America
Online, Inc. v. David Nasi
Claim Number: FA0111000102525
PARTIES
Complainant is America Online, Inc., Dulles, VA (“Complainant”) represented by James R. Davis, II, of Arent Fox. Respondent is David Nasi (“Respondent”).
REGISTRAR AND
DISPUTED DOMAIN NAMES
The domain names at issue are <aol-msn.com>, <microsoft-aol.com>, and <aol-microsoft.com>, registered with Catalog.com, and <aol-sony.com> registered with Tucows, Inc.
PANEL
On January 25, 2001, 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 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 November 26, 2001; the Forum received a hard copy of the Complaint on November 30, 2001.
On November 27, 2001, Tucows, Inc. confirmed by e-mail to the Forum that the domain name <aol-sony.com> is registered with Tucows, Inc. and that Respondent is the current registrant of the name. Tucows, Inc. has verified that Respondent is bound by the Tucows, 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 13, 2001, Catalog.com confirmed by e-mail to the Forum that the domain names <aol-msn.com>, <microsoft-aol.com>, and <aol-microsoft.com> are registered with Catalog.com and that Respondent is the current registrant of the names. Catalog.com has verified that Respondent is bound by the Catalog.com 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 14, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 3, 2002 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@aol-msn.com, postmaster@aol-sony.com, postmaster@microsoft-aol.com, and postmaster@aol-microsoft.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
1. The domain names are nearly identical and confusingly similar to Complainant’s AOL and AOL.COM marks. Consumer confusion is particularly likely because Respondent is using the very famous and distinctive mark AOL in connection with other famous names and marks, namely, SONY, MICROSOFT, and MSN. Respondent also uses the famous AOL TRIANGLE LOGO in connection with at least one of the infringing sites. All of the sites are used in connection with the sale of goods and services, some of which are similar to those offered by AOL under its famous AOL brand.
2. Respondent has no rights or legitimate interests in respect to the domain names. Respondent is not named AOL and is not licensed or authorized to use Complainant’s marks.
3. Respondent registered and uses the domain names with a bad faith intent to capitalize on the famous AOL and AOL.COM marks, and profit from the international and domestic goodwill Complainant has built up in its famous marks.
a. Respondent registered the domains many years after the AOL Marks had become famous and well known to consumers.
b. Moreover, Respondent’s intentional combination of the AOL mark with other famous brand names indicates Respondent’s bad faith registration of the domain names in an attempt to confuse consumers into believing the sites are operated jointly by AOL and other companies.
c. Complainant sent Respondent a letter and set forth Complainant’s trademark rights and objections to Respondent’s unauthorized use of the AOL mark. In response, Respondent offered to sell two of the domain names for $30,000, or all four for $50,000, an amount that obviously is far in excess of any actual out-of-pocket expenses incurred by Respondent. Respondent also threatened to sell the domains to an unidentified purchaser if AOL refused to pay the extortionist price.
B. Respondent
No Response was received.
FINDINGS
Complainant America Online, Inc. is the owner of numerous trademark registrations worldwide for the mark AOL, including U.S. trademark registration Nos. 1,977,731 and 1,984,337, which were registered on June 4, 1996, and July 2, 1996, respectively.
Complainant uses its mark AOL.COM as a domain name for its website. Complainant owns federal trademark registration Nos. 2,325,291 and 2,325,292 for the mark AOL.COM. The mark AOL is used extensively at this website, which is a significant method of promoting Complainant's service. As a result, consumers associate the mark AOL, when used in a domain name, with Complainant's services.
With over thirty million subscribers, Complainant operates the most widely-used interactive online service in the world and each year millions of Complainant’s customers worldwide obtain services offered under the AOL and AOL.COM marks; millions more are exposed to said marks through advertising and promotion.
In August and October 2001, many years after Complainant's adoption and first use of the AOL and AOL.COM marks, Respondent registered the disputed domain names and began using them in connection with commercial websites and pornographic content.
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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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 proven ownership and registration of the AOL and AOL.COM trademarks. Therefore, Complainant has established prima facie rights over the said trademarks.
The disputed domain names are confusingly similar to
Complainant’s trademarks, as the domain names are merely a combination of
Complainant’s marks with SONY, MICROSOFT, or MSN. See EntergyShaw LLC
v. CPIC Net, FA 95950 (Nat. Arb. Forum Dec. 8, 2000) (finding that Policy ¶
4(a)(i) had been satisfied because the domain names <entergyshaw.com> and
<entergy-shaw.com> were merely comprised of the merged ENTERGY and SHAW
marks).
In addition, the disputed domain names are so confusingly similar a
reasonable Internet user would assume that the domain names are somehow
affiliated with Complainant. See Treeforms, Inc. v. Cayne Indus. Sales
Corp., FA 95856 (Nat. Arb. Forum Dec. 18, 2000) (finding that confusion
would result when Internet users, intending to access Complainant’s web site,
think that an affiliation of some sort exists between the Complainant and the
Respondent, when in fact, no such relationship would exist).
Accordingly, the Panel finds that
Policy ¶ 4(a)(i) has been satisfied.
Rights or
Legitimate Interests
Respondent has not made a bona fide offering of goods and services under Policy ¶ 4(c)(i), because Respondent offers goods and services confusingly similar to those offered by Complainant. See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name).
Respondent also offers pornographic materials on the websites connected to the domain names. Respondent’s use of pornography is not a bona fide offering of goods or a noncommercial or fair use of the domain names under ¶ 4(c)(iii) and only serves to tarnish Complainant’s famous marks. See MatchNet plc v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that it is not a bona fide offering of goods or services to use a domain name for commercial gain by attracting Internet users to third party sites offering sexually explicit and pornographic material, where such use is calculated to mislead consumers and tarnish the Complainant’s mark); see also National Football League Prop., Inc., v. One Sex Entm't. Co., D2000-0118 (WIPO Apr. 17, 2000) (finding that the Respondent has no rights or legitimate interests in the domain names <chargergirls.com> and <chargergirls.net> where the Respondent linked these domain names to its pornographic website); 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).
Complainant has shown that Respondent is not named AOL and is not licensed or authorized to use Complainant’s marks, and is, therefore, not commonly known by the domain names under Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark or never applied for a license or permission from Complainant to use the trademarked name).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied and that Respondent has no rights or legitimate interests with respect to the disputed domain names.
Registration and
Use in Bad Faith
Respondent’s use of pornography in connection with the domain names is evidence of bad faith. See Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (use of another's well-known mark to provide a link to a pornographic site is evidence of bad faith registration and use).
Respondent’s offer to sell the domain names for $50,000 is bad faith under Policy ¶ 4(b)(i). Respondent’s attempt to pressure Complainant into purchasing the domain names is an indication that Respondent registered the domain names primarily for the purpose of selling them. See Moynahan v. Fantastic Sites, Inc., D2000-1083 (WIPO Oct. 22, 2000) (finding bad faith where the Respondent offered to sell the domain name to the Complainant for $10,000 when Respondent was contacted by Complainant).
Respondent has acted in bad faith under Policy ¶ 4(b)(iv) by intentionally attempting to attract, for commercial gain, Internet users to Respondent’s websites by using Complainant’s famous marks and therefore creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites. See Identigene, Inc. v. Genetest Lab., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where Respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that Complainant is the source of or is sponsoring the services offered at the site).
Based upon: the fame of Complainant’s AOL marks, Complainant’s federal trademark registrations, Respondent’s use of the domain names in connection with commercial websites that use AOL’s logo but otherwise have nothing to do with AOL, Respondent’s use of pornographic material in connection with Complainant’s marks, and Respondent’s threat to sell the domain names to a third party unless Complainant pays a price in excess of documented out-of-pocket costs, it is the finding of this Panel that Respondent registered and used the domain names in bad faith under Policy ¶ 4(b)(iii).
DECISION
Having established all three of the elements under the ICANN Policy, the Panel concludes that the requested relief should be hereby granted.
Accordingly, it is Ordered that the <aol-sony.com>, <aol-msn.com>, <microsoft-aol.com>, and <aol-microsoft.com> domain names be transferred from Respondent to Complainant.
James P. Buchele, Panelist
Dated: Febuary 1, 2002
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