America Online, Inc. v. Richard Jarry
Claim Number: FA0209000125263
PARTIES
Complainant
is America Online, Inc., Dulles, VA
(“Complainant”) represented by James R.
Davis, of Arent Fox Kintner Plotkin
& Kahn. Respondent is Richard Jarry, Hackettstown, NJ
(“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <mericaonline.com>,
registered with Register.com.
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 September 16, 2002; the Forum received a hard copy of the
Complaint on September 20, 2002.
On
September 18, 2002, Register.com confirmed by e-mail to the Forum that the
domain name <mericaonline.com>
is registered with Register.com and that Respondent is the current registrant
of the name. Register.com has verified that Respondent is bound by the Register.com
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
September 20, 2002, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of October 10, 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@mericaonline.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
October 28, 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’s Submission makes the
following assertions:
1. Respondent’s <mericaonline.com> domain
name is confusingly similar to Complainant’s registered AMERICA ONLINE family
of marks.
2. Respondent does
not have any rights or legitimate interests in the <mericaonline.com> domain
name.
3. Respondent
registered and used the <mericaonline.com> domain name in
bad faith.
B. Respondent failed to submit a Response in
this proceeding.
FINDINGS
Complainant, America Online, Inc., is the
holder of the trademark AMERICA ONLINE (U.S. Reg. No. 1,618,148, registered on
October 16, 1990 and U.S. Reg. No. 2,248,427, registered on June 1, 1999), and
has registered the mark (and variations of it) worldwide. These marks are used
in conjunction with Complainant’s Internet related services, including the
leasing of access time to computer databases, bulletin boards, networks and
research materials, telecommunications services, and its operation of the
proprietary AMERICA ONLINE service. With over thirty-four million subscribers,
Complainant operates the most widely-used interactive online services in the
world. Complainant operates a website at <aol.com>.
Respondent, Richard Jarry, registered the
<mericaonline.com> domain name
on August 11, 2002, and is not licensed or otherwise authorized to make any use
of the AMERICA ONLINE family of marks for any purpose. Respondent’s domain name
resolves to a series of links that take an Internet user to a variety of
pornographic sites. In addition, once an Internet user reaches the disputed
domain name “pop-up” advertisements appear for online casinos.
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 rights in its
AMERICA ONLINE family of marks through registration on the Principal Register
of the USPTO, as well as via continuous and widespread use of the mark
worldwide.
Respondent’s <mericaonline.com> domain name is confusingly similar to
Complainant’s AMERICA ONLINE mark. The main difference between Respondent’s
domain name and the registered mark of Complainant is the elimination of the
letter “A” from the word “America”. In addition, Respondent has added the top
level domain “.com” and removed the space between the words AMERICA and ONLINE.
Other than these minimal differences, the domain name <mericaonline.com> is identical to the registered AMERICA
ONLINE mark.
It is well established that the mere
elimination of a single letter from a trademark does not prevent a finding of
“confusing similarity” under Policy ¶ 4(a)(i), especially when the domain name
reflects a prominent and widely recognized mark. See State Farm Mut. Auto. Ins. Co. v. Try Harder
& Co., FA 94730 (Nat. Arb. Forum June 15, 2000) (finding that the
domain name <statfarm.com> is confusingly similar to Complainant’s STATE
FARM mark); see also Reuters Ltd.
v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a
domain name which differs by only one letter from a trademark has a greater
tendency to be confusingly similar to the trademark where the trademark is
highly distinctive).
Furthermore,
as spaces are impermissible in domain name registrations and a generic
top-level domain (such as “.com”) is required for every domain name, neither of
these differences have any effect on whether Respondent’s domain name is
confusingly similar to Complainant’s mark. See Hannover
Ruckversicherungs-AG v. Ryu,
FA 102724 (Nat. Arb. Forum Jan. 7, 2002) (finding <hannoverre.com> to be
identical to HANNOVER RE, “as spaces are impermissible in domain names and a
generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also Rollerblade, Inc. v. McCrady,
D2000-0429 (WIPO June 25, 2000) (finding that the top-level of the domain name
such as “.net” or “.com” does not affect the domain name for the purpose of
determining whether it is identical or confusingly similar).
Accordingly, the Panel finds that the <mericaonline.com> domain name is
confusingly similar to Complainant’s registered AMERICA ONLINE mark under
Policy ¶ 4(a)(i).
Rights or Legitimate Interests
The burden of proving a lack of rights or
legitimate interests in a domain name rests initially upon Complainant. Under
Policy ¶¶ 4(c)(i-iii), Respondent can rely on an offering of bona fide goods or
services connected with the disputed domain name, the fact that it has been
commonly known by the domain name, or that it is making a legitimate
noncommercial or fair use of the domain name to demonstrate a right or
legitimate interest in a domain name. If Complainant rebuts each of these
elements, it has satisfied its burden by successfully addressing any of the
specified claims Respondent could make under Policy ¶¶ 4(c)(i-iii), therefore
shifting the burden to Respondent. 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).
It is neither a bona fide offering of
goods or services, nor an example of a legitimate noncommercial or fair use
under Policy ¶¶ 4(c)(i) and (iii) when the holder of a domain name that is
confusingly similar to an established mark is using the domain to divert
Internet users to pornographic sites. See 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 tarnish Complainant’s mark); see also Ticketmaster Corp. v. DiscoverNet, Inc.,
D2001-0252 (WIPO Apr. 9, 2001) (finding no rights or legitimate interests where
Respondent generated commercial gain by intentionally and misleadingly
diverting users away from Complainant's site to a competing website).
Respondent is taking advantage of the confusing similarity between
Complainant’s registered mark and the disputed domain name to gain profit from
advertising, while directing visitors to a website that displays links to
pornographic materials. This is not a noncommercial use of the site, nor a bona
fide offering of goods or services.
Respondent does not appear to have any
rights in, nor is it commonly known by, the name MERICA ONLINE. Furthermore,
Complainant has not given Respondent permission or consent to use its AMERICA
ONLINE family of marks, and Respondent’s registration of the disputed domain
name occurred years after Complainant registered its mark. See Charles Jourdan Holding AG v. AAIM,
D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests
where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior
rights in the domain name precede Respondent’s registration; (3) Respondent is
not commonly known by the domain name in question); see also 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 Nike, Inc. v. B.
B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or
legitimate interests where one “would be hard pressed to find a person who may
show a right or legitimate interest” in a domain name containing Complainant's
distinct and famous NIKE trademark).
Once a complainant has successfully
presented its prima facie case illustrating a respondent’s lack of
rights or legitimate interests in its domain name, the burden of demonstrating
rights and legitimate interests in the domain name shifts to the respondent.
As Respondent submitted nothing to the
Panel in Response to this Complaint, Respondent fails to meet that burden. See
Canadian Imperial Bank of Commerce v.
D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no
rights or legitimate interests where no such right or interest was immediately
apparent to the Panel and Respondent did not come forward to suggest any right
or interest it may have possessed).
Accordingly, the Panel finds that
Respondent does not have any rights or legitimate interests in its domain name
under Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Respondent registered and used the
disputed domain name in bad faith. Under Policy ¶ 4(b)(iv), when a domain name
is used to intentionally attempt to attract, “for commercial gain, Internet
users to [Respondent’s] web site…by creating a likelihood of confusion with the
complainant’s mark as to the source, sponsorship, affiliation, or endorsement
of [Respondent’s] web site” it is an example of bad faith use and registration.
Respondent used a domain name confusingly similar to a registered mark to
divert Internet traffic to a website unrelated to and unauthorized by the
holder of the mark, an example of bad faith use and registration under the
Policy. See Rittenhouse
Dev. Co. v. Domains For Sale, Inc., FA 105211 (Nat. Arb. Forum
Apr. 8, 2002) (finding that “when a party registers and uses a domain name that
incorporates a well-known mark and connects the domain name with a website that
depicts offensive images,” the party has registered and used the disputed
domain name in bad faith). The additional income Respondent receives from
pop-up advertisements is further evidence of commercial gain, and hence bad
faith use. See Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000)
(finding bad faith where Respondent linked the domain name in question to
websites displaying banner advertisements and pornographic material); see
also Bama Rags, Inc. v.
Zuccarini, FA 94380 (Nat. Arb. Forum May 8, 2000) (finding bad faith where
Respondent attracted users to advertisements).
Accordingly, the Panel finds that
Respondent both registered and used its domain name in bad faith, and Policy ¶
4(a)(iii) has been satisfied.
DECISION
Having established all three elements
under ICANN Policy, the Panel concludes that relief shall be hereby GRANTED.
Accordingly, it is Ordered that the <mericaonline.com> domain name be
TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: October 31, 2002.
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