America Online, Inc. v. Server Central Network a/k/a Customer Owned Domain
Claim Number: FA0206000114475
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.
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.
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 firstname.lastname@example.org 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.
Complainant requests that the domain name be transferred from Respondent to 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.
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.
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.
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.
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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