America Online, Inc. v. Oxford University a/k/a Oxford U - Domains for Sale Domain-Man.com
Claim Number: FA0206000114654
Complainant is America Online, Inc., Dulles, VA, USA (“Complainant”) represented by James R. Davis, II, of Arent Fox Kintner Plotkin & Kahn. Respondent is Oxford University a/k/a Oxford U - Domains for Sale Domain-Man.com, Piggabeen, AUSTRALIA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <7aol.com>, <aol6.com>, <aolnorth.com>, <aolprime.com>, <aolseven.net>, <aolseven.org>, <aolta.com>, <aolus.net>, <northaol.com>, <primeaol.com>, <americaonlineinc.net>, <americaonlineinc.org>, <americaonlines.net>, <americaonlines.org>, and <americaonlies.com> registered with DotRegistrar.
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 June 20, 2002; the Forum received a hard copy of the Complaint on June 24, 2002.
On July 10, 2002, DotRegistrar confirmed by e-mail to the Forum that the domain names <7aol.com>, <aol6.com>, <aolnorth.com>, <aolprime.com>, <aolseven.net>, <aolseven.org>, <aolta.com>, <aolus.net>, <northaol.com>, <primeaol.com>, <americaonlineinc.net>, <americaonlineinc.org>, <americaonlines.net>, <americaonlines.org> and <americaonlies.com> are registered with DotRegistrar and that Respondent is the current registrant of the names. DotRegistrar has verified that Respondent is bound by the DotRegistrar 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 July 10, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 30, 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, email@example.com, firstname.lastname@example.org, email@example.com, firstname.lastname@example.org, email@example.com, firstname.lastname@example.org, email@example.com, firstname.lastname@example.org, email@example.com and firstname.lastname@example.org by e-mail.
Having received no formal 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 August 7, 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 formal Response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following allegations in this proceeding:
1. Respondent’s domain names are confusingly similar to Complainant’s registered AOL family of marks and specifically Complainant’s AOL and AMERICA ONLINE registered marks.
2. Respondent does not have any rights or legitimate interests in the disputed domain names.
3. Respondent registered and used the subject domain names in bad faith.
B. Respondent submitted several informal e-mails to the Forum, none of which substantively addressed the arguments made by the Complainant. Further, all of Respondent’s submissions failed to comply with the Rules and the Forum’s Supplemental Rules. Accordingly, the Panel will not consider the Respondent’s submissions and will treat this case as if no Response was received.
Complainant is the owner of numerous trademark registrations worldwide for the AOL and AMERICA ONLINE marks (“AOL family of marks”), which among other things Complainant uses in connection with providing services and general interest information on the Internet and around the world. Complainant owns U.S. Patent and Trademark Office Reg. Nos. 1,977,731 and 1,618,148 for the AOL and AMERICA ONLINE marks, which were registered on June 4, 1996 and October 16, 1990, respectively. Complainant also owns Australian Reg. Nos. 655,189 and 662,466, which were registered on March 8, 1995 and May 29, 1995, respectively.
Complainant uses its AOL family of marks in connection with the official AOL Internet website. The AOL and AMERICA ONLINE marks are used extensively at Complainant’s website. As a result, consumers associate the AOL and AMERICA ONLINE marks with Complainant’s services.
Complainant began using the AOL and AMERICA ONLINE marks as early as 1989 in connection with computer online services and other Internet-related services. With over thirty-four million subscribers, AOL operates the most widely used interactive online service in the world. Each year, millions of Complainant’s customers obtain services under the AOL family of marks; millions more are exposed to said marks through advertising and promotion. As a result of these advertising expenditures and sales the distinctive AOL and AMERICA ONLINE marks have become established and famous identifiers among the public.
Respondent registered the fifteen disputed domain names between February 5, 2002 and May 21, 2002. Many of these domain names were registered after a UDRP dispute that involved these same parties and a similar situation. In the previous dispute, Respondent was required to transfer numerous domain names that were infringing on Complainant’s AOL mark, more specifically, <aol7.net>, <aol7.org> and <aol-7.net>, among others.
Complainant’s investigation reveals that Respondent has an extensive history of registering and using infringing domain names that incorporate famous marks. In addition to the already cited domain names, Respondent was found to have been a cybersquatter in several ICANN decisions that included but are not limited to the following: Texas Instruments Inc. v. DM, D2000-1448 (WIPO), Harvey Norman Retailing Party Ltd. v. Oxford-University, D2000-0994 (WIPO), and Chancellor Masters & Scholars at the University of Oxford v. DR Seagle, t/a Mr. Oxford University.
Furthermore, Respondent’s WHOIS information includes suggestive Registrant Information, such as: “Oxford U. – Domains for sale..Domain-Man.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 formal 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 will draw such inferences as 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 in this proceeding that it has rights in the AOL family of marks through registration with various worldwide authorities and by continuous use of the mark in commerce. Complainant’s AOL family of marks enjoys the protection afforded to established, famous and distinct marks.
The domain names registered by Respondent are confusingly similar to Complainant’s registered AOL family of marks. In general, each of Respondent’s domain names incorporate either Complainant’s AOL mark or AMERICA ONLINE mark in its entirety with the addition of a typo, an industry related word, a generic word or a variety of generic top-level domains (“gTLD”). Although a specific analysis will be conducted concerning each domain name, Respondent’s past typosquatting behavior is reflected in his present infringing registration practices.
The domain names registered by Respondent, <7aol.com>, <aol6.com>, <aolseven.net> and <aolseven.org>, are confusingly similar to Complainant’s AOL mark. Complainant utilizes a numbering system to identify its different versions of AOL software, which coincidentally is currently AOL Version 7. Respondent’s infringing domain names reflect Complainant’s famous AOL mark in conjunction with the alphanumeric string that reflects Complainant’s selected software versions. Thus, Respondent’s domain names are confusingly similar. See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that adding the suffixes "502" and "520" to the ICQ trademark does little to reduce the potential for confusion); see also Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the Respondent’s domain name combines the Complainant’s mark with a generic term that has an obvious relationship to the Complainant’s business).
The domain names registered by Respondent, <aolnorth.com>, <aolprime.com>, <aolta.com>, <aolus.net>, <northaol.com> and <primeaol.com>, incorporate Complainant’s AOL mark in its entirety with the addition of a generic or geographic word or incoherent combination of letters. Neither the addition of an ordinary descriptive word nor a geographic qualifier transform Respondent’s domain names into separate and distinct marks for the purpose of a Policy ¶ 4(a)(i) analysis. Respondent’s intention of creating a perceived affiliation with Complainant’s established AOL mark is clear. 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 AXA China Region Ltd. v. KANNET Ltd., D2000-1377 (WIPO Nov. 29, 2000) (finding that common geographic qualifiers or generic nouns can rarely be relied upon to differentiate the mark if the other elements of the domain name comprise a mark or marks in which another party has rights).
The domain names registered by Respondent, <americanonlineinc.net>, <americaonlineinc.org>, <americaonlines.net> and <americaonlies.com>, incorporate Complainant’s registered AMERICA ONLINE mark in its entirety, with the exception of the <americaonlies.com> domain name, which involves a probable Internet user misspelling of Complainant’s mark. Respondent’s domain names perpetuate an underlying confusion, where Internet users may erroneously believe they are visiting a website sponsored or affiliated with Complainant. Respondent’s addition of the common abbreviation of “Incorporated,” variations of the gTLDs, including “.org,” “.net” and “.com,” and an “s” to Complainant’s AMERICA ONLINE mark, fails to detract from the overall dominance of Complainant’s mark. See Treeforms, Inc. v. Cayne Indus. Sales Corp., FA 95856 (Nat. Arb. Forum Dec. 18, 2000) (finding that confusion would result when Internet users, intending to access Complainant’s website, think that an affiliation of some sort exists between Complainant and Respondent, when in fact, no such relationship would exist); see also Nat’l Geographic Soc. v. Stoneybrook Inv., FA 96263 (Nat. Arb. Forum Jan. 11, 2001) (finding that the domain name <nationalgeographics.com> was confusingly similar to Complainant’s “National Geographic” mark); see also Dow Jones & Co., Inc. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000) (holding that the deliberate introduction of errors or changes, such as the addition of a fourth “w” or the omission of periods or other such generic typos do not change the Respondent’s infringement on a core trademark held by Complainant).
As previously stated, gTLDs, such as, “.net,” “.org” and “.com,” are not capable of transforming a confusingly similar second level domain into a distinct mark. Generic top-level domains are required in domain names and are not considered influential when conducting a Policy ¶ 4(a)(i) analysis. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the gTLD “.com” after the name POMELLATO is not relevant); see also Visit Am., Inc. v. Visit Am., FA 95093 (Nat. Arb. Forum Aug. 14, 2000) (finding that the “.com” is part of the Internet address and does not add source identity significance); see also Kabushiki Kaisha Toshiba v. Shan Computers, D2000-0325 (WIPO June 27, 2000) (finding that the domain name <toshiba.net> is identical to the Complainant’s trademark TOSHIBA).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Although the burden of proof is on Complainant, Paragraph 4(c) of the Policy advises Respondent how to demonstrate its rights and legitimate interests in the domain names. Because Complainant asserts that Respondent does not have any rights or legitimate interests, the burden shifts to Respondent to demonstrate such rights or interests. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests in respect of the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where Respondent fails to respond).
Respondent has failed to submit a formal Response in this proceeding and Complainant’s allegations are not challenged and are uncontested. Therefore, the Panel is permitted to make all reasonable inferences in favor of Complainant. See Vertical Solutions Mgmt., Inc. v. Webnet-Marketing, Inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true); see also 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”).
Respondent’s WHOIS records indicate that Respondent intends to sell the domain name registrations. As stated in the Findings, Respondent’s Registrant data is recorded as “Domains for Sale.” Respondent’s apparent willingness to part with the numerous infringing registrations indicates its lack of rights or legitimate interests in the domain names under Policy ¶ 4(a)(ii). See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding Respondent’s conduct purporting to sell the domain name suggests it has no legitimate use); see also Hewlett-Packard Co. v. High Perf. Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests where the Respondent registered the domain name with the intention of selling it).
Respondent’s registration of domain names containing Complainant’s famous marks constitutes an opportunistic attempt to benefit from the goodwill associated with Complainant’s AOL family of marks. The AOL marks are so obviously associated with Complainant that anyone else attempting to assert rights in a domain name incorporating the marks is presumed to lack rights and legitimate interests. Respondent’s opportunistic attempts to divert Internet users to its argumentative websites by using Complainant’s AOL and AMERICA ONLINE marks does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain names under Policy ¶ 4(c)(iii). See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name); 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).
Respondent is not authorized, registered or licensed to use Complainant’s AOL or AMERICA ONLINE marks. The circumstances surrounding Respondent’s registration of the infringing domain names suggest that Respondent is not commonly known by any of the domain names pursuant to Policy ¶ 4(c)(ii). Respondent entered “Domains for sale” as its Registrant data on the WHOIS information page of the domain name registrations and is usually identified by an Oxford University moniker. Because Complainant’s marks benefit from international fame and recognition, a presumption exists that Respondent is not commonly known by domain names that incorporate the established marks in their entirety. 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 Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one “would be hard pressed to find a person who may show a right or legitimate interest” in a domain name containing Complainant's distinct and famous NIKE trademark).
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s WHOIS information exposes its motivations behind registering the infringing domain names. “Domains for sale” implies that Respondent’s intention is to eventually sell or transfer the domain names. Circumstances indicate that Respondent acquired the infringing domain names primarily for the purpose of selling, renting or transferring the registration to Complainant; thus, Respondent’s registration and use constitute bad faith under Policy ¶ 4(b)(i). See Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002) ("[w]hat makes an offer to sell a domain [name] bad faith is some accompanying evidence that the domain name was registered because of its value that is in some way dependent on the trademark of another, and then an offer to sell it to the trademark owner or a competitor of the trademark owner"); see also Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”).
Complainant’s evidence indicates Respondent has established a pattern of conduct of registering infringing domain names incorporating Complainant’s marks. Complainant was successful in acquiring a variety of domain names in a January 29, 2002, dispute that involved the current Respondent. Respondent’s selective targeting of Complainant’s marks represents bad faith registration and use pursuant to Policy ¶ 4(b)(ii) because it is conceivable that Complainant would desire to reflect its AOL mark in conjunction with the current version of its software. See Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)); see also Caterpillar Inc. v. Miyar, FA 95623 (Nat. Arb. Forum Dec. 14, 2000) (finding that registering multiple domain names in a short time frame indicates an intention to prevent the mark holder from using its mark and provides evidence of a pattern of conduct).
Complainant’s AOL family of marks is internationally recognized as being affiliated with Complainant. Respondent’s attempts to benefit indirectly from the fame and accompanying Internet traffic associated with Complainant is an opportunistic attempt to profit from Complainant’s marks. Respondent operates numerous argumentative websites containing disparaging remarks about various topics and relies on disseminating his views via Internet users. Respondent’s opportunistic registration and use of Complainant’s marks in the subject domain names is bad faith registration and use under Policy ¶ 4(b)(iv). See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the “domain names are so obviously connected with the Complainants that the use or registration by anyone other than Complainants suggests ‘opportunistic bad faith’”); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”); see also Reuters Ltd. v. Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000) (finding that Respondent demonstrated bad faith where Respondent was aware of Complainant’s famous mark when registering the domain name as well as aware of the deception and confusion that would inevitably follow if he used the domain names).
Based on the above evidence, 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 relief shall be hereby GRANTED. Accordingly, it is Ordered that the <7aol.com>, <aol6.com>, <aolnorth.com>, <aolprime.com>, <aolseven.net>, <aolseven.org>, <aolta.com>, <aolus.net>, <northaol.com>, <primeaol.com>, <americaonlineinc.net>, <americaonlineinc.org>, <americaonlines.net>, <americaonlines.org> and <americaonlies.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: August 21, 2002.
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