National Arbitration Forum

 

DECISION

 

AOL LLC v. shayzone c/o Master User

Claim Number: FA0901001241368

 

PARTIES

Complainant is AOL LLC (“Complainant”), represented by James R. Davis of Arent Fox LLP, Washington, D.C., USA.  Respondent is shayzone c/o Master User (“Respondent”), Illinois, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <aolcomments.com>, <pimpmyaol.com>, <pimpyouraol.com>, and <aolsnippets.com>, registered with The Planet Internet Services, Inc.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically January 6, 2009; the National Arbitration Forum received a hard copy of the Complaint January 7, 2009.

 

On January 7, 2009, The Planet Internet Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <aolcomments.com>, <pimpmyaol.com>, <pimpyouraol.com>, and <aolsnippets.com> domain names are registered with The Planet Internet Services, Inc. and that the Respondent is the current registrant of the names.  The Planet Internet Services, Inc. verified that Respondent is bound by the The Planet Internet Services, Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On January 8, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 28, 2009, 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@aolcomments.com, postmaster@pimpmyaol.com, postmaster@pimpyouraol.com, and postmaster@aolsnippets.com by e-mail.

 

A timely Response was received and determined to be complete January 28, 2009.

 

On February 6, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A.     Complainant makes the following allegations in this proceeding:

1.      Respondent registered a domain name that is identical to or confusingly similar to a mark in which Complainant has exclusive rights.

2.      Respondent has neither rights to nor legitimate interests in the domain name containing Complainant’s protected mark.

3.      Respondent registered and used the disputed domain name in bad faith.

 

B.     Respondent makes the following points in response:

1.      Respondent urges that his use of the RUNNING MAN logo is parody and notes that many others use it as well.

2.      Different meanings are attached to the RUNNING MAN use and are not associated with Complainant.

3.      Respondent’s use of the disputed e-mails is to host users of “various social network sites.”

4.      Respondent applies the “Always on Line” meaning to Complainant’s America Online mark.

5.      Respondent’s content is “family friendly and does not impart a negative view of AOL.com.”

6.      Respondent’s site is not “rated X.”

7.      Respondent did not register the sites in bad faith and has not offered to sell them.

 

FINDINGS

 

DISCUSSION

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 Complainant to 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)   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 to and/or Confusingly Similar

 

Complainant established that it has rights in the AOL mark (i.e. Reg. No. 1,977,731 issued June 4, 1996), through registration with the United States Patent and Trademark Office (“USPTO”).  The Panel finds that Complainant has rights in the AOL mark pursuant to Policy ¶ 4(a)(i).  See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Nat. Arb. Forum Mar. 5, 2007) (“The Panel finds that Complainant has established trademark rights in the CLEAR BLUE marks through introduction of the certificates for its U.S. registration for those trademarks.  The U.S. Trademark Act is clear that the certificate of registration on the Principal Register, as here, is prima facie evidence of the validity of the registered mark and the registrant's exclusive right to use the mark in commerce in on or in connection with the goods specified in the registration.”).

 

Complainant also contends that the disputed <aolcomments.com>, <pimpmyaol.com>, <pimpyouraol.com>, and <aolsnippets.com> domain names are confusingly similar to Complainant’s AOL mark despite the additions of generic words such as “comments,” “pimp,” “my,” “your,” and “snippets,” and the generic top-level domain “.com.”  The Panel notes that addition of a gTLD is considered immaterial in a Policy ¶ 4(a)(i) analysis.  See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).  Given its notoriety and leadership among Internet providers, the Panel finds that the AOL mark is well-known and therefore it is the dominant recognizable feature that is common to all of Respondent’s disputed domain names at issue here.  The Panel finds that addition of generic words fail in each instance to create a meaningful distinction that distinguishes the domain name from that of Complainant’s.  The disputed domain names are each confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).  See NIIT Ltd. v. Parthasarathy Venkatram, D2000-0497 (WIPO Aug. 4, 2000) (finding that the “domain name ‘myniit.com,’ which incorporates the word NIIT as a prominent part thereof, is confusingly similar to the Complainant’s trade name and trademark NIIT”); see also Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element).

 

Respondent asserts that no evidence shows that the disputed domain names are confusingly similar to Complainant’s mark; however, the Panel disagrees.

 

            The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).

 

 

 

Rights to or Legitimate Interests

 

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii).  Once Complainant does so, as Complainant has done here, then the burden shifts to Respondent to show that it does have rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light.  If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).

 

Complainant alleges that Respondent is not commonly known by the disputed domain names because: (1) the WHOIS information lists Respondent as “shayzone c/o Master User;” and (2) Complainant has not licensed or authorized Respondent to use the AOL mark.  The Panel finds that review of the presentations establish that Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii).  See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).

 

Complainant also alleges that Respondent’s disputed domain names resolve to commercial websites that offer online services similar or identical to Complainant’s services, as well as provide pay-per-click advertisements and links.  Complainant also contends that the resolving websites display Complainant’s marks and logos.  Complainant submitted screenshots of the resolving websites to support its allegations.  After review of the record and the elements, the Panel finds that Respondent used the disputed domain names as Complainant alleges. The Panel finds that Respondent failed to make a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and failed to show a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also Am. Int’l Group, Inc. v. Benjamin, FA 944242 (Nat. Arb. Forum May 11, 2007) (Panelist Tyrus R. Atkinson, Jr., dissenting) (finding that the respondent’s use of a confusingly similar domain name to advertise real estate services which competed with the complainant’s business did not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).

 

Complainant asserts that the addition of a disclaimer on Respondent’s websites subsequent to Complainant’s negotiations with Respondent fails to mitigate consumer confusion.  The Panel finds that addition of a disclaimer does not create rights or legitimate interests for Respondent under Policy ¶ 4(a)(ii).  See DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that addition of a disclaimer, when the domain name consists of the complainant’s well-known trademark, does not counter the expectation of Internet users that the domain name is sponsored by the complainant); see also AltaVista Co. v. AltaVisa, FA 95480 (Nat. Arb. Forum Oct. 31, 2000) (finding that since a disclaimer does not, and could not, accompany the domain name, then the “domain name attracts the consumer’s initial interest and the consumer is misdirected long before he/she has the opportunity to see the disclaimer”).

 

While Respondent contends that its pay-per-click advertising is generated by third-parties, the Panel finds that Respondent bears the ultimate responsibility for the content of its websites, and that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii).  See Netbooks, Inc. v. Lionheat Publ’g, FA 1069901 (Nat. Arb. Forum Oct. 18, 2007) (“The Panel also notes that Respondent is responsible for the content of any website using the domain name at issue, and cannot pass that responsibility off to its registrar or domain name service provider.”); see also StaffEx Corp. v. Pamecha, FA 1029545 (Nat. Arb. Forum Aug. 27, 2007) (“Respondent has alleged that the registrar, GoDaddy, has posted these [competing] links for the website associated with the Domain Name.  However, the Panel finds this is no excuse and holds Respondent accountable for the content posted to the site that resolves from the Domain Name.”).

 

Respondent contends that it is offering only one service: non-competitive comment posting to social networking websites.  Respondent claims that Complainant does not offer this service.  Moreover, Respondent asserts that its uses only one disputed domain name (<aolcomments.com>) for this activity.  The Panel rejects this contention after review of the submissions, and finds that Respondent is making opportunistic use of AOL’s fame in a way that does not constitute a bona fide use.

 

Respondent also argues that the domain names are generic and of common use and that, therefore, Complainant does not have an exclusive monopoly on the terms on the Internet.  The Panel rejects this argument because Respondent’s disputed domain names each contain Complainant’s famous mark, AOL.

 

Respondent also asserts that it placed a disclaimer on the resolving website so as to make sure that Internet users would not be confused.  A disclaimer is something that Internet users find only after they have accessed the site.  The Panel finds the disclaimer is irrelevant to the appropriate result here.

 

Respondent also argues that it contracts with Google Adsense, which offers common targeted advertising.  Respondent disclaims any intent to target Complainant, and states that this third-party simply provides advertising.  The Panel disagrees with Respondent’s position.

 

The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Complainant alleges that Respondent registered and used the disputed domain names in bad faith.  The Panel finds that Respondent’s use of the disputed domain names was intentionally designed to disrupt Complainant’s business activities for Respondent’s own commercial gain.  This supports a finding that Respondent registered and is using the disputed domain names in bad faith under Policy ¶ 4(b)(iii).  See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business.  The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website).

 

Complainant also contends that Respondent has registered and used the disputed domain names in bad faith by intentionally attracting Internet users for commercial gain by trading off of the goodwill surrounding Complainant’s AOL mark.  The Panel finds that Respondent sought to attract Internet users for commercial gain through a likelihood of confusion between Complainant’s well-known mark and the disputed domain names, and such conduct supports findings that Respondent registered and is using the disputed domain names in bad faith under Policy ¶ 4(b)(iv).  See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was commercially gaining from the likelihood of confusion between the complainant’s AIM mark and the competing instant messaging products and services advertised on the respondent’s website which resolved from the disputed domain name); see also AOL LLC v. iTech Ent, LLC, FA 726227 (Nat. Arb. Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).

 

Complainant asserts as well that addition of a disclaimer on Respondent’s website subsequent to Complainant’s negotiations with Respondent fails to mitigate bad faith.  The Panel agrees under Policy ¶ 4(a)(iii).  See Ciccone v. Parisi, D2000-0847 (WIPO Oct. 12, 2000) (“Respondent’s use of a disclaimer on its website is insufficient to avoid a finding of bad faith.  First, the disclaimer may be ignored or misunderstood by Internet users.  Second, a disclaimer does nothing to dispel initial interest confusion that is inevitable from Respondent’s actions.  Such confusion is a basis for finding a violation of Complainant’s rights.”); see also Auxilium Pharm., Inc. v. Patel, FA 642141 (Nat. Arb. Forum Apr. 6, 2006) (“Respondent’s use of a disclaimer on its website does not mitigate evidence of bad faith registration and use under Policy ¶ 4(a)(iii).”).

 

Complainant also contends that due to the AOL mark’s famous and well-known status, Respondent likely had actual notice of the mark.  The fame associated with Complainant’s well-known mark supports findings that Respondent knew about Complainant’s claims to the mark and opportunistically sought to capitalize on that fame in registering and using each of the disputed domain names.  Such conduct constitutes bad faith under Policy ¶ 4(a)(iii).  See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration); see also Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith).

 

The Panel further finds that Respondent, as owner of the disputed domain names, bears the ultimate responsibility for the content displayed on any corresponding website, and that Respondent has engaged in bad faith registration and use under Policy ¶ 4(a)(iii).  See St. Farm Mutual Auto. Insr. Co. v. Pompilio, FA 1092410 (Nat. Arb. Forum Nov. 20, 2007) (“As a rule, the owner of a parked domain name does not control the content appearing at the parking site.  Nevertheless, it is ultimately Respondent who is responsible for how its domain name is used.”); see also Baylor Univ. v. Red Hot Web Gems, Inc., FA 1082178 (Nat. Arb. Forum Dec. 3, 2007) (“Respondent has established that it does not receive any of the revenues from the click-through fees from the links displayed on the websites that resolve from sites associated with the domain names at issue … [However], Respondent has allowed the domains to be used to attract, for commercial gain, Internet users who may be confused as to Complainant’s affiliation with those sites.  To a majority of the Panel, this is sufficient evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).

 

Having found that the Respondent acted in bad faith in registering and using the disputed domain names, the Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <aolcomments.com>, <pimpmyaol.com>, <pimpyouraol.com>, and <aolsnippets.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

 

Hon. Carolyn Marks Johnson, Panelist
Dated: February 20, 2009.

 

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