America Online, Inc. v. Mortal Creations,
Inc.
Claim Number: FA0206000114713
PARTIES
Complainant
is America Online, Inc., Dulles, VA
(“Complainant”) represented by James
Davis, of Arent Fox Kintner Plotkin
& Kahn. Respondent is Mortal Creations Inc., Holmes Beach,
FL (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <adultaol.com>,
registered with Verisign.
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.
Hon.
Ralph Yachnin as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on June 26, 2002; the Forum received a hard copy of the
Complaint on June 26, 2002.
On
June 27, 2002, Verisign confirmed by e-mail to the Forum that the domain name <adultaol.com> is registered with
Verisign and that Respondent is the current registrant of the name. Verisign has verified that Respondent is
bound by the Verisign 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 28, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of July 18,
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@adultaol.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
July 25, 2002, pursuant to Complainant’s request to have the dispute decided by
a single-member Panel, the Forum appointed Hon. Ralph Yachnin 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.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. Respondent’s <adultaol.com>
domain name is confusingly similar to Complainant’s registered AOL mark.
2. Respondent does not have any rights or
legitimate interests in the <adultaol.com> domain name.
3. Respondent registered and used the <adultaol.com>
domain name in bad faith.
B. Respondent did not submit a Response in
this proceeding.
FINDINGS
Complainant is the owner of numerous
trademark registrations worldwide for the AOL mark, including U.S. trademark
Reg. Nos. 1,977,731 and 1,984,337, which were registered on June 4, 1996 and
July 2, 1996, respectively. Complainant registered and uses its AOL mark in
connection with, inter alia, providing a broad range of information and
services over the Internet and at the proprietary AOL online system.
Complainant adopted and began using its AOL mark as early as 1989 in connection
with computer online services and other Internet-related services.
Complainant has invested substantial sums
of money in developing and marketing its AOL marks and corresponding services.
With over thirty-four million subscribers, Complainant operates the most widely
used interactive online service in the world. Sales of services under the AOL
and AOL.COM marks have amounted to many billions of dollars.
As a result of the aforementioned circumstances
and information, the AOL brand is one of the most readily recognized and famous
marks used on the Internet. The general public has come to associate
Complainant’s marks with services of high and uniform quality.
Respondent registered the <adultaol.com>
domain name on February 10, 2000. Complainant’s Submission reveals that
Respondent’s domain name resolves to a commercial pornographic website.
Complainant’s investigation also reveals that Respondent attempts to justify
its use of the AOL moniker by stating that it is an acronym that represents
“Adult Amateurs Online.”
DISCUSSION
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.
Complainant has established rights in the
AOL mark through registration with the USPTO and other worldwide authorities,
and continuous use of the mark in commerce since 1989.
Respondent’s <adultaol.com> domain
name is confusingly similar to Complainant’s AOL mark. Respondent’s domain name
incorporates Complainant’s established mark in its entirety, with the addition
of the generic word “adult.” The addition of a generic word to a famous mark
does not detract from the dominating presence of Complainant’s AOL mark, and
fails to create a distinct and separate domain name. See 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); see
also Am. Online Inc. v. Neticq.com
Ltd., D2000-1606 (WIPO Feb. 12, 2001) (finding that the addition of the
generic word “Net” to Complainant’s ICQ mark, makes the <neticq.com>
domain name confusingly similar to Complainant’s mark); 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).
Accordingly, the Panel finds that Policy
¶ 4(a)(i) has been satisfied.
Respondent has failed to submit a
Response in this proceeding. Therefore, it is presumed that Respondent lacks
rights and legitimate interests in the <adultaol.com> domain name.
See Canadian Imperial Bank of
Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000)
(finding no rights or legitimate interests where no such right or interest was
immediately apparent to the Panel and Respondent did not come forward to
suggest any right or interest it may have possessed).
Furthermore, because Respondent failed to
submit a Response in this proceeding, the Panel is permitted to make all
reasonable inferences in favor of Complainant. 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”).
Respondent opportunistically registered
the disputed domain name in order to divert Internet users searching for
Complainant to its commercial website. Furthermore, Respondent’s domain name
resolves to a pornographic website that tarnishes the goodwill associated with
Complainant’s AOL mark. Respondent’s actions fail to demonstrate rights or
legitimate interests in <adultaol.com> pursuant to Policy ¶¶
4(c)(i) and (ii). 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 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).
In communications with Complainant,
Respondent justified its use of the AOL mark by making reference to its alleged
acronym, “Adult Amateurs Online.” However, Respondent has failed to produce any
evidence refuting Complainant’s allegations that Respondent’s justification for
use of the AOL mark is merely coincidental and fabricated. In the absence of a
credible explanation, it can be inferred that Respondent’s purpose is to
mislead Internet users into believing that Complainant is affiliated with
Respondent’s website and connected activities. Due to the fame associated with
Complainant’s AOL mark and its listing on the Principal Register of the USPTO,
a presumption is created that Respondent cannot establish rights and legitimate
interests in a domain name that incorporates Complainant’s mark in its
entirety. See 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); 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.
The criterion specified in ¶ 4(b) of the
Policy does not represent an exhaustive list of bad faith evidence. The Panel
must take into consideration the totality of circumstances in order to
determine if Respondent registered or used the domain name in bad faith. See
Twentieth Century Fox Film Corp. v.
Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in
determining if a domain name has been registered in bad faith, the Panel must
look at the “totality of circumstances”); see also Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000)
(finding that the criteria specified in 4(b) of the Policy is not an exhaustive
list of bad faith evidence).
Because Complainant is an international
corporation that enjoys significant publicity through advertisements and
promotions and its AOL mark is listed on the Principal Register of the USPTO,
Respondent had constructive notice of Complainant’s rights in the AOL mark
prior to registering the infringing domain name. Respondent’s subsequent
registration of the domain name, despite knowledge of Complainant’s preexisting
rights, represents bad faith registration under Policy ¶ 4(a)(iii). See Net2phone Inc. v. Netcall SAGL,
D2000-0666 (WIPO Sept. 26, 2000) (finding constructive notice as a result of
Complainant’s widespread promotional efforts coupled with diversion from
Complainant’s site to Respondents for competing commercial gain is sufficient
evidence of bad faith registration and use); see also Victoria’s Cyber Secret Ltd. P’ship v. V Secret Catalogue,
Inc., 161 F.Supp.2d 1339, 1349 (S.D.Fla. 2001)
(noting that “a Principal Register registration [of a trademark or service
mark] is constructive notice of a claim of ownership so as to eliminate any
defense of good faith adoption” pursuant to 15 U.S.C. § 1072); see also Samsonite Corp. v. Colony Holding, FA
94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith
includes actual or constructive knowledge of a commonly known mark at the time
of registration).
Respondent’s bad faith use of the <adultaol.com>
domain name is demonstrated by the commercial and pornographic site promoted at
the website attached to the domain name. Circumstances indicate that Respondent
is intentionally attempting to attract, for commercial gain, Internet users to
its website by creating a likelihood of confusion among Internet users as to
the source of the website. Respondent’s commercial use of the infringing domain
name evidences bad faith 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); see
also Am. Online, Inc. v. Fu,
D2000-1374 (WIPO Dec. 11, 2000) (finding that ICQ mark is so obviously
connected with Complainant and its products that the use of the domain names by
Respondent, who has no connection with Complainant, suggests opportunistic bad
faith).
Further evidence of Respondent’s bad
faith is shown by Respondent’s use of the infringing domain name to resolve to
a pornographic website. Regardless of the commercial nature of the website,
Respondent suggests a false association between Complainant and the images
presented on its website, thereby tarnishing the goodwill associated with
Complainant’s AOL mark. See Rittenhouse Dev. Co. v.
Domains For Sale, Inc., FA 105211 (Nat. Arb. Forum Apr. 8,
2002) (finding that “when a party registers and uses a domain name that
incorporates a well-known mark and connects the domain name with a website that
depicts offensive images,” the party has registered and used the disputed
domain name in bad faith); see also Brown & Bigelow, Inc.
v. Rodela, FA 96466
(Nat. Arb. Forum Mar. 5, 2001) (use of another's well-known mark to provide a
link to a pornographic site is evidence of bad faith registration and use).
Accordingly,
the Panel determines that Policy ¶ 4(a)(iii) has been satisfied.
DECISION
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 <adultaol.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: July 29, 2002
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