America Online, Inc. v. Server Central
Network a/k/a Customer Owned Domain
Claim Number: FA0206000114475
PARTIES
Complainant
is America Online, Inc., Dulles, VA
(“Complainant”) represented by James R.
Davis, of Arent Fox Kintner Plotkin
& Kahn. Respondent is Server Central Network a/k/a Customer
Owned Domain, Chicago, IL (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <aolerotica.com>,
registered with Enom, Inc.
PANEL
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.
Louis
E. Condon as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on June 5, 2002; the hard copy was received on June 17, 2002.
On
June19, 2002 , Enom, Inc. confirmed by e-mail to the Forum that the domain name
<aolerotica.com> is registered
with Enom, Inc. and that the Respondent is the current registrant of the
name. Enom, Inc. has verified that
Respondent is bound by the Enom, 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
June 19, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of July 9,
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 postmaster@aolerotica.com by e-mail.
A
timely Response was received and determined to be complete on July 9, 2002.
On July 29, 2002, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the Forum appointed Louis E. Condon as
Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant is the owner of numerous
trademark registrations worldwide for the mark AOL, including U.S. trademark
registration Nos. 1,977,731 and 1,984,337, which were registered on June 4,
1996 and July 2, 1996, respectively. Complainant owns U.S. trademark
registrations Nos. 2,325,291 and 2,325,292 for the mark AOL.COM. Complainant
uses its mark AOL.COM as a domain name for its web site, wherein its mark AOL
is used extensively as a significant method of promoting Complainant’s various
computer related sales and services. As a result, consumers associate the mark
AOL, when used in a domain name, with Complainant’s services. Long prior to
Respondent’s registration of <aolerotica.com>, Complainant adopted
and began using its marks in connection with computer online services and other
Internet related services.
Complainant has invested substantial sums
of money in developing and promoting its AOL mark worldwide. Its success is
evidenced by the fact that Complainant has over thirty-four million
subscribers. The <aolerotica.com> domain is nearly identical and
confusingly similar to the AOL and AOL.com marks. Consumer confusion is likely.
Respondent is not licensed or authorized to use Complainant’s marks.
Respondent’s bad faith registration is
evidenced by the fact that the domain name <aolerotica.com> was
registered many years after the Complainant’s marks were registered and had
become famous and well known to consumers. Respondent’s bad faith use is
demonstrated by the commercial and pornographic site promoted at the domain.
Respondent has registered and used <aolerotica.com> in a bad faith
attempt to play off the Complainant’s mark
Complainant attempted to resolve this
dispute amicably with the alleged owner
of the domain name but received no response. The Whois records list Respondent
as the sole registrant of the domain name <aolerotica.com>. The
Response provided to the Panel was filed in the name of the alleged owner.
B.
Respondent
Respondent states that there was no
bad faith intention or effort to capitalize on Complainant’s world famous mark.
The site is still in production and Respondent never intended to make it a
revenue generating website or to be confused with the America Online site.
Respondent elected to use the acronym <aolerotica.com> rather than the full name
AllOnlineErotica.com to make the domain name a manageable url. Furthermore,
Respondent claims that acronyms, such as AOL are subject to fair use and that
Complainant should not be able to claim the AOL acronym for all uses.
Respondent did not specifically
address the confusingly similar issue, but did assert that its site is visually
and graphically different from Complainant’s. Respondent states that Internet
users are savvy enough to realize that similar name sites may be of very
dissimilar content.
FINDINGS
Complainant has worldwide registration
rights in the marks AOL and AOL.COM.
The domain name registered by the
Respondent is identical or confusingly similar to Complainant’s marks.
Respondent has not been licensed or
authorized to use the AOL mark, nor is it commonly known by the <aolerotica.com>
domain name. Respondent’s use of the Complainant’s mark is not in connection
with a bona fide offering of goods
and services. Respondent has no rights or legitimate interests in respect of
the domain name.
Complainant’s trademark was in use and
well known for several years before the Respondent registered its domain name, <aolerotica.com>.
Use of the domain name creates confusion as to Complainant’s affiliation with
the website. Respondent registered the domain name in bad faith.
DISCUSSION
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.
Identical and/or Confusingly Similar
Complainant asserts its rights in
numerous trademark registrations worldwide for the
AOL
mark, including U.S. Patent and Trademark Office (“USPTO”) Reg. Nos. 1,977,731
and 1,984,337. Complainant uses the AOL
mark in association with a wide assortment of computer related products and
services. Furthermore, Complainant
holds registered trademark rights in AOL.COM (USPTO Reg. Nos. 2,325,291 and
2,325,292). Complainant notes that it
uses the AOL.COM mark for a website address, which resolves to a website where
Complainant extensively uses its AOL mark.
Complainant
asserts that because of its promotion efforts and large clientele the AOL mark
has become “very well-known and famous,” along with becoming readily associated
with Complainant’s high quality services.
Respondent’s <aolerotica.com>
domain name is confusingly similar to its AOL mark. Complainant contends that the addition of the generic word
“erotica” fails to detract from the dominating presence of its “famous and
distinctive mark.” Complainant believes
that the similarity could cause confusion as to its association with the
website located at <aolerotica.com>, which Complainant claims is a
website devoted to pornography. 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 Sony Kabushiki
Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that
“[n]either the addition of an ordinary descriptive word…nor the suffix ‘.com’
detract from the overall impression of the dominant part of the name in each
case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied); see
also Perot Sys. Corp. v. Perot.net,
FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding that, given the similarity of
the Complainant’s marks with the domain name, consumers will presume the domain
name is affiliated with the Complainant).
Rights or Legitimate Interests
Complainant
asserts that Respondent has not been licensed or authorized to use the AOL mark in Respondent’s <aolerotica.com>
domain name. There is no evidence on
the record that shows Respondent is commonly known by the <aolerotica.com>
domain name as required by Policy ¶ 4(c)(ii).
Therefore, Respondent has no rights or legitimate interests in the
domain name pursuant to Policy ¶ 4(c)(ii).
See Compagnie de Saint
Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no
rights or legitimate interest where Respondent was not commonly known by the
mark and never applied for a license or permission from Complainant to use the
trademarked name); see also Gallup
Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001)
(finding that Respondent does not have rights in a domain name when Respondent
is not known by the mark).
Furthermore,
Respondent has no rights and legitimate interests in the <aolerotica.com>
domain name pursuant to Policy ¶¶ 4(c)(i) and (iii). Respondent uses its domain name as an address for its “commercial
and pornographic” website. The Panel
may find that use of another entity’s trademark to promote a pornographic
website is not in connection with a bona fide offering of goods or service and
is not a fair use. 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); see also State Farm Mut.
Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000)
(finding that “unauthorized providing of information and services under a mark
owned by a third party cannot be said to be the bona fide offering of goods or
services”); see also Big Dog
Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no
legitimate use when Respondent was diverting consumers to its own website by
using Complainant’s trademarks).
Registration and Use in Bad Faith
Complainant
argues that its AOL mark had become famous many years before Respondent
registered the <aolerotica.com> domain name. The Panel may find, because of the distinct
and famous status of the AOL mark prior to Respondent’s registration, that
Respondent had knowledge of Complainant’s rights in the mark and the likelihood
for potential consumer confusion. Thus,
Respondent registered the 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).
Complainant
further argues that Respondent registered the <aolerotica.com> domain
name in order to attract Internet users for commercial gain. Complainant repeatedly argues that the
domain name and associated website creates confusion as to Complainant’s
affiliation with the website.
Complainant contends that Respondent’s use of the domain name
constitutes bad faith. The Panel may
find that Complainant’s arguments are in accord with Policy ¶ 4(b)(iv). See Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000)
(finding bad faith where the Respondent linked the domain name in question to
websites displaying banner advertisements and pornographic material); see
also 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 State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum
Sept. 12, 2000) (finding bad faith where Respondent registered the domain name
<bigtex.net> to infringe on Complainant’s goodwill and attract Internet
users to Respondent’s website).
Lastly, Respondent claims that it tried
to amicably settle the case with Respondent prior to initiating this dispute
but Respondent never replied.
Complainant contends that this is further evidence of Respondent’s bad
faith registration of the domain name.
DECISION
Complainant having proved its case, the
domain name registration is transferred to the Complainant.
.
Louis E. Condon, Panelist
Dated: August, 3, 2002
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