National Arbitration Forum

 

DECISION

 

AOL LLC v. AIM Profiles

Claim Number: FA0704000964479

 

PARTIES

Complainant is AOL LLC (“Complainant”), represented by James R. Davis, of Arent Fox PLLC, 1050 Connecticut Avenue, NW, Washington, DC 20036.  Respondent is AIM Profiles (“Respondent”), 380 N 1020 E#112, Provo, UT 84606.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <aimprofiles.com>, registered with Go Daddy Software, Inc.

 

PANEL

The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.

 

Beatrice Onica Jarka as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on April 18, 2007; the National Arbitration Forum received a hard copy of the Complaint on April 19, 2007.

 

On April 19, 2007, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <aimprofiles.com> domain name is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name.  Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, 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 April 20, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 10, 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@aimprofiles.com by e-mail.

 

A timely Response was received and determined to be complete on April 27, 2007.

 

 

On May 7, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Beatrice Onica Jarka as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

 

Complainant contends that:

 

·        The disputed domain name is confusingly similar and nearly identical to the AIM mark, which has been used and registered by Complainant for several years in connection to its well-known instant messaging services; the mere addition of the generic term “profile” is insufficient to differentiate the disputed domain name, which comprises the mark AIM and the said generic term from Complainant’s mark;

·        Respondent has no rights or legitimate interests in the disputed domain name, as Respondent is an individual that is currently attending college and is not commonly known by the disputed domain name and he is using the domain name to direct consumers to its website by taking advantage of Complainant’s AIM mark.  In addition, even after the modification made by Respondent to the website to which the disputed domain name resolves, which happened in April 2007, the actual website still contains reference to the old website;

·        Respondent has registered and used the disputed domain name in bad faith, as he knew about Complainant’s registered and common law rights in the AIM marks;

·        Respondent has registered or acquired the disputed domain name in bad faith for the purpose of selling, renting or otherwise transferring it to Complainant or to a third party interested;

·        Respondent registered and used the disputed domain name in bad faith in an attempt to disrupt Complainant’s business;

·        Respondent has attempted to attract for commercial gain Internet users to his website or other online location by creating a likelihood of confusion with Complainant’s mark, as to the source, sponsorship, affiliation or endorsement.

 

B. Respondent

 

            Respondent answers to Complainant’s contentions as follows:

 

·        The domain is clearly not identical or confusingly similar; “aim” is not used as an acronym, but as a dictionary word.  “Profiles” is not used at all, but separated into “PRO” for professional, and “files” for file storage.  This is accented on the website by having a bull’s-eye as part of the logo, and PRO and files labeled differently;

·        The registrant contact details showing “AIM Profiles” as the name is an unfortunate mistake, which shall be corrected;

·        Respondent clearly has rights and legitimate interests in respect of the domain name, as the domain name has been legally registered and paid for every year since 2001.  Since its registration, the domain has been legitimately used by Respondent and there was no intention to create confusion with Complainant or to sell for a profit.  Respondent shows a legitimate interest in the website, and keeping it away from trademark infringements, by the changes he has made to the website, from the first letter received from Complainant; 

·        The disputed domain name has clearly not been registered and used in bad faith,

(i.)                As the current website does not have anything to do with Complainant, AIM, or instant messaging. 

(ii.)              Respondent did indeed offer to sell the domain name at an appropriate price in response to Complainant’s initial request.  It was an attempt to amicably solve any dispute. 

(iii.)             Respondent also did indeed mention his right to sell the domain to a third party if that ever came up, but he added in his e-mail, “If I sell the domain with any website associated with it, I will make sure I am selling it to somebody who does not intend to use the AIM mark.  If I don’t sell the domain and just let it go, I will transfer it to AOL.” 

(iv.)            There is a link on <aimprofiles.com> to the website <altprofiles.com>.  The link is there only so that previous users of the website before the changes would be able to find the new website under the new domain. 

 

FINDINGS

Complainant is AOL LLC, one of the world’s largest and most well-known interactive online service providers with millions of subscribers in the United States and many more millions worldwide.  Complainant has been holding the AIM mark and family of marks for a long time, some before the registration of the disputed domain name.  Respondent has registered and has used for several years the disputed domain name, which is similar with Complainant’s mark for a service in connection to the users on Complainant’s AIM service and obviously, AIM mark and family of marks.  The modifications to the website performed by Respondent after the cease and desist Complainant’s letter have not changed the situation, as Respondent is still using the disputed domain name in order to take advantage of the AIM mark belonging to Complainant.  

 

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”

 

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;

(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.

 

Identical and/or Confusingly Similar

 

Complainant has established rights in the AIM mark through its use and federal trademark registrations for purposes of Policy ¶ 4(a)(i).  See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also VICORP Rests., Inc. v. Triantafillos, FA 485933 (Nat. Arb. Forum July 14, 2005) (“Complainant has established rights in the BAKERS SQUARE mark by registering it with the United States Patent and Trademark Office (“USPTO”).”).

 

Respondent has failed to differentiate the <aimprofiles.com> domain name from Complainant’s registered AIM mark by merely adding the term “profiles.”  Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s AIM mark under Policy ¶ 4(a)(i).  See Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark); see also Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (“CHANEL, the salient feature of the Domain Names, is identical to a mark in which Complainant has shown prior rights.  The addition of the generic term, “perfumes” is not a distinguishing feature, and in this case seems to increase the likelihood of confusion because it is an apt term for Complainant’s business.”).

 

Rights or Legitimate Interests

 

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the <aimprofiles.com> domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.

 

It is the opinion of the Panel that Complainant has succeeded in doing so and Respondent failed to rebut Complainant’s showing.

 

Complainant argued and it was confirmed by Respondent that even though the WHOIS information lists the registrant of the <aimprofiles.com> domain name as “AIM Profiles,” there is no other evidence in the record indicating that Respondent is commonly known by the domain name in dispute.  See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”); see also Yahoo! Inc. v. Dough, FA 245971 (Nat. Arb. Forum May 5, 2004) (finding that although “the WHOIS information for the <yasexhoo.com> domain name states that the registrant is YASEXHOO . . . this alone is insufficient to show that Respondent is commonly known by the domain name.”). 

 

Complainant also asserts that it has not authorized or licensed Respondent to register or use a domain name incorporating any variation of Complainant’s AIM mark.  The fact was not refuted by Respondent in its Response.

 

Complainant asserts that until it contacted Respondent, Respondent was using the <aimprofiles.com> domain name in association with Complainant’s instant messaging service under the AIM mark.  After Complainant informed Respondent of its infringing use, Respondent allegedly changed the content of the website but still posted a link directing Internet users to the <altprofiles.com> domain name, which is virtually identical to the old website Respondent posted at the <aimprofiles.com> domain name.  This cannot represent in the Panel’s opinion evidence that Respondent has used the disputed domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that the respondent’s commercial use of a confusingly similar domain name suggests that the respondent lacks rights or legitimate interests in the disputed domain name).

 

In addition, the assertions of Respondent in the Response and in the exhibited correspondence with Complainant, made in connection to the modifications operated to the website where the disputed domain name resolves, as to his continuous use of the disputed domain name for another six months “in order to take advantage of any remnant search engine traffic,” by maintaining a link to the old website, are evidence supporting the intent of Respondent to still earn money on the former content of the website and implicitly on Complainant’s mark goodwill.  Such intention is vitiating any preparations to use the disputed domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).

 

Registration and Use in Bad Faith

 

Respondent has registered and used the disputed domain name in bad faith.

           

As Complainant has extensively used the AIM mark and family of marks before the registration of the disputed domain name by Respondent, it cannot be disputed that the registration of the disputed domain name was made with actual knowledge of Complainant’s mark.  The initial content of the website to which the disputed domain name resolves which was used for more than six years is further evidence of the knowledge by Respondent of Complainant’s AIM mark.  Such knowledge together with the use of the disputed domain name to sell services competing with those of Complainant and strictly connected with the use of the AIM services represent in the opinion of the Panel bad faith registration and use by Respondent.

 

As mentioned at the previous point findings, the assertions of Respondent in the Response and in exhibited correspondence with Complainant, made in connection to the modifications operated to the website where the disputed domain name resolves, as to his continuous use of the disputed domain name for another six months “in order to take advantage of any remnant search engine traffic,” by maintaining a link to the old website, are evidence supporting the intent of Respondent to still earn money on the former content of the website and implicitly on Complainant’s mark goodwill and this, also, constitutes bad faith use of the disputed domain name.

 

In addition there are also several other facts that indicate bad faith registration and use under the Policy as:

-         The fact that Respondent has offered to sell the <aimprofiles.com> domain name to Complainant if Complainant makes an appropriate offer, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(i).  See Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where the respondent offered domain names for sale); see also Banca Popolare Friuladria S.p.A. v. Zago, D2000-0793 (WIPO Sept. 3, 2000) (finding bad faith where the respondent offered the domain names for sale).

-         The fact that Respondent is diverting Internet users interested in Complainant’s instant messaging products and services to Respondent’s own website at the <aimprofiles.com> domain name, which offers products and services Internet users can utilize when using Complainant’s instant messaging services which is disrupting Complainant’s business and constitutes bad faith under Policy ¶ 4(b)(iii).  See Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)); see also Marriott Int’l, Inc. v. MCM Tours, Inc., FA 444510 (Nat. Arb. Forum May 6, 2005) (“The Respondent is a travel agency and thus operates in the same business as the Complainant.  The parties can therefore be considered as competitors.  The Panel thus finds that the Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor, which constitutes evidence of registration and use in bad faith under Policy 4(b)(iii).”).

-         The fact that Respondent is diverting unsuspecting Internet users to its own website for commercial gain, and that it is taking advantage of the likelihood of confusion Internet users may face when they encounter Respondent’s website offering products and services related to Complainant’s instant messaging service under the AIM mark but that Complainant has not endorsed, which constitutes bad faith registration and use under Policy ¶ 4(b)(iv).  See MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme); see also AOL LLC v. iTech Ent, LLC, FA 726227 (Nat. Arb. Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <aimprofiles.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Beatrice Onica Jarka ,

Panelist
Dated: May 20, 2007

 

 

 

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