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,
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.
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.
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).
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).
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 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.
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.
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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