America Online, Inc. v. TouchTone Pictures, LLC
Claim Number: FA0203000105776
Complainant is America Online, Inc., Dulles, VA (“Complainant”) represented by James R. Davis, of Arent Fox Kintner Plotkin & Kahn. Respondent is TouchTone Pictures, LLC, Wilmington, DE (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <aolparty.net>, registered with Tucows.
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.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on March 11, 2002; the Forum received a hard copy of the Complaint on March 11, 2002.
On March 11, 2002, Tucows confirmed by e-mail to the Forum that the domain name <aolparty.net> 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 March 12, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 1, 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 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 April 8, 2002, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
1. Since the disputed domain name uses Complainant’s famous mark in its entirety and merely adds the generic term “party,” the disputed domain name is nearly identical and confusingly similar to Complainant’s famous AOL mark.
2. Respondent is not commonly known as <aolparty.net> and is not licensed to use the famous AOL mark and Respondent has no rights or legitimate interests in the disputed domain name.
3. The fame attained by the AOL mark prior to Respondent’s registration of <aolparty.net> creates a reasonable inference that Respondent had knowledge of Complainant’s famous mark and, thus, Respondent has registered the disputed domain name in bad faith. Based on the adult goods and services Respondent provides on the website connected with the disputed domain name and on the fact that Respondent has answered to Complainant’s cease and desist requests, Respondent is determined to have used the disputed domain name in bad faith.
No Response was submitted
Complainant is the owner of numerous trademark registrations worldwide incorporating the AOL mark, including: AOL, registered on June 4, 1996, Registration No. 1,977,731; and AOL.COM, registered on March 7, 2000, Registration No. 2,325,291. Complainant uses its AOL family of marks in connection with computer services, such as leasing access time to computer databases, computer bulletin boards, computer networks, and computerized research and reference materials, in the field of business, finance, news, weather, sports, computing and computer software, games, music, theater, movies, travel, education, lifestyles, hobbies and topics of general interest; computerized dating services; computer consultation services; computerized shopping via telephone and computer terminals in the field of computer goods and services.
Complainant has invested substantially in advertising and promoting its mark throughout the United States and the world, and as a result, Complainant’s sales have risen into the billions of dollars while the AOL mark has become famous and distinctive.
Respondent registered <aolparty.net> on February 1, 2001 and has used the domain name in connection with a website that offers pornographic goods and services. Respondent’s website makes prominent use of Complainant’s AOL mark. The first page of the site welcomes the Internet user to an “AOL/Internet Party!”
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 established its rights in the AOL mark through trademark registration and continuous use. The disputed domain name is confusingly similar to Complainant’s mark. The only difference between the disputed domain name <aolparty.net> and Complainant’s mark is the addition of “party.” A domain name that incorporates a famous mark and adds a generic term does not distinguish the disputed domain name from the famous mark. Therefore, the Panel finds that <aolparty.net> is confusingly similar to AOL. 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 Am. Online, Inc. v. iDomainNames.com, FA 93766 (Nat. Arb. Forum Mar. 24, 2000) (finding that Respondent’s domain name <go2AOL.com> was confusingly similar to Complainant’s AOL mark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Respondent has not filed a Response in this matter. Therefore, the Panel can conclude that Respondent has no rights or legitimate interests in <aolparty.net>. 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). Therefore, the Panel may assume that all of the allegations made in the Complaint are true. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence).
Respondent uses a domain name that is confusingly similar to Complainant’s famous mark in connection with a website that offers pornographic goods and services. Such activity does not demonstrate a use in connection with a bona fide offering of goods and services as pursuant to Policy ¶ 4(c)(i). 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).
Given the fame attained by Complainant’s AOL mark, the Panel holds that it would be difficult to imagine anyone, other than Complainant, commonly known as <aolparty.net>. Therefore, Respondent has failed to satisfy Policy ¶ 4(c)(ii). See Victoria’s Secret v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (finding sufficient proof that Respondent was not commonly known by a domain name confusingly similar to Complainant’s VICTORIA’S SECRET mark because of Complainant’s well-established use of the mark); see also Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding that no person besides Complainant could claim a right or a legitimate interest with respect to the domain name <nike-shoes.com>).
Because of the confusingly similar nature of <aolparty.net>, the Panel may presume that Respondent’s intention is to divert users of Complainant’s services to its own commercial website. Because this is not evidence of a legitimate, noncommercial, or fair use, Respondent has failed to satisfy Policy ¶ 4(c)(iii). See Kosmea Pty Ltd. v. Krpan, D2000-0948 (WIPO Oct. 3, 2000) (finding no rights in the domain name where Respondent has an intention to divert consumers of Complainant’s products to Respondent’s site by using Complainant’s mark).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Because Complainant’s AOL mark was already considered famous before Respondent registered the disputed domain name, the Panel can infer that Respondent knew that the disputed domain name was confusingly similar to Complainant’s famous mark. Therefore, Respondent has registered the disputed domain name in bad faith. See Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the world-wide prominence of the mark and thus Respondent registered the domain name in bad faith); see also Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that, in light of the notoriety of Complainants' famous marks, Respondent had actual or constructive knowledge of the BODY BY VICTORIA marks at the time she registered the disputed domain name and such knowledge constituted bad faith).
Respondent has used the disputed domain name to route users to a commercial website which welcomes the Internet user to an “AOL/Internet Party!” and offers pornographic goods and services. Such use is evidence that Respondent has used the disputed domain name in bad faith as pursuant to Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent registered and used an infringing domain name to attract users to a website sponsored by Respondent); see also Land O' Lakes Inc. v. Offbeat Media Inc., FA 96451 (Nat. Arb. Forum Feb. 23, 2001) (finding bad faith under Policy ¶ 4(b)(iv) where Respondent utilized a domain name confusingly similar to the Complainant’s mark and used a confusingly similar pornographic depiction of the Complainant’s registered trademark on its web site to cause confusion as to the source or affiliation of the site)
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 name <aolparty.net> be transferred from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: April 11, 2002
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