America Online, Inc. v. Richard Jarry
Claim Number: FA0209000125263
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.
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 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 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 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
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.
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.
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.
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.
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page