America Online, Inc. v. Tom Howes d/b/a Magic Palace Casino
Claim Number: FA0210000128145
Complainant is America Online, Inc., Dulles, VA (“Complainant”) represented by James R. Davis, of Arent Fox Kintner Plotkin & Kahn. Respondent is Tom Howes d/b/a Magic Palace Casino, Potomac, MD (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <america-online-casino.com>, registered with Enom.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on October 15, 2002; the Forum received a hard copy of the Complaint on October 17, 2002.
On October 16, 2002, Enom confirmed by e-mail to the Forum that the domain name <america-online-casino.com> is registered with Enom and that Respondent is the current registrant of the name. Enom has verified that Respondent is bound by the Enom 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 October 17, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 6, 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 December 4, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 makes the following assertions:
Respondent’s <america-online-casino.com> domain name is confusingly similar to Complainant’s registered AMERICA ONLINE family of marks.
Respondent does not have any rights or legitimate interests in the <america-online-casino.com> domain name.
Respondent registered and used the <america-online-casino.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, America Online, Inc., owns numerous trademark registrations for its AMERICA ONLINE mark, including U.S. Reg. Nos. 1,618,148 and 2,248,427, registered on the Principal Register of the United States Patent and Trademark Office (“USPTO”) on October 16, 1990 and June 1, 1999, respectively. Complainant also holds trademark registrations for its famous TRIANGLE LOGO, incorporating its AMERICA ONLINE mark, as well as other variations of its AMERICA ONLINE mark.
Complainant has used its AMERICA ONLINE and TRIANGLE LOGO family of marks extensively in connection with computer and Internet-related goods and services, and has done so since 1989. Complainant also operates a website at <americaonline.com> in conjunction with its Internet service, where its mark is prominently displayed and used to promote Complainant’s services.
Under its AMERICA ONLINE family of marks, Complainant operates the most widely-used interactive online service in the world. Complainant has spent millions of dollars advertising and promoting its services under the AMERICA ONLINE family of marks, resulting in over thirty-five million subscribers worldwide and billions of dollars in sales.
On June 12, 2002, Respondent registered the <america-online-casino.com> domain name. Respondent is not licensed or otherwise authorized to use the AMERICA ONLINE family of marks in this manner. Respondent’s actual website uses Complainant’s AMERICA ONLINE and distinctive TRIANGLE LOGO in connection with its online gambling services. Respondent’s website also routes Internet users to another website that uses other marks owned by Complainant. Respondent’s contact information indicates that Respondent is using an e-mail account provided by Complainant (firstname.lastname@example.org), indicating that Respondent is aware of Complainant’s services.
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 <america-online-casino.com> domain name is confusingly similar to Complainant’s AMERICA ONLINE mark. The only difference between Respondent’s domain name and the registered mark of Complainant is the addition of the top-level domain “.com” after the mark, the placement of a hyphen between the words AMERICA and ONLINE, and the addition of the word “casino.” As top-level domains are a required feature for each domain name, the “.com” in the disputed domain name does not prevent a finding of confusing similarity. See Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding that "the addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants"); see also Visit Am., Inc. v. Visit Am., FA 95093 (Nat. Arb. Forum Aug. 14, 2000) (finding that the “.com” is part of the Internet address and does not add source identity significance).
Respondent’s use of a hyphen between the words AMERICA and ONLINE in the disputed domain name is irrelevant when determining confusing similarity between that domain name and mark in which a complainant has rights. See Nintendo Of Am. Inc. v. This Domain Is For Sale, D2000-1197 (WIPO Nov. 1, 2000) (finding <game-boy.com> identical and confusingly similar the Complainant’s GAME BOY mark, even though the domain name is a combination of two descriptive words divided by a hyphen); see also Columbia Sportswear Co. v. Keeler, D2000-0206 (WIPO May 16, 2000) (finding “[t]he use of hyphens ‘columbia-sports-wear-company’ in one of the Respondent's domain names in issue is insufficient to render it different to the trade mark COLUMBIA SPORTSWEAR COMPANY”).
The addition of the word “casino” to Complainant’s registered AMERICA ONLINE mark fails to sufficiently differentiate the disputed domain name from Complainant’s mark. The dominant feature of the disputed domain name remains Complainant’s AMERICA ONLINE mark. See Pfizer, Inc. v. Papol Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the subject domain name incorporates the VIAGRA mark in its entirety, and deviates only by the addition of the word “bomb,” the domain name is rendered confusingly similar to Complainant’s mark); see also 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 the Complainant combined with a generic word or term).
Accordingly, the Panel finds that the <america-online-casino.com> domain name is confusingly similar to Complainant’s registered and distinctive AMERICA ONLINE family of marks 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 a complainant. Under Policy ¶¶ 4(c)(i)-(iii), a respondent can rely on a “bona fide offering of 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 a complainant rebuts each of these elements, it has satisfied its burden by successfully addressing any of the specified claims a respondent could make under Policy ¶¶ 4(c)(i)-(iii), thereby shifting the burden to the respondent. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding where a Complainant has asserted that Respondent has no rights or legitimate interests in respect of the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also 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).
Respondent’s failure to respond to the Complaint is evidence of a lack of legitimate rights and interests in the <america-online-casino.com> domain name. See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under certain circumstances the mere assertion by Complainant that Respondent has no right or legitimate interest is sufficient to shift the burden of proof to Respondent to demonstrate that such a right or legitimate interest does exist); 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).
Respondent uses the infringing domain name to operate an online casino. Respondent’s home page includes Complainant’s distinctive script lettering and TRIANGLE LOGO mark in connection with its gambling services. In registering an infringing domain name that is confusingly similar with Complainant’s mark in order to operate a casino purporting to be linked with Complainant, to earn a profit, Respondent is not making a bona fide offering of goods or services, or legitimate noncommercial or fair use of the domain name under Policy ¶¶ 4(c)(i) and (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 Caterpillar Inc. v. Quin, D2000-0314 (WIPO June 12, 2000) (finding that Respondent does not have a legitimate interest in using the domain names <caterpillarparts.com> and <caterpillarspares.com> to suggest a connection or relationship, which does not exist, with Complainant's mark CATERPILLAR); see also Kosmea Pty Ltd. v. Krpan, D2000-0948 (WIPO Oct. 3, 2000) (finding no rights in the domain name where Respondent has an intention to divert consumers of Complainant’s products to Respondent’s site by using Complainant’s mark).
Complainant has not authorized Respondent to use its AMERICA ONLINE family of marks and Respondent’s contact information implies that it is “commonly known by” the name “magic place casino” and not the name AMERICA-ONLINE-CASINO or <america-online-casino.com>. In light of Respondent’s failure to offer any evidence that it has ever been commonly known by the disputed domain name, the Panel concludes that Respondent has no rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").
Accordingly, the Panel finds that Respondent does not have any rights or legitimate interests in the <america-online-casino.com> domain name under Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Registering and using an infringing domain name to “intentionally attempt to attract, for commercial gain, Internet users…by creating a likelihood of confusion…as to the source, sponsorship, affiliation, or endorsement of…a product of service on your website,” exemplifies bad faith under Policy ¶ 4(b)(iv). In the present dispute, Respondent’s <america-online-casino.com> domain name, used to operate an online casino, fits sqaurely within this provision of the Policy. By registering a domain name that infringed on Complainant’s mark, and using that domain name to gain commercial profit via online gambling, Respondent both registered and used its domain name in bad faith. Respondent’s bad faith use is further evidenced by the use of Complainant’s TRIANGLE LOGO mark in conjunction with the disputed domain name. An Internet user is exposed to Complainant’s registered mark upon arriving at Respondent’s website, creating the liklihood of confusion as to sponsorship of the website by Complainant. See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the Complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the Respondent directed Internet users seeking the Complainant’s site to its own website for commercial gain); see also Encyclopaedia Britannica Inc. v. Shedon.com, D2000-0753 (WIPO Sept. 6, 2000) (finding that the Respondent violated Policy ¶ 4(b)(iv) by using the domain name <britannnica.com> to hyperlink to a gambling site).
Furthermore, registration of an infringing domain name when Respondent had constructive or actual notice of Complainant’s mark prior to registration is also evidence of bad faith registration. In this dispute, Respondent’s contact information included an e-mail address provided by Complainant. In applying for and receiving an email address supplied by Complainant, Respondent cannot deny knowledge of Complainant’s famous marks. Due to this fact, the Panel infers that Respondent had full knowledge of Complainant’s rights in its AMERICA ONLINE mark when Respondent registered the subject domain name. Respondent’s registration of <america-online-casino.com> was committed with actual knowledge of Complaiant’s mark, and was therefore done in bad faith. See 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"); see also 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).
Accordingly, the Panel finds that Respondent registered and used the <america-online-casino.com> domain name in bad faith, and Policy ¶ 4(a)(iii) is satisfied.
Having established all three elements under ICANN Policy, the Panel concludes that relief shall be hereby GRANTED.
Accordingly, it is Ordered that the <america-online-casino.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: December 9, 2002
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