America Online, Inc. v. Hershey Chitrik
Claim Number: FA0209000124854
PARTIES
Complainant
is America Online, Inc., Dulles, VA
(“Complainant”) represented by James R.
Davis, II, of Arent Fox Kintner
Plotkin & Kahn. Respondent is Hershey Chitrik, Brooklyn, NY
(“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <aolserver.net>
and <aol10.com>, registered with Go Daddy Software, Inc. and Dotster.com.
PANEL
On
October 25, 2002, pursuant to Complainant’s request to have the dispute decided
by a single-member Panel, the Forum appointed James P. Buchele as
Panelist. 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.
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on September 10, 2002; the Forum received a hard copy of the
Complaint on September 9, 2002.
On
September 10, 2002, Go Daddy Software, Inc. and Dotster.com confirmed by e-mail
to the Forum that the domain names <aolserver.net>
and <aol10.com> are registered with Go Daddy Software, Inc. and
Dotster.com and that Respondent is the current registrant of the names. Go Daddy Software, Inc. and Dotster.com have
verified that Respondent is bound by the Go Daddy Software, Inc. and
Dotster.com registration agreements 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
September 12, 2002, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of October 2, 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@aolserver.net and postmaster@aol10.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.
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 names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
The
<aolserver.net> and <aol10.com> domain names are confusingly similar to
Complainant’s AOL mark.
Respondent
has no rights or legitimate interests in the <aolserver.net> and <aol10.com> domain names.
Respondent
registered and used the <aolserver.net>
and <aol10.com> domain names in bad faith.
B.
Respondent
Respondent failed to submit a Response in
this proceeding.
FINDINGS
Complainant is the owner of numerous
worldwide trademark registrations for the AOL mark. Complainant has secured its rights in the AOL mark with the
United States Patent and Trademark Office (“USPTO”) as Reg. Nos. 1,977,731 and
1,984,337, which were registered on June 4, 1996 and July 2, 1996,
respectively.
Complainant has extensively used the AOL
mark in connection with computer related services. Some of the services Complainant uses the AOL mark for are as
follows: leasing access time to
computer databases, computerized research for a variety of subject matters,
computerized shopping, and telecommunications services, namely electronic mail
and transmission of data/documents via computer terminals. Complainant has invested a substantial
amount of resources and money in developing and marketing all of its AOL
services, including advertising the AOL mark in television, radio, and print. As a result, Internet users readily
associate the AOL mark with Complainant’s quality services.
Complainant operates on the Internet at
<aol.com>, where Complainant provides access to all its aforementioned
services, among others. Complainant’s
online services are used by a wide array of individuals, as Complainant has
over thirty-four million subscribers.
The amount of exposure due to the widespread use of AOL related services
and promotion of those services has bestowed upon the AOL mark a status of fame
and notoriety unlike many other trademarks.
Respondent registered the <aolserver.net> and <aol10.com> domain names on July 26, 2000. Respondent uses the domain names to promote
its commercial jewelry business by linking the domain names to a website that
sells jewelry. Complainant notes that
its online AOL shopping services include the sale of jewelry.
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 Respondent
is identical or confusingly similar to a trademark or service mark in which
Complainant has rights; and
(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 and/or Confusingly Similar
Complainant has established its rights in
the AOL mark through proof of registration with the USPTO and substantial use
of the mark in connection with its computer related services.
Respondent’s <aolserver.net> and <aol10.com> domain names
incorporate Complainant’s entire AOL mark.
The <aolserver.net> domain name merely adds the generic
computer related term “server” to the AOL mark. The word “server” is defined as “a computer that stores files and
provides them to workstations connected to it.” Hence, there is a relation between Complainant’s AOL services and
the added word “server,” and the domain name fails to distinguish itself from
the AOL mark. Furthermore, the <aol10.com>
domain name is confusingly similar to the AOL mark because the addition of
numerals to a mark, especially a well-known mark such as AOL, does not defeat a
confusingly similar claim. Therefore,
Respondent’s <aolserver.net> and <aol10.com> domain names are confusingly similar to
Complainant’s AOL mark. See Arthur Guinness Son & Co. (Dublin)
Ltd. v. Healy/BOSTH, D2001-0026
(WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in
dispute contains the identical mark of Complainant combined with a generic word
or term); see also Am. Online,
Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that adding the
suffixes "502" and "520" to the ICQ trademark does little
to reduce the potential for confusion).
The Panel finds that Policy ¶ 4(a)(i) has
been satisfied.
Rights or Legitimate Interests
Complainant has successfully alleged a prima
facie Complaint, in which Complainant asserts that Respondent has no rights
or legitimate interests in the <aolserver.net>
and <aol10.com> domain names.
Complainant’s allegations and complete Complaint shift the burden onto
Respondent to articulate its rights or legitimate interests in the domain
names. Respondent, however, has failed
to even come forward in this dispute and therefore the Panel may presume that
Respondent has no such rights or legitimate interests. See Do The Hustle, LLC v. Tropic
Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts
that Respondent has no rights or legitimate interests in respect of the domain,
the burden shifts to Respondent to provide credible evidence that substantiates
its claim of rights and legitimate interests in the domain name); see also
Pavillion Agency, Inc. v. Greenhouse Agency
Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to
respond can be construed as an admission that they have no legitimate interest
in the domain names).
In addition, Respondent’s failure to
challenge the Complaint allows all reasonable inferences to be drawn in favor
of Complainant, and the Panel will accept Complainant’s uncontested allegations
as true. 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 Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000)
(finding that failing to respond allows a presumption that Complainant’s
allegations are true unless clearly contradicted by the evidence).
Respondent uses the <aolserver.net> and <aol10.com> domain names to
resolve to its commercial jewelry website, where it solicits orders for a wide
array of jewelry. Hence, Respondent
simply diverts Internet users to a website that has nothing to do with the
content of the domain names, as Respondent’s jewelry store is apparently called
“Aaron & Sons, Inc.” Respondent’s
use of the domain names to increase web-traffic to its own commercial website
does not evidence rights or legitimate interests in the domain name under
Policy ¶¶ 4(c)(i) or (iii). See Big Dog Holdings, Inc. v. Day, FA 93554
(Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was
diverting consumers to its own website by using Complainant’s trademarks); see
also MSNBC Cable, LLC v. Tysys.com,
D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in
the famous MSNBC mark where Respondent attempted to profit using the
Complainant’s mark by redirecting Internet traffic to its own website).
Respondent has no business connection
with Complainant; the only evidence on the record shows that Respondent is in
the jewelry business, unrelated to the computer services industry. Respondent’s WHOIS information indicates
Respondent’s name is “Hershey Chitrik.”
There simply is no evidence on the record that suggests Respondent is
commonly known by the <aolserver.net>
and <aol10.com> domain names, and it is reasonable to presume
that Respondent could not be commonly known by the domain names because of the
established fame of the AOL mark.
Therefore, Respondent has no rights or legitimate interests in the
domain names pursuant to Policy ¶ 4(c)(ii).
See Broadcom Corp. v.
Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no
rights or legitimate interests because Respondent is not commonly known by the
disputed domain name or using the domain name in connection with a legitimate
or fair use); see also 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).
Accordingly, the Panel finds that
Respondent has no rights or legitimate interests in the <aolserver.net> and <aol10.com> domain names; thus,
Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Respondent uses the <aolserver.net>
and <aol10.com> domain names in a manner that is not consistent with a
legitimate use. It is evident that
Respondent merely registered and uses the domain names to increase traffic on
its commercial jewelry website. The
domain names predominant appearance, the AOL mark, is wholly unrelated to
Respondent’s jewelry sale. Respondent’s
actions of ensnaring Internet users who are searching for Complainant more than
likely causes confusion as to Complainant’s association with Respondent’s
jewelry website. Therefore,
Respondent’s actions constitute bad faith registration and use under Policy ¶ 4(b)(iv). See State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12,
2000) (finding bad faith where Respondent registered the domain name
<bigtex.net> to infringe on Complainant’s goodwill and attract Internet
users to Respondent’s website); see also 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).
Policy paragraph 4(b) presents a list of
circumstances that represent bad faith, but the list is expressly
non-exclusive. Therefore, the Panel may
find bad faith in regards to circumstances not contained within Policy
paragraph 4(b). The Panel is, thus,
encouraged to look at the totality of circumstances when undertaking the bad
faith issue. See Educ. Testing Serv. v. TOEFL, D2000-0044
(WIPO Mar. 16, 2000) (finding that the Policy “[I]ndicates that its listing of
bad faith factors is without limitation”); see also CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19,
2000) (“[T]he Policy expressly recognizes that other circumstances can be
evidence that a domain name was registered and is being used in bad faith”).
Given the circumstances of the case, it
is evident that Respondent registered the <aolserver.net>
and <aol10.com> domain names in order to benefit off of the
goodwill associated with Complainant’s AOL mark. As previously mentioned, Respondent’s business has no connection
with Complainant’s computer related AOL services, and the domain names predominantly
display Complainant’s AOL mark.
Furthermore, the AOL mark is extremely well known and readily associated
with Complainant’s services. Hence, it
is clear that Respondent knew that Complainant owned a valuable interest in the
AOL mark and desired to capitalize on the value of the mark. Registering a domain name with knowledge of
another party’s interests in the content of the domain name amounts to bad
faith registration. 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 Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135,
1148 (9th
Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a
mark he knows to be similar to another, one can infer an intent to
confuse").
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
DECISION
Having established all three elements
required under the ICANN Policy, the Panel concludes that the requested relief
shall be hereby granted.
Accordingly, it is Ordered that the
domain names <aolserver.net> and <aol10.com> be transferred from Respondent to
Complainant.
James P. Buchele, Panelist
Dated:
November 4, 2002
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