AOL LLC v. Walter Fry
Claim Number: FA0711001112246
Complainant is AOL LLC (“Complainant”), represented by Blake
R. Bertagna, of Arent Fox LLP, of
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <aoltacoda.com>, registered with Godaddy.com, Inc.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
James A. Carmody, Esq., Professor David E. Sorkin and Alan L. Limbury, Esq., as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum
Upon being notified by the National Arbitration Forum of the deficiency in the Complaint, Complainant filed am amended Complaint on December 3, 2007, naming Walter Fry as Respondent.
On December 6, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 26, 2007 by which Respondent could file a Response to the amended 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 by e-mail.
A timely Response was received and determined to be complete on
Complainant requests that the domain name be transferred from Respondent to Complainant.
The disputed domain name was registered on
Complainant says the disputed domain name is identical to Complainant’s
As to legitimacy, Complainant says it has never authorized Respondent to use the AOL or TACODA marks; that Respondent has used the disputed domain name in connection with a commercial website that promotes and provides links to third parties, including Complainant’s competitors; that Respondent deactivated the domain name after speaking with Complainant’s counsel but his current non-use does constitute a bona fide offering of goods or services nor a legitimate non-commercial or fair use. Respondent is not commonly known by the disputed domain name.
As to bad faith, Complainant says Respondent could not have registered the disputed domain name in good faith without knowledge of Complainant’s rights. Complainant asserts bad faith within paragraphs 4(b)(ii), (iii) and (iv) of the Policy and, given the timing of the registration, opportunistic bad faith. Further, bad faith is indicated by the use of a privacy service to conceal the Respondent’s identity.
Respondent says that when he registered the disputed domain name, there
Respondent says he has rights and legitimate interests in the disputed domain name because his purpose in registering it has always been to use it non-commercially as a free speech forum to discuss the advertising activities of Complainant and Tacoda Systems, Inc. [scil. Tacoda] as a newly combined entity. He says his registration and use of the disputed domain name have been in good faith and that he has not received a single penny nor has intended to profit in any way from the domain name.
Respondent seeks dismissal of the Complaint and a declaration of Reverse Domain Name Hijacking.
C. Additional Submissions
The Panel found that both Additional Submissions provided nothing new and material for consideration. Accordingly their substance is not set out here.
Complainant has established all the elements entitling it to the relief it seeks.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”
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;
(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.
For the purposes of this element, it is of no consequence that Complainant owned no rights in the TACODA mark when Respondent registered the disputed domain name, since the relevant time for a complainant to show that it has rights in a mark is the date of the Complaint. See Valve Corp. v. ValveNET, Inc., D2005-0038 (WIPO Mar. 9, 2005), and the cases there cited.
Complainant is the registered proprietor of
numerous AOL and AOL-formative
Tacoda is the registered proprietor of
The test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, disregarding as inconsequential the gTLD “.com”: Wal-Mart Stores, Inc. v. Traffic Yoon, D2006-0812 (WIPO Sept. 20, 2006); Magnum Piering, Inc. v. Mudjackers & Wilson, D2000-1525 (WIPO Feb. 5, 2001).
The two components of the disputed domain name are identical to the Complainant’s marks. The domain name <aoltacoda.com> is confusingly similar to each of those marks. Persons, worldwide, accessing the disputed domain name would be bound to think that the domain name had a connection with Complainant or its subsidiary or both. The Panel decides that the disputed domain name is confusingly similar to the AOL and TACODA marks in which Complainant has rights. See Konica Corp., Minolta Kabushiki Kaisha v. IC, D2003-0112 (WIPO Mar. 31, 2003), (<konicaminolta.net>) and Chevron Corp. v. Young Wook Kim, D2001-1142 (WIPO Dec. 13, 2001), (<chevron-texaco.com>).
Complainant has established this element of its case.
The AOL mark is distinctive and famous. The TACODA mark is also distinctive but less well-known. The Complainant’s assertions, set out above, together with copies of the web page to which the disputed domain name was directed prior to the “cease and desist” letter, are sufficient to constitute a prima facie showing of absence of rights or legitimate interest in the disputed domain name on the part of the Respondent. The evidentiary burden therefore shifts to the Respondent to show by concrete evidence that it does have rights or legitimate interests in that name: Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 23, 2000) and the cases there cited.
Paragraph 4(c) of the Policy sets out, without limitation, circumstances which, if proved, establish the registrant’s rights or legitimate interests to the disputed domain name, namely:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Respondent is not known by the disputed domain name, so sub-paragraph 4(c)(ii) does not apply.
Respondent relies on the circumstances specified in sub-paragraph 4(c)(iii). He claims to have registered the domain name for the sole purpose of a forum for discussion regarding Complainant’s advertising activities. It follows that Respondent must have been fully aware of the AOL and TACODA marks when he registered the domain name. Since the domain name contains nothing to dissociate the registrant from the then owners of the two trademarks, Respondent could not have been unaware that Internet users would be misled into thinking that any website to which the domain name might lead would be authorized by those owners, shortly to be merged. It was therefore incumbent upon Respondent, if his intention really was to operate a free speech site, to ensure that the domain name was not used for commercial gain.
Instead, during the period of almost three
months prior to Respondent’s receipt, on
“As our client is still in the process of developing his site, he had the domain parked with GoDaddy for a limited time. As you may be aware, a domain name holder does not have control over the content on GoDaddy’s parking page. Since he had registered the domain through GoDaddy and since he had not placed a website at that domain, GoDaddy placed the parking page of its own choosing.”
The GoDaddy parking page was provided free of charge to Respondent. It displayed advertisements and links of the kind that commonly generate “click-through” revenue for domain name registrants. They included advertisements for and links to competitors of Complainant and Tacoda. By the time Respondent himself removed any display, following discussion with Complainant’s counsel some days after the “cease and desist” letter, he had received no revenue from those advertisements and links.
Neither the “free” nature of the parking page nor the failure to generate or to have received any revenue therefrom demonstrate absence of intent to use a domain name for commercial gain. By selecting GoDaddy.com, Inc. as his registrar and allowing it to connect the domain name to a parking page where advertising selected according to a program such as Google’s AdSense program was displayed, being a program designed to produce advertisements having some connection with the ideas conveyed by the domain name, Respondent must be held responsible for those advertisements, even though he did not select them himself, and to have intended, by his acquiescence in the arrangement, to obtain for himself a share of any revenues thereby generated.
The Panel is therefore not persuaded that the use of the domain name to lead to the parking page was without intent on the part of Respondent, for commercial gain, misleadingly to divert consumers. The requirements of sub-paragraph 4(c)(iii) are not met.
As to sub-paragraph 4(c)(i), given the fame of the AOL mark, its use in the domain name leading to the GoDaddy parking page showing advertising links to Complainant’s competitors cannot constitute a “bona fide” offering of goods or services: Ciccone v. Parisi & “Madonna.com,” D2000-0847 (WIPO Oct. 16, 2000).
The Panel finds that Respondent has no rights or legitimate interest in the disputed domain name. Complainant has established this element of its case.
Paragraph 4(b) of the Policy states:
"For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location."
It should be noted that the circumstances of bad faith are not limited to the above.
The Panel considers that the Respondent has registered and used the disputed domain name in bad faith. The expression "aoltacoda" is so obviously connected with two well-known companies that its very use by someone with no connection with either of them reeks of opportunistic bad faith. This is particularly so because the domain name registration was effected on the same day as the announcement of the intended acquisition of Tacoda by Complainant.
The inference from the Respondent’s joinder of the
names of AOL and Tacoda shows that he was positioning himself to take advantage
of that acquisition, particularly since both companies owned trademarks and
carried on business in the
Just as Respondent must be held responsible for the content of the GoDaddy parking page, so must that page be treated as Respondent’s web site or other on-line location for the purposes of paragraph 4(b)(iv) of the Policy. The Panel finds that Respondent, by using the domain name to connect to the GoDaddy parking page, intentionally attempted to attract, for commercial gain, Internet users to his website or other on-line location, by creating a likelihood of confusion with Complainant’s AOL and TACODA marks as to the source, sponsorship, affiliation, or endorsement of his website or location. This is evidence of both bad faith registration and bad faith use.
Complainant has established this element of its case.
The fact that the disputed domain name is presently disconnected from any website cannot avail Respondent, since the Panel is not persuaded that he ever intended to establish a free speech site. Although the Response makes reference to his preparations for the content, site hosting, design and contributors continuing after September 6, 2007 (the date the acquisition of Tacoda was completed), he has produced no evidence of any such preparations prior to the “cease and desist” letter. In his Response, he submits what he describes as sample pages of his proposed website (Exhibit 11) which disclaim any association with Complainant. The Panel cannot give any weight to those sample pages because there is no evidence as to when they were prepared.
Accordingly, Respondent’s vigorous and repeated assertions as to his intention to establish a free speech site are entirely unsupported by evidence that he ever took any steps whatsoever to do so until called upon to respond to the Complaint.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <aoltacoda.com> domain name be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Esq.
James A. Carmody, Esq.
Dated: January 21, 2008
I concur in the Panel’s conclusion that Complainant has proved the elements set forth in Paragraph 4(a) of the Policy, and in the Panel’s decision to order that the disputed domain name be transferred to Complainant. While I agree with much of the Panel’s reasoning, I write separately to clarify an admittedly minor point on which I am unable to join the Panel.
As the majority correctly notes, a domain name registrant who allows a third party to use the domain name may properly be held responsible for that party’s actions. Respondent permitted his domain name registrar to establish a “parking” page containing pay-per-click advertisements, and to the extent that this activity represents bad faith use under Paragraph 4(a)(iii), it is bad faith use attributable to Respondent. However, in this case I do not agree that the commercial nature of the “parking” page is probative of Respondent’s rights or legitimate interests under Paragraph 4(a)(ii). Of course the parking page itself does not represent a bona fide offering of goods or services under Paragraph 4(c)(i), and Respondent makes no such claim. But the fact that Respondent permitted the domain name to be used in this manner for a period of time does not preclude him from demonstrating that he has also made a legitimate noncommercial or fair use giving rise to rights or legitimate interests under Paragraph 4(c)(iii). While Respondent has attempted (unsuccessfully) to persuade the Panel that he intended to make legitimate use of the domain name in the future, he clearly has not done so yet, and I would find for Complainant on the second element on that basis.
Professor David E. Sorkin
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