America Online, Inc. v. Tommy Vercetti
Claim Number: FA0403000244091
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 Tommy Vercetti (“Respondent”),
P.O. Box 65, Kutztown, PA 19530.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <fuckaol.net>, registered with iHoldings.com,
Inc. d/b/a Dotregistrar.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.
Louis
E. Condon as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on March 5, 2004; the Forum received a hard copy of the
Complaint on March 8, 2004.
On
March 10, 2004, iHoldings.com, Inc. d/b/a Dotregistrar.com confirmed by e-mail
to the Forum that the domain name <fuckaol.net> is registered with
iHoldings.com, Inc. d/b/a Dotregistrar.com and that Respondent is the current
registrant of the name. 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
March 11, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
March 31, 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@fuckaol.net 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
April 9, 2004, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the Forum appointed Louis E. Condon 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <fuckaol.net>
domain name is confusingly similar to Complainant’s AOL mark.
2. Respondent does not have any rights or
legitimate interests in the <fuckaol.net> domain name.
3. Respondent registered and used the <fuckaol.net>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
America Online, Inc., began using the AOL mark in 1989 for its Internet-related
services. Complainant is the owner of several trademark registrations on the
Principal Register of the U.S. Patent and Trademark Office (“USPTO”) for the
AOL mark, including Reg. Nos. 1,977,731 and 1,984,337, which it registered on
June 4, 1996, and July 2, 1996, respectively. Complainant also operates a
website at the <aol.com> domain name.
Respondent
registered the <fuckaol.net> domain name on April 24, 2003. Respondent uses the disputed domain name as
a forum for discussion and to post pornographic content and links.
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
acquired rights to the AOL mark through registration with the USPTO and use in
commerce. 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).
The domain name
simply adds the word “fuck” to Complainant’s mark. Generally, a domain name that consists of a mark and a generic
word does not significantly distinguish itself from the mark. However, “fuck” may be analogous to “sucks”:
it may be a word that connotes greater distinction. In fact, the only case to examine the word “fuck” and its bearing
on similarity used an analogy to the word “sucks” for its analysis. See Koninklijke Phillips Elecs. v.
Snelling Domains Best, D2002-1041 (WIPO Dec. 16, 2002) (finding the
<fuckphilips.com> domain name to be confusingly similar to Complainant’s
PHILLIPS mark).
Courts and UDRP
Panels have addressed the issue of appending the term "-sucks" to
another’s trademark. See Lucent
Technologies, Inc. v. Lucentsucks.com, 95 F.Supp.2d 528 (E.D. Va. 2000)
(<lucentsucks.com>); Bally Total Fitness v. Faber, 29 F.Supp.2d
1161 (C.D. Cal. 1998) (<ballysucks.com>);
Wal-mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico, D2000-0477
(WIPO July 20, 2000) (<walmartsucks.com>) Cabela’s Inc. v.
Cupcake Patrol, FA 95080 (Nat. Arb. Forum Aug. 29, 2000)
(<cabelassucks.com>); Wal-Mart Stores, Inc. v. wallmartcanadasucks.com,
D2000-1104 (WIPO Nov. 23, 2000) (<wallmartcanadasucks.com>); Lockheed
Martin Corp. v. Parisi, D2000-1015 (WIPO Jan. 26, 2001)
(<lockheedmartinsucks.com> and <lockheedsucks.com>). In Lockheed, a majority of the Panel
held: “Both common sense and a reading
of the plain language of the Policy support the view that a domain name
combining a trademark with the word “sucks” or language clearly indicating that
the domain name is not affiliated with the trademark owner cannot be considered
confusingly similar to the trademark” Id; accord, Talk Radio Network
v. Fotuard, FA 155181 (Nat. Arb. Forum June, 24 2003).
However, in Cabela’s,
the Panel determined that "-sucks" domain names are not “immune from
scrutiny as being confusingly similar to trademarks to which they are appended.” Cabela’s Inc. v. Cupcake Patrol, FA
95080 (Nat. Arb. Forum Aug. 29, 2000) construed in Infospace, Inc. v.
Sunwave Communications, FA 198015 (Nat. Arb. Forum Nov. 10, 2003). “Each case must be considered in light
of the facts presented.” Cabela’s Inc.
v. Cupcake Patrol, FA 95080 (Nat. Arb. Forum Aug. 29, 2000) (finding
the disputed domain name <cabelassucks.com> confusingly similar to
Complainant's mark, “Cabela’s”); see, e.g., Infospace, Inc. v. Sunwave
Communications, FA 198015 (Nat. Arb. Forum Nov. 10, 2003); Wachovia
Corp. v. Flanders, D2003-0596 (WIPO
Sept. 19, 2003); Savin Corp. v. savinsucks.com, FA 103982 (Nat. Arb.
Forum Mar. 5, 2002).
In Claims where
Respondent has not responded, Panels have accepted Complainants’ assertions of
confusing similarity under the Policy. See
Quilogy, Inc. v. Ruddick, FA 134653 (Nat. Arb. Forum Jan. 9, 2003); see
also Diners Club Int’l v. SPS, FA 149414 (Nat. Arb. Forum April 21, 2003).
The test in Policy ¶ 4(a)(i) has a low threshold of proof. See Desktop Media, Inc. v. Desktop Media, Inc., FA 96815 (Nat. Arb.
Forum Apr. 12, 2001) (“[F]or the limited purposes of the domain name dispute
resolution process[,] a low threshold of proof is all that is required to meet
the first element ….”). All that Complainant need demonstrate
is that its mark is included in the domain name. See Nikon, Inc. and Nikon
Corp. v. Technilab, Inc., D2000-1774 (WIPO Feb. 26, 2000) (holding that
confusing similarity under the Policy is decided upon the inclusion of a
trademark in the domain name rather than upon the likelihood of confusion test
under U.S. trademark law); see also Magnum Piering, Inc. v. Mudjackers &
Wilson, D2000-1525 (WIPO Jan. 29, 2001) (holding that confusing similarity
under the Policy is decided upon the inclusion of a trademark in the domain
name rather than upon the likelihood of confusion test under U.S. trademark
law). Thus, since Respondent’s domain
name wholly incorporates Complainant’s AOL mark and merely adds the word
“fuck,” the Panel finds that the domain name is confusingly similar to
Complainant’s mark for purposes of Policy 4(a)(i).
Therefore, the
Panel finds for Complainant under Policy ¶ 4(a)(i).
When
Complainant asserts a prima facie case against Respondent, the burden of
proof shifts to Respondent to show that it has rights or legitimate interests
pursuant to Policy ¶ 4(a)(ii).
Respondent has failed to submit a Response. Therefore, the Panel infers
that Respondent lacks rights and legitimate interests in the disputed domain
name. 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 in respect of the
domain, the burden shifts to Respondent to provide credible evidence that
substantiates its claim of rights and legitimate interests in the domain name);
see also 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).
Furthermore,
because Respondent has not submitted a Response, it is appropriate for the
Panel to accept all reasonable allegations and inferences in the Complaint as
true. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095
(Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable
inferences of fact in the allegations of the Complaint to be deemed true); see
also Charles Jourdan Holding AG v.
AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel
to draw adverse inferences from Respondent’s failure to reply to the
Complaint).
Complainant
alleges that Respondent is using the disputed domain name to promote pornography. Using Complainant’s mark to promote
pornography is neither a bona fide offering of goods or services, pursuant to
Policy ¶ 4(c)(i), nor a legitimate noncommercial of fair use of the domain
name, pursuant to Policy ¶ 4(c)(iii). See
Isleworth Land Co. v. Lost In Space, SA, FA 117330 (Nat. Arb. Forum Sept.
27, 2002) (finding that Respondent’s use of its domain name to link
unsuspecting Internet traffic to an adult orientated website, containing
pornography, did not constitute a connection with a bona fide offering of goods
or services or a noncommercial or fair use); see also Microsoft Corp. v.
Horner, D2002-0029 (WIPO Feb. 27, 2002) (holding that Respondent’s use of
Complainant’s mark to “define the location of Respondent’s website on the
Internet” and to host a pornographic website was not a legitimate noncommercial
or fair use of the domain name).
The
Record, including the WHOIS registration information, lacks any evidence which
would indicate that Respondent is commonly known by the domain name. The Panel infers that Respondent does not
have legitimate interests in the domain name pursuant to Policy ¶
4(c)(ii). See 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); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23,
2001) (finding that Respondent does not have rights in a domain name when
Respondent is not known by the mark).
Therefore,
the Panel finds for Complainant under Policy ¶ 4(a)(ii).
Respondent is
using the disputed domain name to peddle pornography. Appropriating someone else’s mark to promote pornography is bad
faith registration and use pursuant to Policy ¶ 4(a)(iii). See Six Continents Hotels, Inc. v. Nowak,
D2003-0022 (WIPO Mar. 4, 2003) (stating that “whatever the motivation of
Respondent, the diversion of the domain name to a pornographic site is itself
certainly consistent with the finding that the Domain Name was registered and
is being used in bad faith”); see also Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding
that absent contrary evidence, linking the domain names in question to graphic,
adult-oriented websites is evidence of bad faith).
Therefore, the
Panel finds for Complainant under Policy ¶ 4(a)(iii).
Complainant
having established all three elements required under the ICANN Policy, the
Panel concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <fuckaol.net> domain name be TRANSFERRED
from Respondent to Complainant.
Louis E. Condon, Panelist
Dated:
April 23, 2004