AOL Inc. v. Pavel Panchuk
Claim Number: FA1002001308205
Complainant is AOL Inc. (“Complainant”), represented by James
R. Davis, of Arent Fox LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <aolcom.com>, registered with Godaddy.com, Inc.. (hereafter «Domain Name»).
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.
Hugues G. Richard as Panelist.
Complainant submitted a Complaint to the
National Arbitration Forum electronically on
On February 18, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 10, 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 email@example.com by e-mail.
A timely Response was received and determined
to be complete on
Complainant’s Additional Submission was
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
Complainant AOL Inc. ("AOL") owns rights to numerous names and marks, as well as corresponding trademark registrations in the U.S., Russia and around the world, including: AOL (U.S. trademark Reg. No. 1977731 and Russian Reg. No. 145960). On the basis of these registrations and use, in addition to Complainant's extensive advertising and promotion of the AOL mark, the AOL name has become internationally famous and associated with Complainant's business. Sales under the AOL marks exceed several billion dollars each year.
AOL products are associated with computer and Internet-related goods and services.
AOL uses its federally registered trademarks AOL.COM to provide information and services on the Internet: the AOL Marks are used extensively at this Web site. Tens of millions of subscribers and users around the world access and use AOL’s services each day.
The Domain Name <aolcom.com> is nearly identical and confusingly similar to the AOL Marks. Consumer confusion is particularly likely because Respondent has registered and is using a domain name that is a common misspelling of the legitimate AOL.COM mark.
Respondent has no rights or legitimate interests in the Domain Name <aolcom.com> Complainant has not licensed or authorized respondent to use the AOL Marks, and Respondent (Pavel Panchuk) is not named or commonly known as AOL.
Respondent should be considered as having registered and used the Domain Name with a bad faith intent to capitalize on AOL’s famous names and marks, and profit from the international and domestic goodwill that exist in the AOL Marks.
Respondent Domain Name was
registered after AOL first registered its trademark in the
Respondent’s bad faith use of <aolcom.com> is shown by the commercial Web sites that he has used with the Domain Name. Respondent has been using, and continues to use, the Domain Name with commercial Web sites with links to third party Web sites, many of which compete with the AOL service.
Complainant attempted to resolve this matter by writing Respondent and seeking an amicable transfer of the Domain Name. Advanced Business Integration Network first appeared in the Whois database as the registrant. AOL’s attorney sent a letter to that entity; however, the company responded and claimed that it had only registered <aolcom.com> on behalf of a client. The Whois records were updated and AOL sent a letter to the new registrant; however, the registrant did not respond.The use of false contact information demonstrates the bad faith of respondent.
Respondent’s bad faith is also demonstrated by his pattern of cybersquatting. In addition to the Domain Name at issue in this proceeding, Respondent owns other domain names that infringe third party trademarks, including VERIZON and AMAZON.
Based on the above, Respondent cannot in good faith claim that he had no knowledge of AOL’s rights in its famous names and marks. Furthermore, Respondent cannot claim in good faith that he made a legitimate noncommercial or fair use of the Infringing Domain, or that Respondent is commonly known as AOL.
<Aolcom.com> was purchased and used in good faith and for the only purpose of explaining medical conditions of Alveolar pulmonary edema and coma and promoting Respondent's clients medical services for who he provides website development and maintenance. Russian translation - альвеолярный отек легких и кома- of this medical condition happened to fit the abbrevication aolcom.
Typos are not likely, if not impossible, especially for Russian speaking people. AOL uses its mark on the Internet with .com ending that represent commercial type of registered domain and not a part of their name. Aolcom has a 3 letters difference which is very unlikely to produce miss typo.
AOL is a leader in the computer, entertainement and online services industries, when Respondant's Domain Name is used for the medical services website. It promotes medical services and there can be no confusion with any business of AOL. There is no interest for Respondent's client from attracting AOL traffic to come visit this website and no additional profit or possible traffic from AOL customers.
Respondent purchased the Domain Name for his client in 1998 from Advanced Business Integration Network. He was looking for right abbreviation for his the specific medical condition that would be promoted by the website. There was no bad faith or intentions to interact with any interests of any other world companies.
Respondent has no association with whoever who originally registered or owned this Domain Name previously. He purchased the Domain Name in good faith and without knowledge of previous owner's uses or intentions.
<Aolcom.com> is associating with the medical company in Russia Federation and has established users and clientele who use the website for updates on medical researches and asking doctors medical condition questions.
Links provided on the website are other medical researches or forums to provide more information to the customers.
Respondent has not responded to AOL Inc. correspondance due to no knowledge of English language but without intend to ignore it. He used someone's help to make his response and to make this in a little period of time is very costly.
C. Additional Submissions by Complainant
Respondent has used and continues to use the Domain Name <aolcom.com> with a commercial website that references AOL and its services, and provides links to AOL's competitors websites. The website is entirely in English and makes no references to medical services or conditions.
The Domain Name <aolcom.com> does not correspond to the alleged string of medical terms or the Russian translation (альвеолярный отек легких и кома) Respondent provided <aolcom.com> is comprised for only the first letters of the initial three Russian words but, inexplicably, com for the Russian word Koma.
A search on Google did not identify a single instance where the word string alveolar pulmonary edema and coma is used. It is unbelievable that Respondent motivation for registering <aolcom.com> was to string together an acronym for two separate medical terms that are only somewhat related.
Respondent also owns other domain names that infringe famous third party trademarks. He also owns Amazoncom.com and wwwverizon.com.
· The Panel finds that Domain Name <aolcom.com> has been registered, purchased and used in bad faith, and the Respondent has no rights or legitimate interests respect of the Domain Name.
· The Panel also finds that the Domain Name <aolcom.com> should to be transferred to the Complainant.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”
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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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 has provided evidence of
the registration of its AOL mark with the United States Patent and Trademark
Office (“USPTO”) (e.g. Reg. No.
also finds that Respondent's <aolcom.com>
Domain Name is confusingly similar to Complainant's AOL INC. mark for the
purpose of Policy ¶ 4(a)(i). The Domain Name adds the
suffix “com” and the generic top-level domain (“gTLD”) “.com” to the entirety
of Complainant’s AOL mark. The Panel
finds that these alterations do not overcome a finding of confusing similarity
under Policy ¶ 4(a)(i). See
Am. Online, Inc. v. Amigos On Line RJ, FA 115041 (Nat. Arb. Forum
Having reached the above conclusions, the Panel therefore finds that Complainant met its burden of proof regarding Paragraph 4(a)(i) of the Policy.
The Panel reiterates that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed Domain Name under Policy ¶ 4(a)(ii). The burden then shifts to Respondent to show 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.”).
The Panel finds that such a prima facie case was made by Complainant. The WHOIS information indicates that the registrant is “Pavel Panchuk.” Complainant asserts that it has not authorized or licensed Respondent to use the AOL mark. The Panel finds that, based on the WHOIS information and all other evidence in the record, Respondent is not commonly known by the disputed Domain Name pursuant to Policy ¶ 4(c)(ii). See 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); see also 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).
The Panel finds that Respondent’s use of the confusingly similar disputed Domain Name is not a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding that the respondent was not using a disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by redirecting Internet users to a commercial search engine website with links to multiple websites that may be of interest to the complainant’s customers and presumably earning “click-through fees” in the process); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (concluding that the use of a confusingly similar domain name to operate a portal with hyperlinks to various third-party websites, some of which may be in direct competition with a complainant, does not constitute 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)).
Respondent alleged in his response that the Domain Name was used in association with medical services but provided no evidence to that effect to the Panel. On this alleged use of the disputed Domain Name, Complainant refers to original Annex G which indicates that the disputed Domain Name resolves to a commercial website that references Complainant and its services as well as providing links to Complainant’s competitors. Complainant asserts that Respondent’s disputed Domain Name does not in fact correspond to the string of medical terms Respondent claims or the Russian translation provided by Respondent. Complainant also provides further evidence in its Additional Submission that there is not a single instance of the word string “alveolar pulmonary edema coma” being used on a website. Based on this information, the Panel concludes that Respondent does not have any rights or legitimate interests in the disputed Domain Name under Policy ¶ 4(a)(iii).
Having reached the above conclusions, the Panel therefore finds that Complainant met its burden of proof regarding Paragraph 4(a)(ii) of the Policy.
Panel finds that Respondent’s use of the disputed Domain Name to link Internet
users to websites that directly compete with Complainant constitutes a
disruption of Complainant’s business pursuant to Policy ¶ 4(b)(iii). See
David Hall Rare Coins v.
The Panel finds that Respondent’s use of the disputed Domain Name to operate a commercial links page from which Respondent presumably receives click-through fees is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).
The Panel also finds that the fact that the respondent owns other domain names that infringe famous third party trademarks such as <amazoncom.com> and <wwwverizon.com> corroborates the findings of registration and use in bad faith of the Domain Name.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <aolcom.com> Domain Name be TRANSFERRED from Respondent to Complainant.
Hugues G. Richard,
Dated: April 2, 2010
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