America Online, Inc. v. Adosi Ltd. a/k/a
This Name Is For Sale - Make An Offer To: bdomains@yahoo.com
Claim
Number: FA0402000237570
Complainant is America Online, Inc. (“Complainant”),
represented by James R. Davis, II, of Arent Fox PLLC, 1050
Connecticut Avenue, NW, Washington, DC 20036.
Respondent is Adosi Ltd. a/k/a This Name Is For Sale - Make An Offer To: bdomains@yahoo.com (“Respondent”), GPO Box 12295 Central,
Hong Kong.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <icqhelp.com>, <icqplugin.com>,
<icqw.com>, <aoloffers.com>, <aolfavorite.com>,
<aoladdress.com>, and <buddlist.com>, registered with
Enom, Inc.
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.
The
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on February 19, 2004; the Forum received a hard copy of the
Complaint on February 23, 2004.
On
February 23, 2004, Enom, Inc. confirmed by e-mail to the Forum that the domain
names <icqhelp.com>, <icqplugin.com>, <
icqw.com>, <aoloffers.com>, <aolfavorite.com>,
<aoladdress.com>, and <buddlist.com> are registered
with Enom, Inc. and that Respondent is the current registrant of the names. Enom,
Inc. has verified that Respondent is bound by the Enom, Inc. 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
February 23, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of March 15, 2004 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@icqhelp.com, postmaster@icqplugin.com, postmaster@icqw.com,
postmaster@aoloffers.com, postmaster@aolfavorite.com, postmaster@aoladdress.com,
and postmaster@buddlist.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
March 23, 2004, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed the Honorable Charles K.
McCotter, Jr. (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 <icqhelp.com>, <icqplugin.com>,
<icqw.com>, <aoloffers.com>, <aolfavorite.com>,
<aoladdress.com>, and <buddlist.com> domain names are
confusingly similar to Complainant’s AOL family of marks.
2. Respondent does not have any rights or
legitimate interests in the <icqhelp.com>, <icqplugin.com>,
<icqw.com>, <aoloffers.com>, <aolfavorite.com>,
<aoladdress.com>, and <buddlist.com> domain names.
3. Respondent registered and used the <icqhelp.com>,
<icqplugin.com>, <icqw.com>, <aoloffers.com>,
<aolfavorite.com>, <aoladdress.com>, and <buddlist.com>
domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
America Online, Inc., is the holder of numerous trademark registrations
worldwide for its AOL, ICQ and BUDDY LIST marks (collectively the “AOL
marks”). Specifically, Complainant
holds Reg. No. 2,264,332 (registered on July 27, 1999) and Reg. No. 2,167,048
(registered on June 23, 1998) with the United States Patent and Trademark
Office (“USPTO”) for its BUDDY LIST mark.
Complainant holds USPTO Reg. No. 2,411,657 (registered on December 12,
2000) for its ICQ mark. In addition,
Complainant holds USPTO Reg. No. 1,977,731 (registered on June 4, 1996) for its
AOL mark. Complainant also holds USPTO
Reg. No. 2,325,291 (registered on March 7, 2000) and Reg. No. 2,325,292
(registered on March 7, 2000) for its AOL.COM mark.
Complainant and
its predecessors-in-interest have used the AOL marks in interstate and
international commerce in connection with the advertising and sale of
Complainant’s computer and Internet-related goods and services. Oftentimes, Complainant uses its AOL marks
in connection with other words to describe various services that it provides,
such as “ICQ Help.” Specifically,
Complainant uses its AOL marks at its portal website located at the
<aol.com> domain name to promote its goods and services. Every year millions of Complainant’s
customers worldwide obtain goods and services offered under the AOL marks, and
millions more are exposed to said marks through advertising and promotion.
Respondent
registered the <icqw.com> domain name on June 1, 2001, the <icqhelp.com>
domain name on July 2, 2001, the <icqplugin.com> domain name on
December 7, 2001, the <aolfavorite.com> and the <buddlist.com>
domain names on January 16, 2002, the <aoladdress.com> domain name
on January 20, 2002, and the <aoloffers.com> domain name on
February 3, 2002.
Respondent is
using the domain names to route Internet users to commercial websites that
promote and provide links to third-party services, many of which compete
directly with Complainant’s services.
Respondent also offers to sell the domain names in the WHOIS
record. Specifically, in the WHOIS
contact information for each of the domain names, Respondent identifies its
administrative contact and billing contact as “This Name is For Sale…” and
“Make an Offer for This Domain Contact: bdomains@yahoo.com,” or a variation
thereof.
Complainant has
not licensed or otherwise authorized Respondent to use its AOL marks.
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 has
established rights in the AOL, ICQ and
BUDDY LIST marks through registration of the marks 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
merely added a generic or descriptive word to Complainant’s ICQ and AOL marks
in its <icqhelp.com>, <icqplugin.com>, <aoloffers.com>,
<aolfavorite.com>, and <aoladdress.com> domain
names. The mere addition of a generic
or descriptive word does not distinguish the domain names from Complainant’s
famous marks because the dominant element of the domain names continues to be
Complainant’s mark. Consequently, the
Panel concludes that the <icqhelp.com>,
<icqplugin.com>, <aoloffers.com>, <aolfavorite.com>,
and <aoladdress.com> domain names are confusingly similar to
Complainant’s ICQ and AOL marks under Policy ¶ 4(a)(i). 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 Am.
Online, Inc. v. Anytime Online Traffic School, FA 146930 (Nat. Arb. Forum
April 11, 2003) (finding that Respondent’s domain names, which incorporated Complainant’s entire mark and
merely added the descriptive terms “traffic school,” “defensive driving,” and
“driver improvement” did not add any distinctive features capable of overcoming
a claim of confusing similarity); see also Yahoo! Inc. v. Zuccarini, D2000-0777 (WIPO Oct. 2, 2000) (finding
the registration and use of multiple domain names incorporating the distinctive
and famous YAHOO!, YAHOOLIGANS!, and GEOCITIES marks, together with generic
words such as ‘chat’ and ‘financial’ to be confusingly similar to Complainant’s
marks and likely to mislead Internet users into believing that products and
services offered by Respondents are being sponsored or endorsed by YAHOO! or
GeoCities, given the similarity of the names and products and services
offered).
Respondent’s <icqw.com>
and <buddlist.com> domain names are common misspellings of
Complainant’s ICQ and BUDDY LIST marks.
Thus, the Panel finds that the <icqw.com> and <buddlist.com>
domain names are not sufficiently distinguishable from Complainant’s ICQ and
BUDDY LIST marks pursuant to Policy ¶ 4(a)(i).
See Victoria’s Secret v.
Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling
words and adding letters to words, Respondent does not create a distinct mark
but nevertheless renders the domain name confusingly similar to Complainant’s
marks); see also Am. Online, Inc.
v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding
that <oicq.net> and <oicq.com> are confusingly similar to
Complainant’s mark, ICQ); see also State
Farm Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730 (Nat. Arb. Forum
June 15, 2000) (finding that the domain name <statfarm.com> is confusingly
similar to Complainant’s STATE FARM mark).
Accordingly, the
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent has
not submitted any evidence to the Panel in response to the Complaint. As a result, there is no evidence
demonstrating that Respondent has any rights or legitimate interests in the <icqhelp.com>,
<icqplugin.com>, <icqw.com>, <aoloffers.com>,
<aolfavorite.com>, <aoladdress.com>, and <buddlist.com>
domain names and the Panel accepts all of Complainant’s allegations as
true. Accordingly, the Panel presumes
that Respondent lacks rights and legitimate interests in the domain names. 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 with respect to the domain name, the
burden shifts to Respondent to provide credible evidence that substantiates its
claim of rights and legitimate interests in the domain name); see also
Bayerische Motoren Werke AG v. Bavarian AG, FA110830 (Nat. Arb. Forum June
17, 2002) (finding that in the absence of a Response the Panel is free to make
inferences from the very failure to respond and assign greater weight to
certain circumstances than it might otherwise do); 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 is
not licensed or otherwise authorized to use Complainant’s AOL marks. In addition, nothing in the WHOIS contact
information for any of the domain names indicates that Respondent has been
commonly known by the domain names. As
there is no evidence before the Panel to the contrary, the Panel concludes that
Respondent has not been commonly known by the domain names. See RMO, Inc. v. Burbridge, FA 96949
(Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require
a showing that one has been commonly known by the domain name prior to
registration of the domain name to prevail"); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no
rights or legitimate interests where (1) Respondent is not a licensee of
Complainant; (2) Complainant’s prior rights in the domain name precede
Respondent’s registration; (3) Respondent is not commonly known by the domain
name in question); see also Foot Locker Retail, Inc. v. Bruce Gibson, FA 139693 (Nat.
Arb. Forum Feb. 4, 2003) (stating that “[d]ue to the fame of Complainant’s FOOT LOCKER family
of marks…and the fact that Respondent’s WHOIS information reveals its name to
be “Bruce Gibson,” the Panel infers that Respondent was not “commonly known by”
any of the disputed domain names prior to their registration, and concludes
that Policy
¶ 4(c)(ii) does not apply to
Respondent”).
Respondent is
using the domain names to direct Internet users to websites that promote and
offer links to Complainant’s competitors’ websites. Thus, the Panel finds that Respondent is not using the domain
names for a bona fide offering of goods or services pursuant to Policy ¶
4(c)(i) or for a legitimate noncommercial or fair use pursuant to Policy ¶
4(c)(iii). See Am. Online, Inc. v. Fu, D2000-1374 (WIPO
Dec. 11, 2000) (finding that “[I]t would be unconscionable to find a bona fide
offering of services in a respondent’s operation of web-site using a domain
name which is confusingly similar to the Complainant’s mark and for the same
business”); Am. Online Inc. v. Shenzhen
JZT Computer Software Co., D2000-0809 (WIPO Sept. 6, 2000) (finding that
Respondent’s operation of a website offering essentially the same services as
Complainant and displaying Complainant’s mark was insufficient for a finding of
bona fide offering of goods or services).
Respondent’s
lack of rights and legitimate interests in the domain names is furthered by the
fact that Respondent registered the names with the intent to sell them, as
evidenced by Respondent’s WHOIS contact information. Consequently, the Panel finds that Respondent lacks rights and
legitimate interests in the domain names pursuant to Policy
¶ 4(a)(ii). See Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083
(Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests
where Respondent registered the domain name with the intention of selling its
rights); see also 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).
Accordingly, the
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Since Respondent
incorporates Complainant’s marks in their entirety in its domain names, it is
likely that visitors will falsely believe that Complainant endorses or is
affiliated with Respondent or the third-party services promoted at Respondent’s
website. Thus, the Panel finds that
Respondent is using the domain name in 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 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); see also Am. Online, Inc.
v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding
bad faith where Respondent registered and used an infringing domain name to
attract users to a website sponsored by Respondent).
Furthermore, Respondent’s
WHOIS contact information which lists the administrative and billing contact
as, “This Name is For Sale” and “Make an Offer for This Domain Contact:
bdomains@yahoo.com,” or a variation thereof, clearly indicates that Respondent
registered the domain names primarily for the purpose of selling the domain
name registrations. Thus, the Panel
finds that Respondent registered and used the domain names in bad faith
pursuant to Policy ¶ 4(b)(i). See Euromarket Designs, Inc. v. Domain For Sale
VMI, D2000-1195 (WIPO Oct. 26, 2000) (finding “the manner in which the
Respondent chose to identify itself and its administrative and billing contacts
both conceals its identity and unmistakably conveys its intention, from the
date of the registration, to sell rather than make any use of the disputed
domain name”); see also Parfums
Christain Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding bad
faith where Respondent’s WHOIS registration information contained the words,
“This is domain name is for sale”).
Accordingly, 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 <icqhelp.com>, <icqplugin.com>, <icqw.com>,
<aoloffers.com>, <aolfavorite.com>, <aoladdress.com>,
and <buddlist.com> domain names be TRANSFERRED from
Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated:
March 29, 2004
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