America Online, Inc. v. Ultimate a/k/a
Richard Stamin
Claim Number: FA0212000136299
PARTIES
Complainant
is America Online, Inc., Dulles, VA
(“Complainant”) represented by James R.
Davis, II, of
Arent Fox Kintner Plotkin & Kahn.
Respondent is Ultimate a/k/a Richard Stamin, San Diego, CA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <4-aol.com> and <www4-aol.com>, registered with Register.com, Inc.
PANEL
On
January 8, 2003, pursuant to Complainant’s request to have the dispute decided
by a single-member Panel, the Forum appointed James P. Buchele as
Panelist. The undersigned certifies
that he or has acted independently and impartially and to the best of his
knowledge has no known conflict in serving as Panelist in this proceeding.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on December 6, 2002; the Forum received a hard copy of the
Complaint on December 12, 2002.
On
December 9, 2002, Register.com, Inc. confirmed by e-mail to the Forum that the
domain names <4-aol.com> and <www4-aol.com> are registered with Register.com, Inc. and
that Respondent is the current registrant of the names. Register.com, Inc. has
verified that Respondent is bound by the Register.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
December 12, 2002, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of January 2, 2003 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@4-aol.com and postmaster@www4-aol.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.
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.
RELIEF SOUGHT
Complainant
requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following
assertions:
Respondent’s
<4-aol.com> and <www4-aol.com> domain
names are confusingly similar to Complainant’s AOL mark.
Respondent does not have any rights or legitimate
interests in the <4-aol.com> and <www4-aol.com>
domain names.
Respondent registered and used the <4-aol.com> and <www4-aol.com>
domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
FINDINGS
Complainant, America Online, Inc., is the
owner of numerous trademark registrations worldwide for the mark AOL, including
U.S. Trademark Reg. Nos. 1,977,731 and 1,984,337, which were registered on June
4, 1996 and July 2, 1996, respectively, on the Principal Register of the United
States Patent and Trademark Office. Complainant owns U.S. Trademark Reg. Nos.
2,325,291 and 2,325,292 for the mark AOL.COM. Complainant uses its mark AOL.COM
as a domain name for its website, wherein its mark AOL is used extensively as a
significant method of promoting Complainant’s various computer-related sales
and services. As a result, consumers associate the mark AOL, when used in a
domain name, with Complainant’s services.
Respondent, Ultimate a/k/a Richard
Stamin, registered the <4-aol.com> and <www4-aol.com> domain
names on September 2, 2002, and is not licensed or authorized to use the AOL
mark for any purpose. Respondent uses the disputed domain names to redirect
Internet users to a commercial website at <applauds.org>, which sells
various medications
DISCUSSION
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 the 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 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 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.
Identical and/or Confusingly Similar
Complainant has established rights in the
AOL and AOL.COM marks through registration on the Principal Register of the
United States Patent and Trademark Office, as well as through widespread and
continuous use of the mark in commerce.
Respondent’s <4-aol.com> and <www4-aol.com> domain names are both confusingly similar to
Complainant’s registered AOL and AOL.COM marks. The addition of the “4-” prefix
to Complainant’s mark in both domain names does not operate to distinguish the
mark in any notable fashion. The addition of a simple number and a hyphen,
especially in light of the strength of Complainant’s mark, is not enough of a
change to prevent a finding of confusing similarity. See Am. Online, Inc. v. Fu, D2000-1374 (WIPO
Dec. 11, 2000) (finding that adding the suffixes "502" and
"520" to the ICQ trademark does little to reduce the potential for
confusion); 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).
Respondent also
added the “www” prefix to one of its domain names. This phrase, an acronym for
“world wide web,” also does not change the fact that the dominant feature of
the domain name remains the AOL mark. See Dow Jones & Co., Inc.
v. Powerclick, Inc.,
D2000-1259 (WIPO Dec. 1, 2000) (holding that the deliberate introduction of
errors or changes, such as the addition of a fourth “w” or the omission of
periods or other such generic typos do not change Respondent’s infringement on
a core trademark held by Complainant); see also Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1,
2000) (finding that Respondent’s domain name <wwwbankofamerica.com> is
confusingly similar to Complainant’s registered trademark BANK OF AMERICA
because it “takes advantage of a typing error (eliminating the period between
the www and the domain name) that users commonly make when searching on the
Internet”).
Accordingly, the Panel finds that the <4-aol.com> and <www4-aol.com> domain
names are confusingly similar to Complainant’s AOL and AOL.COM marks under
Policy ¶ 4(a)(i).
Rights or Legitimate Interests
Respondent failed to respond to the
Complaint in this dispute. As such, the Panel will accept as true all
substantiated allegations put forth in the Complaint, and will draw all logical
inferences accordingly. 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) (failure
to respond allows all reasonable inferences of fact in the allegations of
Complainant to be deemed true).
Respondent uses the <4-aol.com> and <www4-aol.com> domain names to redirect Internet users to
the <applauds.org> domain name, a commercial website which sells various
medications. Nothing on this website makes reference to AOL. Respondent
presumably recieves a referral fee for Internet users directed to this website
through its use of Complainant’s registered mark. Such use is not a bona fide
offering of goods or services as contemplated by Policy ¶ 4(c)(i), nor is it
evidence of legitimate noncommercial or fair use of the domain names pursuant
to Policy ¶ 4(c)(iii). See Toronto-Dominion
Bank v. Karpachev, 188 F.Supp.2d
110, 114 (D.
Mass. 2002) (finding that, because Respondent's sole purpose in selecting the
domain names was to cause confusion with Complainant's website and marks, it's
use of the names was not in connection with the offering of goods or services
or any other fair use); see also AltaVista v. Krotov, D2000-1091 (WIPO Oct. 25, 2000)
(finding that use of the domain name to direct users to other, unconnected
websites does not constitute a legitimate interest in the domain name).
Respondent, appearing to be known as “Ultimate”
or “Richard Stamin,” does not appear to be “commonly known by” the <4-aol.com> or <www4-aol.com> domain
names. In light of the fame surrounding the AOL mark, the Panel finds it
difficult to imagine that Respondent could ever claim to be commonly known by
any derriviative of the AOL mark, and finds that Policy ¶ 4(c)(ii) is
inapplicable to Respondent. 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 Nike, Inc. v. B. B. 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).
Accordingly, the Panel finds that
Respondent does not have rights or legitimate interests in the <4-aol.com> and <www4-aol.com> domain
names under Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
The fame and goodwill surrounding the AOL
mark, along with its registration on the Principal Register of the United
States Patent and Trademark Office, permit the Panel to infer that Respondent
was aware of Complainant’s rights in the mark prior to its registration of the <4-aol.com> and <www4-aol.com> domain
names. Registration of domain names where Respondent had actual knowledge that
Complainant had rights in a mark that Respondent was appropriating equates to
bad faith registration under Policy ¶ 4(a)(iii). See Sony Kabushiki Kaisha v. Inja, Kil,
D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use where it
is “inconceivable that the respondent could make any active use of the disputed
domain names without creating a false impression of association with the
Complainant”); see also Reuters
Ltd. v. Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000) (finding that
Respondent demonstrated bad faith where Respondent was aware of Complainant’s
famous mark when registering the domain name as well as aware of the deception
and confusion that would inevitably follow if he used the domain names).
Respondent’s use of the disputed domain
names evidences an attempt to profit off of the confusion created by its
registration of two domain names incorporating the AOL mark. Such an attempt to
create a likelihood of confusion as to the source or sponsorship of a website
for commercial gain is an example of bad faith use and registration illustrated
in 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 Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29,
2000) (finding bad faith where the domain name in question is obviously
connected with Complainant’s well-known marks, thus creating a likelihood of
confusion strictly for commercial gain).
Accordingly, the Panel finds that
Respondent registered and used the <4-aol.com> and <www4-aol.com> domain
names in bad faith, and Policy ¶ 4(a)(iii) is satisfied.
DECISION
Having established all three elements
under ICANN Policy, the Panel concludes that relief shall be hereby GRANTED.
Accordingly, it is Ordered that the <4-aol.com> and <www4-aol.com> domain
names be TRANSFERRED from Respondent to Complainant.
James P. Buchele, Panelist
Dated: January 16, 2003
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