America Online, Inc. v. N/A
Claim
Number: FA0406000288982
Complainant is America Online, Inc. (“Complainant”),
represented by James R. Davis, of Arent Fox, PLLC, 1050 Connecticut Avenue, NW, Washington, DC 20036. Respondent is N/A (“Respondent”), Glavpochtamt, Moscow, RU 101000.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <aolhome.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.
Hon.
Ralph Yachnin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on June 22, 2004; the Forum received a hard copy of the
Complaint on June 25, 2004.
On
June 23, 2004, Enom, Inc. confirmed by e-mail to the Forum that the domain name
<aolhome.com> is registered with Enom, Inc. and that Respondent is
the current registrant of the name. 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
June 29, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
July 19, 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@aolhome.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
July 27, 2004, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the Forum appointed Hon. Ralph Yachnin 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 <aolhome.com>
domain name is confusingly similar to Complainant’s AOL and AOL.COM marks.
2. Respondent does not have any rights or
legitimate interests in the <aolhome.com> domain name.
3. Respondent registered and used the <aolhome.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
AOL, Inc., is a global leader and provider of online services including search
engine services.
Complainant
holds trademark registrations with the United States Patent and Trademark
Office for the AOL mark (Reg. No. 1,984,337, issued July 2, 1996 and Reg. No.
1,977,731, issued June 4, 1996) and the AOL.COM mark (Reg. No. 2,325,291,
issued March 7, 2000).
Complainant
first used its AOL and AOL.COM marks in connection with its services in 1989
and 1992, respectively. Complainant has used its marks extensively and
continuously since that time. Complainant has invested substantial resources in
developing and marketing its services. Each year, millions of consumers utilize
Complainant’s services and products and millions more are exposed to
Complainant’s marks through advertising and promotional efforts. Thus, the AOL
and AOL.COM marks have become well known worldwide and the general public has
come to associate these marks with high quality and performance.
Complainant’s
main website is located at the <aol.com> domain name.
Respondent
registered the <aolhome.com> domain name on April 27, 2000 and is
using the domain name to redirect Internet users to commercial websites that
offer, among other things, online gambling, pop-up ads, travel and search
engine services, which are services also offered by 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.
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Complainant asserts that Respondent has no rights or legitimate interests
in the domain name. Due to Respondent’s failure to respond to the Complaint, it
is assumed that Respondent lacks rights and legitimate interests in the
<aolhome.com> domain name. The burden shifts to Respondent to show that
it does have rights or legitimate interests once Complainant establishes a prima
facie case pursuant to Policy ¶ 4(a)(ii). See G.D. Searle v. Martin
Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where
Complainant has asserted that Respondent has no rights or legitimate interests
with respect to the domain name it is incumbent on Respondent to come forward
with concrete evidence rebutting this assertion because this information is
“uniquely within the knowledge and control of the respondent”); see also 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, the burden shifts to Respondent to
provide credible evidence that substantiates its claim of rights and 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).
Furthermore, the Panel may accept all reasonable allegations and inferences in
the Complaint as true because Respondent has not submitted a Response. See 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.”); see also Vertical
Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum
July 31, 2000) (holding that Respondent’s failure to respond allows all
reasonable inferences of fact in the allegations of Complainant to be deemed
true).
Respondent is
using the <aolhome.com> domain name to redirect Internet
users to commercial websites that offer, among other things, online gambling
and search engine services, including search engine services offered by
Complainant. Respondent’s use of a domain name confusingly similar to
Complainant’s AOL and AOL.COM marks to redirect Internet users interested in
Complainant’s services and products to commercial websites that offer online
gambling and search engine services similar to Complainant’s is not a use in
connection with a bona fide offering of goods or services pursuant to Policy ¶
4(c)(i), or a legitimate noncommercial or fair use of the domain name pursuant
to Policy ¶ 4(c)(iii). See Imation Corp. v. Streut, FA 125759 (Nat. Arb.
Forum Nov. 8, 2002) (finding no rights or legitimate interests where Respondent
used the disputed domain name to redirect Internet users to an online casino); see
also U.S. Franchise Sys., Inc. v. Howell, FA 152457 (Nat. Arb. Forum May 6,
2003) (holding that Respondent’s use
of Complainant’s mark and the goodwill surrounding that mark as a means of
attracting Internet users to an unrelated business was not a bona fide offering
of goods or services); see also
MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no
rights or legitimate interests in the famous MSNBC mark where Respondent
attempted to profit using Complainant’s mark by redirecting Internet traffic to
its own website); see also Bank of Am. Corp. v. Out Island Props., Inc.,
FA 154531 (Nat. Arb. Forum June 3, 2003) (finding 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 name).
Moreover,
Respondent has offered no evidence, and there is no proof in the record,
suggesting that Respondent is commonly known by the <aolhome.com> domain
name. Thus, Respondent has not established rights or legitimate interests
in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See 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); see also Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests
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 Victoria’s Secret v. Asdak,
FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (finding sufficient proof that
Respondent was not commonly known by a domain name confusingly similar to
Complainant’s VICTORIA’S SECRET mark because of Complainant’s well-established
use of the mark); see also Nike,
Inc. v. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or
legitimate interests where one “would be hard pressed to find a person who may
show a right or legitimate interest” in a domain name containing Complainant's
distinct and famous NIKE trademark).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
intentionally registered and used the <aolhome.com> domain name
for commercial gain. Respondent’s domain name diverts Internet users wishing to
search under Complainant’s AOL and AOL.COM marks to Respondent’s commercial
websites, including online casinos, pop-up advertisements and search engines,
through the use of a domain name confusingly similar to Complainant’s marks.
Furthermore, Respondent is unfairly benefiting from the goodwill associated
with Complainant’s AOL and AOL.COM marks. Respondent’s practice of diversion,
motivated by commercial gain, through the use of a confusingly similar domain
name evidences bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See
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 State Fair of
Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding
bad faith where Respondent registered the domain name <bigtex.net> to
infringe on Complainant’s goodwill and attract Internet users to Respondent’s
website); see also Drs. Foster
& Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000)
(finding bad faith where Respondent directed Internet users seeking
Complainant’s site to its own website for commercial gain); see also Encyclopedia Britannica Inc. v. Shedon.com,
D2000-0753 (WIPO Sept. 6, 2000) (finding that Respondent violated Policy ¶
4(b)(iv) by using the domain name <britannnica.com> to hyperlink to a
gambling site); see also Mars,
Inc. v. Double Down Magazine, D2000-1644 (WIPO Jan. 24, 2001) (finding bad
faith under Policy ¶ 4(b)(iv) where Respondent linked the domain name
<marssmusic.com>, which is identical to Complainant’s mark, to a gambling
website).
Furthermore,
Respondent registered and used the <aolhome.com> domain name for
the primary purpose of disrupting Complainant’s business by redirecting
Internet traffic intended for Complainant to Respondent’s website that directly
competes with Complainant by offering search engine services similar to
Complainant’s services. Registration of a domain name for the primary purpose
of disrupting the business of a competitor is evidence of bad faith
registration and use pursuant to Policy ¶ 4(b)(iii). See Surface Protection Indus., Inc. v.
Webposters, D2000-1613 (WIPO Feb. 5, 2001) (given the competitive
relationship between Complainant and Respondent, Respondent likely registered
the contested domain name with the intent to disrupt Complainant's business and
create user confusion); see also Lubbock
Radio Paging v. Venture Tele-Messaging, FA 96102 (Nat. Arb. Forum Dec. 23,
2000) (concluding that domain names were registered and used in bad faith where
Respondent and Complainant were in the same line of business in the same market
area); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb.
Forum July 18, 2000) (finding Respondent acted in bad faith by attracting
Internet users to a website that competes with Complainant’s business).
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 <aolhome.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated:
August 6, 2004
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