America
Online, Inc. v. Apocalypse Studios
Claim Number: FA0111000101828
PARTIES
Complainant is America Online, Inc., Dulles, VA (“Complainant”) represented by James R. Davis, of Arent, Fox, Kintner, Plotkin & Kahn. Respondent is Apocalypse Studios, Walsall, West Midlands, United Kingdom (“Respondent”).
REGISTRAR AND
DISPUTED DOMAIN NAME
The domain name at issue is <adultwinamp.com>, registered with Tucows.
PANEL
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.
James A. Carmody, Esq., as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on November 9, 2001; the Forum received a hard copy of the Complaint on November 16, 2001.
On November 12, 2001, Tucows confirmed by e-mail to the Forum that the domain name <adultwinamp.com> is registered with Tucows and that Respondent is the current registrant of the name. Tucows has verified that Respondent is bound by the Tucows 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 November 19, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 10, 2001 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@adultwinamp.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 December 19, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James A. Carmody, Esq., 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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from the Respondent to the Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The disputed domain name is confusingly similar to Complainant’s WINAMP mark.
Respondent has no rights or legitimate interests in respect of the disputed domain name.
Respondent registered and is using the disputed domain name in bad faith.
B. Respondent
Respondent did not submit a Response in this proceeding.
FINDINGS
Complainant purchased the rights to the WINAMP mark and product in June 1999. Complainant and its predecessor have used the mark continuously in connection with online music services since at least 1997. As of June 2000, the WINAMP product was being used by over 25 million unique consumers, with as many as 100,000 new registrants each day. There is no allegation of registration of the mark, but it clearly appears that Complainant has substantial common law rights in the mark.
The WINAMP product and mark have been widely promoted and publicized throughout the world via the Internet, cable television, radio, and print media. Complainant asserts that its substantial advertising expenditures and sales have made the WINAMP mark famous among consumers.
Respondent registered the disputed domain name <adultwinamp.com> in October 2001, and used the site to promote and distribute its pornographic WINAMP “skin” and to solicit “donations” from its users. (A “skin” is an add-on element designed specifically for WINAMP to impose an image onto the WINAMP control panel.)
On November 8, 2001, Complainant sent Respondent a letter via email requesting that he discontinue use of the disputed domain name and transfer the domain name to Complainant. Respondent answered by suggesting that the name and address used to register the domain name were false, by threatening to get “maximum coverage on the [I]nternet” for his site so that Complainant “will see their customers reduce in size on a weekly basis,” and by threatening to “[k]ick any ones [sic] ASS.”
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.
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 has
established rights through its extensive global advertising and use of the WINAMP
mark. The WINAMP product is known and
used by millions of computer users throughout the world. See BroadcastAmerica.com, Inc. v. Quo, DTV2000-0001 (WIPO Oct. 4, 2000)
(finding that the Complainant has common law rights in BROADCASTAMERICA.COM,
given extensive use of that mark to identify Complainant as the source of
broadcast services over the Internet, and evidence that there is wide
recognition with the BROADCASTAMERICA.COM mark among Internet users as to the
source of broadcast services).
The disputed domain name is confusingly similar to the WINAMP mark, in that it may cause confusion as to the source of content hosted at the disputed domain name. See Surface Protection Indus., Inc. v. The Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding the domain name confusingly similar “so as to likely confuse Internet users who may believe they are doing business with Complainant or with an entity whose services are endorsed by, sponsored by, or affiliated with Complainant; hence, satisfying the confusing similarity requirement”).
The addition of the
generic word “adult” does not defeat the domain name’s confusing
similarity. See Arthur Guinness Son
& Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001)
(finding confusing similarity where the domain name in dispute contains the
identical mark of the Complainant combined with a generic word or term); see
also America Online, Inc. v. Acnk Ltd., FA 100313 (Nat. Arb. Forum Nov. 19,
2001) (finding the domain names <icqgay.com>, <icqhardcore.com>,
<icqlesbo.com>, <icqmature.com>, and <icqvoyeur.com>, among
other similar variations, to be confusingly similar to Complainant’s ICQ
mark). Likewise, the addition of “.com”
to Complainant’s mark is inconsequential to the determination of confusing
similarity. See Rollerblade, Inc. v. McCrady, D2000-0429
(WIPO June 25, 2000) (finding that the top level of the domain name such as
“.net” or “.com” does not affect the domain name for the purpose of determining
whether it is identical or confusingly similar).
Having found the
disputed domain name to be confusingly similar to Complainant’s WINAMP mark,
the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or
Legitimate Interests
Because the Respondent has failed to submit a Response in this proceeding, the Panel may presume that Respondent has no rights or legitimate interests in the disputed domain name. See 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).
Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii), nor is Respondent making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers pursuant to Policy ¶ 4(c)(iii). See Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc. & D3M Domain Sales, AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest is immediately apparent to the Panel and Respondent has not come forward to suggest any right or interest it may possess).
Further, Respondent’s declared use of the domain name to detract users from Complainant’s site in order to profit from users’ “donations” is not a legitimate use under the Policy. See Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001) (finding no rights or legitimate interests where Respondent diverted Complainant’s customers to his websites); see also Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was diverting consumers to its own website by using Complainant’s trademarks).
Having found
Respondent has no rights or legitimate interests in respect of the disputed
domain name, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration and
Use in Bad Faith
Complainant’s WINAMP mark is both famous and distinctive among Internet users. By registering and using a confusingly similar domain name without regard for the mark, Respondent acted with “opportunistic bad faith.” See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the “domain names are so obviously connected with the Complainants that the use or registration by anyone other than Complainants suggests ‘opportunistic bad faith’”).
Respondent’s use of the domain name to distribute pornographic material also supports a finding of bad faith. See MatchNet plc. v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that association of confusingly similar domain name with pornographic website can constitute bad faith).
Finally, although Complainant and Respondent are not direct commercial competitors, Respondent’s threatened use of the domain name to disrupt traffic to Complainant’s site is evidence of bad faith. See Mission Kwa Sizabantu v. Rost, D2000-0279 (WIPO June 7,2000) (defining “competitor” as “one who acts in opposition to another,” while specifically noting that “the context [of the Policy] does not imply or demand any restricted meaning such as commercial or business competitor”); see also Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence).
Accordingly, the
Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief should be hereby granted.
Accordingly, it is ordered that the domain name <adultwinamp.com> be transferred from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: December 26, 2001
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