AOL LLC v. John McLean
Claim Number: FA0703000944263
Complainant is AOL LLC (“Complainant”), represented by James
R. Davis of Arent Fox PLLC, 1050 Connecticut
Avenue, NW, Washington, DC 20036.
Respondent is John McLean (“Respondent”), 1239 Woodhill,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <aolvideosearch.com>, <aolvideoondemand.com>, <aolin2tv.com> and <aolin2tv.net>, registered with Go Daddy Software, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically March 21, 2007; the National Arbitration Forum received a hard copy of the Complaint March 21, 2007.
On March 21, 2007, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <aolvideosearch.com>, <aolvideoondemand.com>, <aolin2tv.com> and <aolin2tv.net> domain names are registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the names. Go Daddy Software, Inc. verified that Respondent is bound by the Go Daddy Software, Inc. registration agreement and thereby has 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 22, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 11, 2007, 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@aolvideosearch.com, postmaster@aolvideoondemand.com, postmaster@aolin2tv.com and postmaster@aolin2tv.net by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 13, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain names that Respondent registered, <aolvideosearch.com>, <aolvideoondemand.com>, <aolin2tv.com> and <aolin2tv.net>, are confusingly similar to Complainant’s AOL mark.
2. Respondent has no rights to or legitimate interests in the <aolvideosearch.com>, <aolvideoondemand.com>, <aolin2tv.com> and <aolin2tv.net> domain names.
3. Respondent registered and used the <aolvideosearch.com>, <aolvideoondemand.com>, <aolin2tv.com> and <aolin2tv.net> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, AOL LLC, is a
worldwide Internet service provider that operates a widely used interactive
online service that has millions of subscribers. Complainant has spent substantial sums of
money in developing and marketing its services.
In connection with its online services, Complainant registered the AOL
mark (Reg. No. 1,977,731 issued June 4, 1996) and AOL.COM mark (Reg. No.
2,325,291 issued March 7, 2000) with the United States Patent and Trademark
Office (“USPTO”). In March 2006,
Complainant launched a new broadband network, called IN2TV, which offers video
streaming for full-length television episodes.
Complainant announced its new network on November 14, 2005.
Respondent registered the <aolin2tv.net> and <aolin2tv.com> domain names November 15, 2005, and the <aolvideoondemand.com> and <aolvideosearch.com> domain names November 16, 2005. Respondent has offered to sell the disputed domain names as part of a package of “70 In2TV style Domain Names” on popular auction websites, with the opening bid starting at $100,000.
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."
Given 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 will draw such inferences as the Panel 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.”).
Paragraph 4(a) of the Policy requires Complainant to 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 established with extrinsic proof in this
proceeding that it has rights in the AOL mark pursuant to Policy ¶ 4(a)(i) through its
registration of the mark with the USPTO.
See Innomed Techs., Inc. v. DRP Servs.,
FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of
the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the
mark.”);
see also Vivendi Universal Games v.
XBNetVentures Inc., FA 198803
(Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal
trademark registrations establish Complainant's rights in the BLIZZARD mark.”).
The disputed domain names that Respondent registered, <aolin2tv.net> and <aolin2tv.com>, are confusingly
similar to Complainant’s AOL mark pursuant to Policy ¶ 4(a)(i) because the
domain names contain the AOL mark in its entirety, add the phrase “in2tv,” and
add a generic top-level domain (“.net” and “.com,” respectively). Because Complainant operates a broadband
network named IN2TV and has trademark rights in connection with its AOL mark,
the phrase has a direct relationship to Complainant’s business and fails to
sufficiently distinguish the domain names from the AOL mark under Policy ¶ 4(a)(i). See Am. Int’l Group, Inc. v. Ling
Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the
addition of the term “assurance,” to the complainant’s AIG mark failed to
sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i)
because the appended term related directly to the complainant’s business); see also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept.
22, 2000) (finding confusing similarity where the respondent’s domain name
combines the complainant’s mark with a generic term that has an obvious
relationship to the complainant’s business).
The disputed domain name, <aolvideoondemand.com>,
is confusingly similar to Complainant’s AOL mark pursuant to Policy ¶ 4(a)(i)
because the domain name contains the AOL mark in its entirety, adds the generic terms
“video,” “on” and “demand,” and adds the generic top-level domain
“.com.” Because Complainant uses its mark in connection with
on-demand video services, the terms have a direct and obvious relationship to
Complainant’s business. The addition of
generic terms to Complainant’s mark, especially terms that bear an obvious
relation to Complainant’s business, does not adequately distinguish
Respondent’s domain name from Complainant’s mark pursuant to Policy ¶
4(a)(i). See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22,
2000) (finding confusing similarity where the respondent’s domain name combines
the complainant’s mark with a generic term that has an obvious relationship to
the complainant’s business); see also
PG&E Corp. v. Anderson, D2000-1264 (WIPO Nov. 22, 2000) (finding that
“Respondent does not by adding the common descriptive or generic terms ‘corp’,
‘corporation’ and ‘2000’ following ‘PGE’, create new or different marks in
which it has rights or legitimate interests, nor does it alter the underlying
[PG&E] mark held by Complainant”).
Further, the disputed domain name, <aolvideosearch.com>, is confusingly
similar to Complainant’s AOL mark pursuant to Policy ¶ 4(a)(i)
because the domain name contains the AOL mark in its entirety, adds the generic terms
“video” and “search,” and adds the generic top-level domain “.com.” Because Complainant uses its mark in
connection with on-demand video services, which includes a means to search for
videos, the terms have a direct relationship to Complainant’s business. The addition of generic terms to
Complainant’s mark, which bear an obvious relation to Complainant’s business,
does not adequately distinguish Respondent’s domain name from Complainant’s
mark pursuant to the Policy ¶ 4(a)(i). See Space Imaging LLC v. Brownell,
AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the
respondent’s domain name combines the complainant’s mark with a generic term
that has an obvious relationship to the complainant’s business); see also PG&E Corp. v. Anderson,
D2000-1264 (WIPO Nov. 22, 2000) (finding that “Respondent does not by adding
the common descriptive or generic terms ‘corp’, ‘corporation’ and ‘2000’
following ‘PGE’, create new or different marks in which it has rights or
legitimate interests, nor does it alter the underlying [PG&E] mark held by
Complainant”).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent has no rights to or legitimate interests in the <aolvideosearch.com>, <aolvideoondemand.com>, <aolin2tv.com> and <aolin2tv.net> domain names. Because Complainant made a prima facie case in support of its allegations, the burden shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). Since Respondent failed to respond to the Complaint, the Panel assumes that Respondent does not have rights or legitimate interests in the disputed domain names. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that, where the complainant has asserted that respondent does not have rights or legitimate interests with respect to the domain name, it is incumbent on respondent to come forward with concrete evidence rebutting this assertion); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). Nevertheless, the Panel will examine the record to determine if Respondent has rights or legitimate interests under Policy ¶ 4(c).
Respondent offered to sell the disputed domain names on popular auction websites, with the opening bid starting at $100,000. Such use of disputed domain names does not constitute a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i), and it does not demonstrate a legitmate noncommercial or fair use of the domain names pursuant to Policy ¶ 4(c)(iii). See Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests where the respondent registered the domain name with the intention of selling its rights); see also Kinko’s Inc. v. eToll, Inc., FA 94447 (Nat. Arb. Forum May 27, 2000) (finding that the respondent has no rights or legitimate interests in the domain name where it appeared that the domain name was registered for ultimate use by the complainant).
Complainant asserts as well that
Respondent is not authorized or licensed to use Complainant’s AOL mark. Furthermore,
Respondent’s WHOIS information, as well as other information in the record,
does not suggest that Respondent is commonly known by the <aolvideosearch.com>, <aolvideoondemand.com>,
<aolin2tv.com> and <aolin2tv.net> domain
names. Therefore, the Panel finds that
Respondent is not commonly known by the disputed domain names under Policy ¶
4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum
Jan. 23, 2001) (finding that the respondent does not have rights in a domain
name when the respondent is not known by the mark); see also Wells Fargo & Co. v.
Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17,
2003) (“Given the WHOIS contact information for the disputed domain [name], one
can infer that Respondent, Onlyne Corporate Services11, is not commonly known
by the name ‘welsfargo’ in any derivation.”).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
Complainant also alleges that Respondent acted in bad faith
in registering and using domain names that contain in its entirety
Complainant’s protected mark. Despite
the fact that each of the disputed domain names contains Complainant’s
protected mark, Respondent made general offers to sell the disputed domain
names on auction web sites for $100,000.
The offer to sell contains information about Complainant and its
broadband television network. This
information supplied by Respondent supports an inference that Respondent
registered the <aolvideosearch.com>,
<aolvideoondemand.com>, <aolin2tv.com> and <aolin2tv.net>
domain names with full knowledge of Complainant’s rights in the AOL mark and
precisely because goodwill and value attaches to Complainant’s mark. The Panel finds this evidence to be
sufficient to support findings that Respondent registered and used the disputed
domain names in bad faith pursuant to Policy ¶ 4(b)(i). See
The Panel finds that Complainant satisfied 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 <aolvideosearch.com>, <aolvideoondemand.com>, <aolin2tv.com> and <aolin2tv.net> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: April 26, 2007.
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