national arbitration forum

 

DECISION

 

AOL Inc. v. Forsyte Corporation

Claim Number: FA0912001298138

 

PARTIES

Complainant is AOL Inc. (“Complainant”), represented by James R. Davis of Arent Fox LLP, Washington, D.C., USA.  Respondent is Forsyte Corporation (“Respondent”).

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <icqtoolbar.com>, registered with Registerone.ca,  <wwwwaol.com> and <aolexpressions.com>, registered with Rebel.com, and <aolaimmail.com>, registered with Domaincentral.ca.

 

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding.  Hon. Carolyn Marks Johnson sits as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically December 9, 2009; the National Arbitration Forum received a hard copy of the Complaint December 11, 2009.

 

On December 11, 2009, Registerone.ca confirmed by e-mail to the National Arbitration Forum that the <icqtoolbar.com> domain name is registered with Registerone.ca and that Respondent is the current registrant of the name.  Registerone.ca verified that Respondent is bound by the Registerone.ca registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

 

On December 11, 2009, Rebel.com confirmed by e-mail to the National Arbitration Forum that the <wwwwaol.com> and <aolexpressions.com> domain names are registered with Rebel.com and that Respondent is the current registrant of the names.  Rebel.com verified that Respondent is bound by the Rebel.com registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

 

On December 11, 2009, Domaincentral.ca confirmed by e-mail to the National Arbitration Forum that the <aolaimmail.com> domain name is registered with Domaincentral.ca and that Respondent is the current registrant of the name.  Domaincentral.ca verified that Respondent is bound by the Domaincentral.ca registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

 

On December 14, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 4, 2010, 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@icqtoolbar.com, postmaster@wwwwaol.com, postmaster@aolexpressions.com, and postmaster@aolaimmail.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On January 11, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      The domain names that Respondent registered, <wwwwaol.com>, <aolexpressions.com>, and <aolaimmail.com>, are confusingly similar to Complainant’s AOL mark. Respondent’s <icqtoolbar.com> domain name is confusingly similar to Complainant’s ICQ mark.

 

2.      Respondent has no rights to or legitimate interests in the <icqtoolbar.com>, <wwwwaol.com>, <aolexpressions.com>, and <aolaimmail.com> domain names.

 

3.      Respondent registered and used the <icqtoolbar.com>, <wwwwaol.com>, <aolexpressions.com>, and <aolaimmail.com> domain names in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, AOL Inc., offers personal computer and communication services, such as text, voice, and video, under Complainant’s ICQ and AOL marks.  Complainant holds multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the AOL mark (e.g., Reg. No. 1,977,731 issued June 4, 1996), and for the ICQ mark (e.g., Reg. No. 2,411,657 issued December 12, 2000).  Complainant has used the AOL mark continuously in commerce since at least as early as 1996, and has used the ICQ mark continuously in commerce since at least as early as 2000.  Complainant now has millions of customers and subscribers around the world who use its services every day.

 

Respondent, Forsyte Corporation, registered the <wwwwaol.com> domain name May 17, 2000, the <aolexpressions.com> domain name February 16, 2005, the <icqtoolbar.com> domain name January 21, 2006, and the <aolaimmail.com> domain name November 1, 2007.  The disputed domain names resolve to a website that links to and promotes third-party websites that compete with Complainant.

 

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."

 

Given 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 will draw such inferences as the Panel 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 Complainant to 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 to and/or Confusingly Similar

 

The Panel finds that Complainant established rights in the ICQ mark for purposes of Policy ¶ 4(a)(i) through its trademark registrations with the USPTO (e.g., Reg. No. 2,411,657 issued December 12, 2000).  The Panel finds that Complainant also established rights in the AOL mark for purposes of Policy ¶ 4(a)(i) through its trademark registrations with the USPTO (e.g., Reg. No. 1,977,731 issued June 4, 1996).  See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)); see also AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”).

 

Complainant contends that Respondent’s <wwwwaol.com> domain name is confusingly similar to its AOL mark.  The <wwwwaol.com> domain name differs from Complainant’s mark in two ways: (1) the letters “wwww” have been added to the end of the mark; and (2) the generic top-level domain (“gTLD”) “.com” has been added.  The Panel finds that neither the addition of the multiple letters “w,” which suggests an attempt to benefit from Internet users omitting the period after the initial “www” in the website address, nor the addition of a gTLD sufficiently distinguishes a domain name from an incorporated mark for the purposes of Policy ¶ 4(a)(i).  Therefore, the Panel finds that these changes do not minimize or eliminate the resulting likelihood of confusion, and Respondent’s <wwwwaol.com> domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).  See Neiman Marcus Group, Inc. v. S1A, FA 128683 (Nat. Arb. Forum Dec. 6, 2002) (holding confusing similarity has been established because the prefix "www" does not sufficiently differentiate the <wwwneimanmarcus.com> domain name from the complainant's NEIMAN-MARCUS mark); see also Amazon.com, Inc. v. J J Domains, FA 514939 (Nat. Arb. Forum Sept. 2, 2005) (“…Respondent’s <www-amazon.com> domain name is confusingly similar to Complainant’s AMAZON.COM mark, as the domain name merely adds the prefix “www-” to Complainant’s AMAZON.COM mark.  Such changes are not enough to overcome the confusingly similar aspects of Respondent’s domain name pursuant to Policy ¶ 4(a)(i).”); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).

 

Complainant contends that Respondent’s <icqtoolbar.com> domain name is confusingly similar to its ICQ mark.  The <icqtoolbar.com> domain name differs from Complainant’s mark in two ways: (1) the descriptive term “toolbar” has been added to the end of the mark; and (2) the generic top-level domain (“gTLD”) “.com” has been added.  Neither the addition of a descriptive term, nor the addition of a gTLD sufficiently distinguishes a domain name from an incorporated mark for the purposes of Policy ¶ 4(a)(i).  Therefore, the Panel finds that these changes do not minimize or eliminate the resulting likelihood of confusion, and Respondent’s <icqtoolbar.com> domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).  See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark); see also Yokohama Tire Corp. v. Jones, FA 739888 (Nat. Arb. Forum Aug. 3, 2006) (“The Panel finds that the mere elimination, misspelling and addition of terms to Complainant’s mark in the <yokahamatires.com> domain name is not sufficient for Respondent to distinguish the disputed domain name from the Y YOKOHAMA mark, especially because the disputed domain name remains phonetically similar to the mark.”); see also Gardline Surveys Ltd., FA 153545, supra.

 

Complainant contends that Respondent’s <aolexpressions.com> and <aolaimmail.com> domain names are confusingly similar to its AOL mark.  The <aolexpressions.com> and <aolaimmail.com> domain names differ from Complainant’s mark in two ways: (1) a descriptive term or phrase has been added to the end of the mark; and (2) the generic top-level domain (“gTLD”) “.com” has been added.  As established above, neither the addition of a descriptive term, nor the addition of a gTLD sufficiently distinguishes a domain name from an incorporated mark for the purposes of Policy ¶ 4(a)(i).  Therefore, the Panel finds that these changes do not minimize or eliminate the resulting likelihood of confusion, and Respondent’s <aolexpressions.com> and <aolaimmail.com> domain names are confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).  See Gillette Co., FA 492867, supra; see also Yokohama Tire Corp., FA 739888, supra; see also Gardline Surveys Ltd., FA 153545, supra.

 

The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).

 

Rights to or Legitimate Interests

 

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii).  Once Complainant does so, as Complainant has done here, then the burden shifts to Respondent to show that it does have rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t 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 UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light.  If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).

 

Complainant alleges that Respondent is not commonly known by the disputed domain names because the WHOIS information lists Respondent as “Forsyte Corporation, and because Complainant has not licensed or authorized Respondent to use the AOL mark.  This evidence, and the fact that Respondent has not responded to Complainant’s contentions, permit the Panel to find that Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii).  See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).

 

Complainant also alleges that Respondent’s disputed domain names resolve to commercial websites that provide pay-per-click advertisements and links to competing third-party websites.  The Panel finds that Respondent used the disputed domain names as Complainant alleges, and that therefore, Respondent failed to make a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and failed to show a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (concluding that using a confusingly similar domain name to divert Internet users to competing websites does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).

 

The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Complainant alleges that Respondent registered and used the confusingly similar disputed domain names (<wwwwaol.com>: registered May 17, 2000; <aolexpressions.com>: registered February 16, 2005; <icqtoolbar.com>: registered January 21, 2006; <aolaimmail.com>: registered November 1, 2007) in bad faith.  The Panel finds that Respondent’s use of the disputed domain names was intentionally designed to disrupt Complainant’s business activities for Respondent’s own commercial gain.  The Panel therefore finds that Respondent registered and is using the disputed domain names in bad faith under Policy ¶ 4(b)(iii).  See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business.  The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website).

 

Complainant also contends that Respondent has registered and used the disputed domain names in bad faith by intentionally attracting Internet users for commercial gain by trading off of the goodwill surrounding Complainant’s AOL mark.  The Panel finds that Respondent sought to attract Internet users for commercial gain through a likelihood of confusion between Complainant’s well-known mark and the disputed domain names, and such conduct supports findings that Respondent registered and is using the disputed domain names in bad faith under Policy ¶ 4(b)(iv).  See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was commercially gaining from the likelihood of confusion between the complainant’s AIM mark and the competing instant messaging products and services advertised on the respondent’s website which resolved from the disputed domain name); see also AOL LLC v. iTech Ent, LLC, FA 726227 (Nat. Arb. Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).

 

The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <icqtoolbar.com>, <wwwwaol.com>, <aolexpressions.com>, and <aolaimmail.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

Hon. Carolyn Marks Johnson, Panelist

Dated: January 25, 2010

 

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