America Online, Inc. v.
aolgirlsgonewild.com
Claim Number: FA0207000117319
PARTIES
Complainant
is America Online, Inc., Dulles, VA
(“Complainant”) represented by James R.
Davis, of Arent Fox Kintner Plotkin
& Kahn. Respondent is aolgirlsgonewild.com, Beverly Hills,
CA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <aolgirlsgonewild.com>,
registered with Tucows.
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.
Tyrus
R. Atkinson, Jr., as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on July 29, 2002; the Forum received a hard copy of the
Complaint on July 29, 2002.
On
July 30, 2002, Tucows confirmed by e-mail to the Forum that the domain name <aolgirlsgonewild.com> is
registered with Tucows and that Respondent is the current registrant of the
name. Tucows has verified that
Respondent is bound by the Tucows 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 30, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of August 19,
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@aolgirlsgonewild.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
September 5, 2002, pursuant to Complainant’s request to have the dispute
decided by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr.,
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 <aolgirlsgonewild.com>
domain name is confusingly similar to Complainant’s AOL mark.
2. Respondent does not have any rights or
legitimate interests in the <aolgirlsgonewild.com> domain name.
3. Respondent registered and uses the <aolgirlsgonewild.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
FINDINGS
Complainant is the owner of 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, which were
registered on June 4, 1996 and July 2, 1996, respectively. Complainant’s AOL
trademark denotes, inter alia, computer services, namely leasing access
time to computer databases, computer bulletin boards and networks. Complainant
began using the AOL mark in commerce since as early as 1989.
Complainant’s online system has over
thirty-four million subscribers; thereby constituting one of the most widely
used interactive online services in the world. Complainant has invested
substantial sums of money in developing and marketing its services under the
AOL mark. As a result of Complainant’s extensive efforts, its AOL mark is one
of the most readily recognized and famous marks on the Internet.
Respondent registered the <aolgirlsgonewild.com>
domain name on June 22, 2002. Respondent’s domain name resolves to a
website that contains pornographic content and links to gambling websites.
Complainant’s investigation of Respondent’s activities reveals that Respondent’s
website makes prominent use of the AOL mark (e.g., the main title banner at the
top of the website is labeled “AOL Girls,” in addition, the website claims
“AOL’s instant messenger is the ultimate tool for hooking up with woman”).
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 adequately demonstrated
its rights in the AOL mark through registration and continuous use of the mark
in commerce since at least 1989.
Respondent’s <aolgirlsgonewild.com>
domain name is confusingly similar to Complainant’s AOL mark. Not only is
Respondent’s intention to capitalize on the goodwill associated with
Complainant’s mark clear, but Respondent extensively uses Complainant’s mark
and logo on its website, thereby intentionally furthering confusion.
Respondent’s domain name incorporates Complainant’s entire mark, with the
addition of the “girlsgonewild” phrase. Respondent’s second-level domain
implies an affiliation that simply does not exist; thus, Respondent’s domain name
is rendered confusingly similar under Policy ¶ 4(a)(i). See America 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 Oki Data Americas, Inc. v. ASD Inc., D2001-0903 (WIPO Nov. 6, 2001)
(“the fact that a domain name incorporates a Complainant’s registered mark is
sufficient to establish identical or confusing similarity for purposes of the
Policy despite the addition of other words to such marks”).
Accordingly, the Panel finds that Policy
¶ 4(a)(i) has been satisfied.
Respondent failed to contest
Complainant’s accusations or evidence contained in its Submission. Because
Respondent did not submit a Response, all of Complainant’s reasonable
inferences and assertions are taken as true. Therefore, Respondent’s lack of
rebutting Complainant’s prima facie case implies that Respondent does
not have any rights or legitimate interests in the domain name under Policy ¶
4(a)(ii). 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 Parfums Christian Dior v. QTR Corp.,
D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response,
Respondent has failed to invoke any circumstance which could demonstrate any
rights or legitimate interests in the domain name).
As stated, Complainant’s Submission to
the Panel indicates Respondent’s domain name resolves to a pornographic
website. Respondent’s website prominently displays Complainant’s famous AOL
mark in an attempt to capitalize from the goodwill associated with Complainant’s
mark among the public, thereby tarnishing the reputation of the AOL mark.
Respondent’s opportunistic registration and infringing use of Complainant’s
mark is not in connection with a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i). Presumably, because it’s the nature of the
industry, Respondent commercially benefits from its pornographic website and
gambling links. Therefore, Respondent is not making a legitimate noncommercial
or fair use of the domain name 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 Société des Bains de Mer v. Int’l Lotteries, D2000-1326 (WIPO Jan.
8, 2001) (finding no rights or legitimate interests where Respondent used the
<casinomontecarlo.com> and <montecarlocasinos.com> domain names in
connection with an online gambling website); 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 to tarnish Complainant’s mark).
There is no evidence before this Panel
that suggests Respondent has demonstrated rights or legitimate interests in the
subject domain name pursuant to Policy ¶ 4(c)(ii). Respondent has not proffered
any information that would support the assertion that it is commonly known by
the <aolgirlsgonewild.com> domain name. On the contrary, all
evidence leads to the inference that Respondent registered the infringing domain
name in an attempt to commercially benefit from a false affiliation with
Complainant. See Victoria’s Secret
v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (finding sufficient
proof that Respondent was not commonly known by a domain name confusingly similar
to Complainant’s VICTORIA’S SECRET mark because of Complainant’s
well-established use of the mark); see also Nokia Corp. v. Nokiagirls.com,
D2000-0102 (WIPO Apr. 18, 2000) (finding that Respondent has no rights or
legitimate interests in the <nokiagirls.com> domain name because there
was no element on the website that would justify use of the word NOKIA within
the domain name).
Accordingly, the Panel finds that Policy
¶ 4(a)(ii) has been satisfied.
Respondent’s bad faith registration of
the <aolgirlsgonewild.com> domain name is evidenced by the fact
that the domain name was registered many years after Complainant’s AOL mark was
registered in the U.S. and had acquired its fame. Complainant’s AOL mark is
listed on the Principal Register of the USPTO, and Respondent’s intentional use
of Complainant’s mark and corresponding logo indicates that Respondent was
aware of Complainant’s rights in the AOL mark. Respondent’s subsequent
registration of the infringing domain name, despite knowledge of Complainant’s
rights, constitutes bad faith registration under Policy ¶ 4(a)(iii). See 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); see also 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 worldwide prominence of the mark, and thus, Respondent registered the
domain name in bad faith); 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).
Respondent’s bad faith use of
the <aolgirlsgonewild.com> domain name is demonstrated by the
commercial pornographic website promoted at the subject domain name.
Respondent’s attempt to commercially benefit from an infringing use of
Complainant’s AOL mark represents opportunistic bad faith under Policy ¶
4(b)(iv). By using the domain name, Respondent has intentionally attempted to
attract, for commercial gain, Internet users to its infringing location by
creating a perceived affiliation with Complainant. Furthermore, Respondent’s
use of Complainant’s mark in connection with pornography tarnishes the goodwill
and reputation Complainant has developed in its AOL moniker through extensive
advertising, marketing and operations. See Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000)
(finding that absent contrary evidence, linking the domain names in question to
graphic, adult-oriented websites is evidence of bad faith); see also Youtv, Inc. v. Alemdar, FA 94243 (Nat.
Arb. Forum Apr. 25, 2000) (finding bad faith where Respondent attracted users
to his website for commercial gain and linked his website to pornographic
websites); 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
website to cause confusion as to the source or affiliation of the site).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Having established all three elements
required under ICANN Policy, the Panel concludes that relief shall be hereby GRANTED.
Accordingly, it is Ordered that the <aolgirlsgonewild.com>
domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: September 19, 2002
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