America Online, Inc. v. Anthony Peppler dba RealTimeInternet.com
Claim Number: FA0112000103437
Complainant is America Online, Inc., Dulles, VA (“Complainant”) represented by James R. Davis, of Arent Fox Kintner Plotkin & Kahn. Respondent is RealTimeInternet.com, Fort Wayne, IN (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <aol7.com>, <aolnick.com>, <aolpogo.com>, <aolmediaplayer.com>, <aolprofile.com>, <mailaol.com>, <mapquesst.com>, <mapcrest.com>, <icqprograms.com>, <icqdownloads.com>, <americans-online.com> and <digitacity.com>, registered with Dotster, Register.com, DomainDiscover, and BulkRegister.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on December 27, 2001; the Forum received a hard copy of the Complaint on December 31, 2001.
On December 31, 2001, January 2, 2002, and January 9, 2002, Dotster, Register.com, DomainDiscover, and BulkRegister confirmed by e-mail to the Forum that the domain names <aol7.com>, <aolnick.com>, <aolpogo.com>, <aolmediaplayer.com>, <aolprofile.com>, <mailaol.com>, <mapquesst.com>, <mapcrest.com>, <icqprograms.com>, <icqdownloads.com>, <americans-online.com> and <digitacity.com>, are registered with Dotster, Register.com, DomainDiscover, and BulkRegister and that Respondent is the current registrant of the name. Dotster, Register.com, DomainDiscover, and BulkRegister verified that Respondent is bound by the Dotster, Register.com, DomainDiscover, and BulkRegister 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 January 10, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”) setting a deadline of January 30, 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 email@example.com, firstname.lastname@example.org, email@example.com, firstname.lastname@example.org, email@example.com, firstname.lastname@example.org, email@example.com, firstname.lastname@example.org, email@example.com, firstname.lastname@example.org, email@example.com, and firstname.lastname@example.org 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 February 11, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following allegations in this proceeding:
The disputed domain names are confusingly similar or nearly identical to Complainant’s well-known marks. Respondent has no rights to or legitimate interests with respect to the disputed domain names. Respondent acted in bad faith in registering and using the domain names in issue for several reasons. Respondent’s use of the disputed domain names in connection with a commercial website are evidence of bad faith. Respondent’s registration and use of the disputed domain names that were primarily for the purpose of disrupting Complainant’s business are evidence of bad faith. And although Respondent was aware of Complainant’s well-known marks, Respondent registered several different infringing domain names that prevent Complainant from reflecting its mark in the corresponding domain name and has engaged in a pattern of such conduct. This also may support findings of bad faith.
B. Respondent did not file a Response in this proceeding.
Complainant is known worldwide by its marks through which it offers a multitude of Internet and computer goods and services. Complainant and its predecessor-in-interest registered the following marks:
· AOL on July 2, 1996, Registration Number 1,984,337.
· AMERICA ONLINE on October 16, 1990, Registration Number 1,618,148.
· ICQ on December 12, 2000, Registration Number 2,411,657, with the first use in November1996.
· MAPQUEST on January 13, 1998, Registration Number 2,129,378.
· DIGITAL CITY on January 11, 2000, Registration Number 2,307,655.
Each year, millions of Complainant’s customers worldwide obtain goods and services offered under Complainant’s marks. Complainant has spent millions of dollars in connection with advertising and promotion of Complainant’s marks. Because of the extensive customer use and promotion, Complainant’s marks are well known worldwide.
Between February 8, 2000 and October 11, 2001, Respondent registered the domain names in dispute. Every disputed domain name redirects users to <infostart.com>, which has a corresponding website that offers various services. On its website, Respondent offers services including a travel section that competes with Complainant’s MAPQUEST and DIGITAL CITY along with an Internet service that competes with Complainant’s AMERICA ONLINE. Furthermore, when a user is redirected to Respondent’s website the user is greeted with “Welcome to [insert disputed domain name here].” For example, when a user mistypes Complainant’s DIGITAL CITY, the user will be welcomed on Respondent’s website with the message “Welcome to digitacity.com.”
Beginning May 9, 2001, Complainant’s counsel attempted to settle this dispute with Respondent. After several letters, Respondent responded via e-mail on October 9, 2001 stating that he would like to settle the dispute in a “friendly manner” but that he wanted to keep <icqdownloads.com>. Two days later, Respondent registered <americans-online.com>. That action was the last response by Respondent.
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 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.
Complainant has established in this proceeding that it has rights to and legitimate interest in its marks either by common law or by federally registration of its marks prior to Respondent’s registration of the domain names in dispute.
It has been generally held that the addition of a generic term, number, or letter(s) does not diminish the confusing similarity between a disputed domain name and a famous mark. Thus the Panel finds that there is a confusing similarity between <aol7.com>, <aolnick.com>, <aolpogo.com>, <aolmediaplayer.com>, <aolprofile.com>, <mailaol.com>, <icqprograms.com>, <icqdownloads.com> and <americans-online.com> and Complainant’s marks, AOL, ICQ, and AMERICA ONLINE, respectively. See ESPN, Inc. v. MySportCenter.com, FA 95326 (Nat. Arb. Forum Sept. 5, 2000) (finding that the “domain name MYSPORTSCENTER.COM registered by Respondent is confusingly similar to Complainant’s SportsCenter mark…”); see also America Online Inc v. Rao Tella d/b/a Arbor Online Box, FA 101820 (Nat. Arb. Forum Dec. 28, 2001) (finding a confusingly similarity between <aolbox.com> and Complainant’s AOL mark); see also America Online, Inc. v. Domain Oz, FA 94302 (Nat. Arb. Forum Apr. 14, 2000) (finding the domain name <aolinstantmessenger.com> identical or confusingly similar to Complainant’s AOL.COM); see also America Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding that Respondent’s domain name, <americanonline.com>, is confusingly similar to the Complainant’s famous mark).
It has also been generally held that a misspelling of a famous mark creates a confusing similarity between a domain name and the mark. Therefore, the Panel finds that there is a confusing similarity between <mapquesst.com> and <digitacity.com> and Complainant’s MAP QUEST and DIGITAL CITY marks. See Hewlett-Packard Co. v. Zuccarini, FA 94454 (Nat. Arb. Forum May 30, 2000) (finding the domain name <hewlitpackard.com> to be identical or confusingly similar to Complainant’s HEWLETT-PACKARD mark); see also Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that misspelling words and adding letters on to words does not create a distinct mark but is nevertheless confusingly similar with the Complainant’s marks).
When a word in a domain name has the same sound as a famous trademark, it can be considered that there is a confusing similarity between the domain name and the famous trademark. The word “quest” and “crest” are similar in sound and are phonetically similar and thus these two words may be considered confusingly similar. Therefore, confusing similarity exists between <mapcrest.com> and Complainant’s MAP QUEST mark. See YAHOO! Inc. v. Murray, D2000-1013 (WIPO Nov. 17, 2000) (finding that the domain name <yawho.com> is confusingly similar to the Complainant’s YAHOO mark).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights to or Legitimate Interests
Complainant has established its rights to and legitimate interest in each of the five marks at issue in the disputed domain names here. Respondent has failed to file a Response in the matter. As a result, the Panel will presume that Respondent has no rights or legitimate interests in the disputed domain names. 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).
Furthermore, since the evidence presented indicates that Complainant and Respondent offer similar services on their respective websites and Respondent has not filed a Response to refute the assertion, the Panel can presume that Respondent and Complainant are involved in similar businesses and that Respondent is intentionally diverting Complainant’s customers to its website by using domain names that are confusingly similar to Complainant’s marks. See Hewlett Packard Co. v. Full Sys., FA 94637 (Nat. Arb. Forum May 22, 2000) (holding that Respondent’s failure to offer any evidence permits the inference that the use of the Complainant’s mark in connection with the Respondent’s website is misleading and Respondent is intentionally diverting business from the Complainant).
By diverting customers from Responding to its website, Respondent has not demonstrated that it has used the disputed domain names in connection with a bona fide offering of goods or services and has not satisfied Policy ¶ 4(c)(i). See North Coast Med., Inc. v. Allegro Med., FA 95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no bona fide use where Respondent used the domain name to divert Internet users to its competing website).
Based on the evidence presented, Respondent has not demonstrated that it has been or is now commonly known by any of the marks reflected in the domain names in dispute and has failed to satisfy Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in domain name when Respondent is not known by the mark).
Finally, by diverting customers from Complainant to its own website for apparent commercial gain, Respondent has not made a legitimate noncommercial or fair use of the domain names in dispute. Therefore, Respondent fails to satisfy Policy ¶ 4(c)(iii). See
Ticketmaster Corp. v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9, 2001) (finding no rights or legitimate interests where Respondent generated commercial gain by intentionally and misleadingly diverting users away from the Complainant's site to a competing website); see also 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).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Complainant also asserts in this proceeding that Respondent registered and used the domain names in dispute to prevent Complainant from reflecting its mark in the corresponding domain names. Two days after informing Complainant that it wanted to reach a settlement, Respondent registered the twelfth domain name at issue in this dispute, <americans-online.com>. Respondent knew of Complainant’s mark prior to registering confusingly similar domain names, including <americans-online.com> and the fact that within a less than a two-year period Respondent had registered twelve domain names that each reflect a confusingly similar element to one of the Complainant’s five marks is evidence that Respondent has engaged in a pattern of conduct that supports a finding of bad faith pursuant to Policy ¶ 4(b)(ii). See Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that registration of more than one domain name that infringes on another’s registered mark(s) supports the inference that the Respondent knew of the Complainant’s marks upon registering the domain names; and the registration of multiple domain names that infringe on the Complainant’s trademark(s) is evidence of a pattern of conduct); see also Caterpillar Inc. v. Miguel Miyar Jr., FA 95623 (Nat. Arb. Forum Dec. 14, 2000) (finding that registering multiple domain names in a short time frame indicates an intention to prevent the mark holder from using its mark and provides evidence of a pattern of conduct).
When the user types in one of the domain names in dispute, the user is redirected to Respondent’s website which announces “Welcome to [disputed domain name]” and offers services which are similar to Complainant’s services. Therefore, Respondent has registered the disputed domain names for disrupting Complainant’s business. This consitutes bad faith as outlined in Policy ¶ 4(b)(iii). See Southern Exposure v. Southern Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by attracting Internet users to a website that competes with Complainant’s business).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief be hereby granted.
Accordingly, it is Ordered that the domain names <aol7.com>, <aolnick.com>, <aolpogo.com>, <aolmediaplayer.com>, <aolprofile.com>, <mailaol.com>, <mapquesst.com>, <mapcrest.com>, <icqprograms.com>, <icqdownloads.com>, <americans-online.com> and <digitacity.com>be transferred from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: February 22, 2002.
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