America Online, Inc. v. aolgirlsgonewild.com
Claim Number: FA0207000117319
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.
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.
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 email@example.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.
Complainant requests that the domain name be transferred from Respondent to 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.
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”).
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.
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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