America Online, Inc. v. Oxford University
Claim Number: FA0201000104132
Complainant is America Online, Inc., Dulles, VA (“Complainant”) represented by James R. Davis, II, of Arent, Fox, Kintner, Plotkin & Kahn. Respondent is Oxford University, Piggabeen, AUSTRALIA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <aol7.net>, <aol7.org>, <aol-7.net>, <aol-7.org>, <aol-seven.com> and <aolseven.com>, registered with I Holdings.com dba Dotregistrar.com.
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 January 30, 2002; the Forum received a hard copy of the Complaint on February 4, 2002.
On February 4, 2002, I Holdings.com dba Dotregistrar.com confirmed by e-mail to the Forum that the domain names <aol7.net>, <aol7.org>, <aol-7.net>, <aol-7.org>, <aol-seven.com> and <aolseven.com> are registered with I Holdings.com dba Dotregistrar.com and that Respondent is the current registrant of the names. I Holdings.com dba Dotregistrar.com has verified that Respondent is bound by the I Holdings.com dba Dotregistrar.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 February 4, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 25, 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, email@example.com, firstname.lastname@example.org, email@example.com, 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 5, 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:
Complainant has rights to the America Online and AOL marks. Respondent’s <aol7.net>, <aol7.org>, <aol-7.net>, <aol-7.org>, <aol-seven.com> and <aolseven.com> domain names are confusingly similar to Complainant’s AOL mark.
Respondent has no rights or legitimate interests in the marks or the disputed domain names.
Respondent registered and used the disputed domain names in bad faith.
B. Respondent did not file a formal Response in this proceeding.
Complainant has numerous registrations of the AOL mark with the United States Patent and Trademark Office including Registration Numbers 1,977,731 and 1,984,337, approved July 4, 1996 and July 2, 1996, respectively. Moreover, it has two Australian trademarks (Reg. Nos. 655,189 and 662,466) for AOL, registered on March 8, 1995 and May 29, 1995 respectively.
Complainant relies heavily on its <aol.com> domain name to advertise and promote its products and services. With more than thirty million subscribers, AOL operates a very popular online service site. As a result, consumers associate the use of AOL in a domain name with Complainant’s services.
As early as 1989 Complainant began using its mark in connection with computer on-line services and other Internet-related services. As Complainant updates its software products, it numbers them sequentially; for example, AOL version 5 is followed by AOL version 6. Complainant is currently distributing AOL version 7.
Respondent registered the <aol7.net>, <aol7.org>, <aol-7.net>, <aol-7.org>, <aol-seven.com>, and <aolseven.com> domain names on December 10, 2001. According to the Whois records, Respondent used the name “Domains for Sale” as its registrant name. Respondent subsequently offered to sell the disputed domain names to Complainant and used the domain names to link to a site called <domain-man.com> which invites visitors to “purchase or franchise this domain.” Finally, Respondent has a history of registering infringing domain names. According to Complainant, Respondent was labeled a “cybersquatter” for registering the following infringing domain names: <harveynorman.net>, <texas-instruments.com>, and <university-of-oxford.com>.
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 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 rights in its AOL mark through its continuous use of the AOL mark as well as its numerous registrations of the AOL mark with the United States Patent and Trademark Office. The disputed domain names are confusingly similar to Complainant’s AOL mark because they all incorporate Complainant’s mark in its entirety, merely adding a generic top-level domain name, the generic word “seven” or “7”, and a hyphen in three of the disputed domains. The addition of the top-level domain name, the hyphen and the generic word “seven” or “7” do not create a domain name that is distinguishable from Complainant’s AOL mark. 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 Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Chernow Communications Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark").
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
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 <aol7.net>, <aol7.org>, <aol-7.net>, <aol-7.org>, <aol-seven.com> and <aolseven.com> domain names be transferred from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: March 19, 2002.
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