per-click search engine, in
competition with Complainant, was not a bona fide offering of goods or
services); see also Black & Decker
Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002)
(holding that Respondent’s use of the disputed domain name to redirect Internet
users to commercial websites, unrelated to Complainant and presumably with the purpose
of earning a commission or pay-per-click referral fee did not evidence rights
or legitimate interests in the domain name); see also Bank of Am. Corp. v.
Out Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003) (holding
that Respondent’s use of infringing domain names to direct Internet traffic to
a search engine website that hosted pop-up advertisements was evidence that it
lacked rights or legitimate interests in the domain names).
Furthermore,
Respondent is not authorized or licensed to use or register domain names that
incorporate Complainant’s marks. The
WHOIS information fails to establish that Respondent is commonly known by the
disputed domain names. Therefore, the
Panel concludes that Respondent lacks 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 Tercent, Inc. v. Yi, FA 139720 (Nat.
Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information
implies that Respondent is ‘commonly known by’ the disputed domain name” as one
factor in determining that Policy ¶ 4(c)(ii) does not apply).
Also, due to
Respondent’s failure to refute the allegations of the Complaint by way of a
Response, the Panel concludes that Respondent lacks rights or legitimate
interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii). See
Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000)
(finding that by not submitting a Response, Respondent has failed to invoke any
circumstance which could demonstrate any rights or legitimate interests in the
domain name); see also 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).
It can be
inferred that Respondent had knowledge of Complainant’s marks because
Complainant’s marks have attained world-wide recognition through their use in
commerce, are registered with the USPTO, and the disputed domain names
systematically incorporate Complainant’s marks. Registration of domain names, despite knowledge of Complainant’s
rights, is evidence of bad faith registration pursuant to Policy ¶
4(a)(iii). See 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); see also Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18, 2000) (finding
that Respondent had actual and constructive knowledge of Complainant’s EXXON
mark given the worldwide prominence of the mark and thus Respondent registered
the domain name in bad faith); see also
Orange Glo Int’l v. Blume, FA 118313
(Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the
Principal Register of the USPTO, a status that confers constructive notice on
those seeking to register or use the mark or any confusingly similar variation
thereof”).
Furthermore,
Respondent uses the misleading domain names to redirect Internet users to
commercial websites and search engines that compete with Complainant. The Panel presumes that Respondent
commercially benefits via the misleading domain names by receiving
“click-through-fees.” Respondent’s use
of the disputed domain names constitutes bad faith pursuant to Policy ¶
4(b)(iv). See Kmart v. Khan, FA
127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from
its diversionary use of Complainant's mark when the domain name resolves to
commercial websites and Respondent fails to contest the Complaint, it may be
concluded that Respondent is using the domain name in bad faith pursuant to
Policy ¶ 4(b)(iv)); see also G.D. Searle & Co. v. Celebrex Drugstore,
FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered
and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because
Respondent was using the confusingly similar domain name to attract Internet
users to its commercial website); see
also Perot Sys. Corp. v. Perot.net,
FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain
name in question is obviously connected with Complainant’s well-known marks,
thus creating a likelihood of confusion strictly for commercial gain).
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <aolautos.com>,
<aolquickbuddy.com>, <aoldsl.com> and <netscaperadio.com> domain names
be TRANSFERRED from Respondent to
Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated:
October 24, 2003
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