America Online, Inc. v. Action Now Network
Claim Number: FA0201000104131
Complainant is America Online, Inc., Dulles, VA (“Complainant”) represented by James R. Davis, of Arent Fox Kintner Plotkin & Kahn. Respondent is Action Now Network, Baton Rouge, LA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <aolracing.com>, and <aolracing.net>, registered with Network Solutions, Inc.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on January 30, 2002; the Forum received a hard copy of the Complaint on February 4, 2002.
On February 1, 2002, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain names <aolracing.com> and <aolracing.net> are registered with Network Solutions, Inc. and that Respondent is the current registrant of the names. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 February 6, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 26, 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 firstname.lastname@example.org and email@example.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 March 11, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 the Respondent to the Complainant.
Respondent’s <aolracing.com> and <aolracing.net> domain names are confusingly similar to Complainant’s AOL trademark.
Respondent has no rights and legitimate interests in the disputed domain names.
Respondent has regsitered and used the disputed domain names in bad faith.
No Response was submitted.
Complainant owns numerous trademarks incorporating the AOL mark, including the U.S. trademark registration for AOL (Reg. No. 1,977,731) registered on June 4, 1996. The mark AOL is used extensively at its <aol.com> website, which is a significant way to promote Complainant’s services. Consequently, consumers associate the AOL mark, when used in a domain name, with Complainant’s services.
Complainant first began use of the AOL mark as early as 1989, and began using its AOL.COM mark in 1992 in connection with its computer and Internet-related online services. As a result of its aggressive and costly advertising, Complainant currently services over thirty million subscribers. In addition to its own computer services, Complainant has used its name in association with NASCAR. Respondent has registered the disputed domain names in connection with automobile racing sponsorships.
Respondent registered the disputed domain names on March 20, 2000, well after Complainant registered its AOL mark in 1996. After Respondent registered the disputed domain names, it offered to enter a business deal with Complainant. Complainant declined to enter the business deal and expressed its concern about Respondent’s unauthorized use of the names.
Respondent then indicated that it would not transfer the disputed domain names without “consideration and compensation.” After Complainant refused to pay, Respondent contacted Complainant again and offered to sell the disputed domain names for $15,000, while hinting that it had other interested parties that would purchase the domain names if Complainant did not oblige. When Complainant refused, Respondent did not develop the disputed domain names, but idly held them for two years.
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 rights to the AOL mark due to its federal registration and use of the trademark in commerce since 1989.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Because Respondent has failed to answer this Complaint, it is presumed not to have any 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).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s attempt to sell the disputed domain names for an excessive profit is evidence of bad faith pursuant to Policy ¶ 4(b)(i). See America Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where Respondent offered domain names for sale); see also Little Six, Inc v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding Respondent's offer to sell the domain name at issue to Complainant was evidence of bad faith); see also World Wrestling Fed’n Entmt., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000) (finding that Respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out of pocket costs). Moreover, Respondent’s passive holding of the disputed domain names for two years after Complainant rejected its offer to sell them indicates Respondent’s bad faith. See Educational Testing Serv. v. TOEFL, D2000-0044 (WIPO Mar. 16, 2000) (finding that a general offer of sale combined with no legitimate use of the domain name constitutes registration and use in bad faith).
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 shall be hereby granted.
Accordingly, it is Ordered that the domain names <aolracing.com> and <aolracing.net> be transferred from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: March 15, 2002
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