National Arbitration Forum

 

DECISION

 

AOL LLC v. Andrew Macnamara

Claim Number: FA0906001267812

 

PARTIES

Complainant is AOL LLC (“Complainant”), represented by James R. Davis, of Arent Fox LLP, Washington, D.C., USA.  Respondent is Andrew Macnamara (“Respondent”), United Kingdom.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <aol4.me>, registered with GoDaddy.com, Inc.

 

PANEL

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

 

Nathalie Dreyfus as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on June 11, 2009; the National Arbitration Forum received a hard copy of the Complaint on June 12, 2009.

 

On June 11, 2009, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <aol4.me> domain name is registered with GoDaddy.com, Inc. and that the Respondent is the current registrant of the name.  GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, 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 16, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 6, 2009 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@aol4.me by e-mail.

 

Respondent's Response was received in electronic copy only on July 9, 2009.  However, in that the electronic copy was received subsequent to the Response deadline, the Response is considered deficient under ICANN Rule 5.

On July 14, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Nathalie Dreyfus as Panelist.

 

RELIEF SOUGHT

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

 

PARTIES’ CONTENTIONS

A.     Complainant

 

According to Complainant, he started to use the trademark AOL at least as early as 1989 and the trademark AOL.COM in 1992, in connection with computer online services and other Internet-related services.  Complainant has continuously used the trademark and trade name AOL in commerce in the United States and throughout the world since that time. 

 

Complainant asserts that he has invested substantial sums of money in developing and marketing its services and marks.  In his opinion, as a result, the AOL mark is one of the most readily recognized and famous marks used on the Internet

 

            Complainant also contends that with millions of registered users, AOL operates one of the most widely-used interactive online service in the world and each year millions of AOL customers worldwide obtain services offered under the AOL and AOL.COM marks.

 

Respondent registered the disputed domain name on July 27, 2008.

 

Complainant has submitted evidence that he is the holder of several trademark registrations worldwide for the marks AOL and AOL.COM, including:

-       U.S. trademark registration No. 1,977,731 registered on June 4, 1996 covering classes 35, 36 and 42;

-       U.S. trademark registration No. 1,984,337 registered on July 2, 1996 covering class 9;

-       U.S. trademark registration No.  2,325,291 registered on March 7, 2000 covering class 38;

-       U.S. trademark registration No.  2,325, 292 registered on March 7, 2000 covering class 42;

-       European Community trademark registration No. 118547 registered on May 21, 1998 covering classes 9, 16, 35, 38 and 42.

 

In an attempt to resolve this matter amicably, counsel for AOL contacted Respondent via hard copy letter and email.  Respondent answered that he refused to transfer the domain name but was prepared to sell it. 

 

The disputed domain name leads internet users to a parking page provided by GoDaddy and displaying advertising banners directing users to GoDaddy services such as email or domain hosting.

 

Complainant contends the following:

 

-         the domain name <aol4.me> is confusingly similar to Complainant’s trademark;

-         Respondent does not have any rights or legitimate interests in the domain name;

-         Respondent registered and uses the domain name in bad faith.

 

B.     Respondent

 

Respondent’s Response was submitted in electronic copy only after the Response deadline.  Thus, the National Arbitration Forum does not consider the Response to be in compliance with ICANN Rule 5. 

 

As a consequence, the Panel cannot take this Response into consideration (See Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO Mar. 4, 2003).

 

FINDINGS

 

Complainant has been doing business with the trademark and trade name AOL since 1989. Complainant has spent substantial time, efforts and funds to develop the good will associated with the trade names and trademarks AOL and AOL.COM.

 

AOL has a national and international presence and owns AOL trademarks and has also been operating several websites such as <aol.com > or <myaol.com> since 1988 to market its products and services.

 

Respondent’s <aol4.me> domain name was registered on July 27, 2008 and currently resolves to a GoDaddy Parking Page displaying advertising banners on various GoDaddy services such as email or domain hosting.

 

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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2)   the 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 asserts its rights in the US and CTM AOL and AOL.COM marks (Reg. No.1,977,731 registered on June 4, 1996; Reg. No.1,984,337 registered on July 2, 1996; Reg. No. 2,325,291 registered on March 7, 2000; Reg. No.  2,325, 292 registered on March 7, 2000; Reg. No.118547, registered on May 21, 1998). 

 

However, Complainant has not presented evidence that the US trademarks No. 1,977,731 and 1,984,337 and the CTM No. 118547 are  still valid as no proof of renewal has been provided. In accordance with paragraph 10(a) of the Rules, the Panel considers itself competent to independently obtain additional evidence from the Internet in order to clarify this issue (see Société des Produits Nestlé SA v. Telmex Management Services, WIPO Case No. D2002‑0070).  On July 21, 2009, the Panel checked both the USPTO and OHIM databases available online and found that they all had been duly renewed.

 

The Panel considers that Complainant has sufficiently established rights in the AOL mark under Policy ¶ 4(a)(i) through its several registrations of the mark with the USPTO.  See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a Complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the Complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”).

 

Respondent’s <aol4.me> domain name contains Complainant’s entire AOL mark, adds the number “4,” and adds the generic top-level domain “.me.”  Complainant contends that the disputed domain name is confusingly similar to its AOL mark. 

 

Despite the addition of the number “4”, the Panel finds that the AOL trademark remains the dominant portion of the disputed domain name.

 

Consequently, the Panel finds that the <aol4.me> domain name is confusingly similar to Complainant’s AOL mark under Policy ¶ 4(a)(i).  See Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“The fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks”); see also Am. Online Inc. v. Chinese ICQ Network, D2000-0808 (WIPO Aug. 31, 2000) (finding that the addition of the numeral 4 in the domain name <4icq.com> does nothing to deflect the impact on the viewer of the mark ICQ and is therefore confusingly similar); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).

 

Therefore the disputed domain name is confusingly similar to Complainant’s marks under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the Respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light.  If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).

 

First, Complainant states that Respondent is not commonly known by the disputed domain name nor is he licensed or authorized to use the AOL mark in this manner. 

 

Complainant asserts that Respondent’s <aol4.me> domain name resolves to a website that promotes services that directly compete with Complainant.  According to the Panel, the disputed domain name promotes Complainant’s competitor and therefore cannot be considered as being 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).  See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”); see also Am. Int’l Group, Inc. v. Benjamin, FA 944242 (Nat. Arb. Forum May 11, 2007) (Panelist Tyrus R. Atkinson, Jr., dissenting) (finding that the Respondent’s use of a confusingly similar domain name to advertise real estate services which competed with the Complainant’s business did not constitute 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)).

 

Respondent is listed in the WHOIS information as “Andrew Macnamara.” The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).  See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the Respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Tercent Inc. v. Lee 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).

 

Moreover, the fact that Respondent, in corresponding with Complainant, made a general offer to sell the <aol4.me> domain name to Complainant is further evidence that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).  See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a Respondent’s willingness to sell a domain name to the Complainant suggests that a Respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)); see also Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s lack of rights and legitimate interests in the domain name is further evidenced by Respondent’s attempt to sell its domain name registration to Complainant, the rightful holder of the RED CROSS mark.”).

 

            Registration and Use in Bad Faith

 

First, Complainant contends that the trademark AOL is famous and that previous UDRP decisions held that the AOL trademark in a domain name violates ICANN Rules. See Am. Online, Inc. v. Cucamonga Elec. Corp. (“in this age it is not a coincidence when a firm uses the acronym AOL in any new setting.  In the absence of a credible explanation, I will infer that its purpose is to mislead Internet users into thinking that whatever activities are carried on on the site, AOL Inc. has some connection with them”); Am. Online, Inc. v. Viper, WIPO Case D2000-1198 (“it is well past the day when Internet users would not make the assumption that use of AOL as part of a domain name links that site in the mind of the user to Complainant”).

The Panel deems that Complainant has proved that the trademarks AOL and AOL.COM were well-known when the domain name was registered. As a consequence, it appears unlikely that Respondent did not have Complainant’s trademark in mind at the time of registration. See Marriott Int’l Inc. v. Radu Civil File No. FA00-93637 (NAF March 30, 2000) (“Respondent knew or should have known of the existence of the entities known as Marriott Hotels”).

 

The Panel considers that Respondent’s general offer to sell the <aol4.me> domain name to Complainant is evidence of bad faith registration and use under 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 Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”).

 

The litigious domain name is used to promote services that directly compete with Complainant.  In the Panel’s opinion, this kind of competitive use of the disputed domain name disrupts Complainant’s business and constitutes bad faith registration and use under Policy ¶ 4(b)(iii).  See David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the Respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because Respondent used the disputed domain name to advertise goods and services of Complainant’s competitors, thereby disrupting the Complainant’s business); see also Travant Solutions, Inc. v. Cole, FA 203177 (Nat. Arb. Forum Dec. 6, 2003) (“Respondent registered and used the domain name in bad faith, pursuant to Policy ¶ 4(b)(iii), because it is operating on behalf of a competitor of Complainant . . .”).

 

Complainant contends that Respondent’s promotion of Complainant’s competitor’s services through the use of the confusingly similar <aol4.me> domain name constitutes bad faith registration and use. The Panel finds that Respondent is capitalizing on the likelihood of confusion between its <aol4.me> domain name and Complainant’s AOL mark, and that Respondent is engaging in bad faith registration and use under Policy ¶ 4(b)(iv).  See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the Respondent’s use of the <arizonashuttle.net> domain name, which contained the Complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the Respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)); 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 <aol4.me> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Nathalie Dreyfus,  Panelist
Dated: July 28, 2009