AOL LLC v. Gregg Amermann
Claim Number: FA0911001294216
Complainant is AOL LLC (“Complainant”), represented by James R. Davis, of Arent Fox LLP, Washington D.C., USA. Respondent is Gregg Amermann (“Respondent”), Georgia, USA.
REGISTRAR
The domain name at issue is <aim-fight.com>, registered with 1 & 1 Internet Ag.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 11, 2009; the National Arbitration Forum received a hard copy of the Complaint on November 13, 2009.
On November 16, 2009, 1 & 1 Internet Ag confirmed by e-mail to the National Arbitration Forum that the <aim-fight.com> domain name is registered with 1 & 1 Internet Ag and that Respondent is the current registrant of the name. 1 & 1 Internet Ag has verified that Respondent is bound by the 1 & 1 Internet Ag 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 November 18, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 8, 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@aim-fight.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 12, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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:
1. Respondent’s <aim-fight.com> domain name is confusingly similar to Complainant’s AIM mark.
2. Respondent does not have any rights or legitimate interests in the <aim-fight.com> domain name.
3. Respondent registered and used the <aim-fight.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, AOL LLC, holds trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the AIM mark (e.g., Reg. No. 2,423,367 issued January 23, 2001) in connection with computer services.
Respondent, Gregg Amermann, registered the <aim-fight.com> domain name on August 3, 2009. The disputed domain name previously resolved to a website nearly identical to Complainant’s website, requesting that Internet users provide their AIM usernames. Respondent has since terminated the site but has refused to transfer the domain name.
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 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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that 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.
Complainant asserts rights in its AIM mark through its holding of trademark registrations for the AIM mark with the USPTO (e.g., Reg. No. 2,423,367 issued January 23, 2001). The Panel finds that Complainant has established rights in the AIM mark under Policy ¶ 4(a)(i) through its trademark registration with the USPTO. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Complainant argues that Respondent’s <aim-fight.com>
domain name is confusingly similar
to Complainant’s
Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent has no rights or
legitimate interests in the disputed domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts
to Respondent to prove it has rights or legitimate interests in the disputed
domain name pursuant to Policy ¶ 4(a)(ii).
Based on the arguments made in the Complaint, the Panel finds that Complainant
has established a prima facie case in
support of its contentions and Respondent has failed to submit a Response to
these proceedings. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr.
26, 2006) (finding the “complainant must first make a prima facie case
that [the] respondent lacks rights and legitimate interests in the disputed
domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the]
respondent to show it does have rights or legitimate interests.”); see also Hanna-Barbera Prods., Inc. v.
Entertainment 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 Policy ¶ 4(a)(ii) before
the burden shifts to the respondent to show that it does have rights or
legitimate interests in a domain name).
Nevertheless, the Panel will examine the record to determine if
Respondent has rights or legitimate interests in the disputed domain name
pursuant to Policy ¶ 4(c).
The WHOIS information lists the registrant as “Gregg Amermann.” Respondent is not licensed or authorized to use Complainant’s AIM mark and Respondent is not affiliated with Complainant in any way. Without evidence to the contrary, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Respondent’s <aim-fight.com> domain name was registered on August 3,
2009. The disputed domain name
previously resolved to a website identical to Complainant’s website and
requesting that Internet users provide their AIM usernames. The Panel finds that Respondent’s previous
use relied on the confusingly similar domain name to attract Internet users to
its website featuring nearly identical content to Complainant’s website in
order to phish for Internet users’ log-in information. The Panel finds that Respondent’s attempt to
pass itself off as the Complainant does not constitute a bona fide offering of goods and services under Policy ¶ 4(c)(i) or
a legitimate noncommercial fair use pursuant to Policy ¶ 4(c)(iii). See
HOPE worldwide, Ltd. v. Jin, FA 320379 (Nat. Arb. Forum Nov. 11,
2004) (finding that a domain name that “is confusingly similar to Complainant’s
mark, redirects Internet users to a website that imitates Complainant’s
website, and is used to acquire personal information from Complainant’s
potential associates fraudulently” does not fall within the parameters of
Policy ¶¶ 4(c)(i) or (iii)); see also
Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11,
2004) (finding that using a domain name to redirect Internet users to a website
that imitated the complainant’s credit application website and attempted to
fraudulently acquire personal information from the complainant’s clients was
not a bona fide offering of goods or services or a legitimate
noncommercial or fair use).
Additionally,
Respondent’s disputed domain name does not currently resolve to an active website. The Panel finds Respondent’s failure to make
an active use of the disputed domain name is not a bona fide offering of goods and services under Policy
¶ 4(c)(i) or a legitimate noncommercial fair use pursuant to Policy ¶
4(c)(iii). See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb.
Forum July 12, 2006) (finding that the respondent’s non-use of the disputed
domain names demonstrates that the respondent is not using the disputed domain
names for a bona fide offering of goods or services under Policy ¶
4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶
4(c)(iii)); see also Bloomberg
L.P. v. Sandhu, FA 96261 (Nat. Arb. Forum Feb. 12, 2001) (finding that no
rights or legitimate interests can be found when the respondent fails to use disputed
domain names in any way).
The Panel finds that
Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that it may consider the totality of the circumstances when conducting a Policy ¶ 4(a)(iii) analysis, and that it is not limited to the enumerated factors in Policy ¶ 4(b). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”).
The Panel finds Respondent’s prior attempt to pass itself off as Complainant by creating a website nearly identical to Complainant’s in an attempt to acquire Internet users’ personal information is evidence of bad faith registration use under Policy ¶ 4(a)(iii). See Vivendi Universal Games v. Ballard, FA 146621 (Nat. Arb. Forum Mar. 13, 2002) (finding that where a copy of the complainant’s website was used in order to facilitate the interception of the complainant’s customer’s account information, the respondent’s behavior evidenced bad faith use and registration of the domain name); see also Wells Fargo & Co. v. Mihael, FA 605221 (Nat. Arb. Forum Jan. 16, 2006) (“Complainant asserts . . . that soon after the disputed domain name was registered, Respondent arranged for it to resolve to a web site closely resembling a legitimate site of Complainant, called a ‘doppelganger’ (for double or duplicate) page, the purpose of which is to deceive Complainant’s customers into providing to Respondent their login identification, social security numbers, and/or account information and Personal Identification Numbers. . . . The Panel finds that Respondent’s behavior, as alleged, constitutes bad faith registration and use of the subject domain name pursuant to Policy ¶ 4(a)(iii).”).
Furthermore, Respondent’s disputed domain name does not
currently resolve to an active website.
The Panel finds Respondent’s failure to make an active use of the
disputed domain name is evidence of bad faith under Policy ¶ 4(a)(iii). See
Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely
holding an infringing domain name without active use can constitute use in bad
faith); see also
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <aim-fight.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: December 21, 2009
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