AOL Inc. v. Robert Dodson a/k/a XVII Networks
Claim Number: FA1006001328369
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 <aol-sluts.com>, registered with GoDaddy.com.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her 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 electronically on June 4, 2010.
On June 7, 2010, GoDaddy.com confirmed by e-mail to the National Arbitration Forum that the <aol-sluts.com> domain name is registered with GoDaddy.com and that Respondent is the current registrant of the name. GoDaddy.com has verified that Respondent is bound by the GoDaddy.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 June 10, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 30, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@aol-sluts.com by e-mail. Also on June 10, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 7, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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 "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. 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 <aol-sluts.com> domain name is confusingly similar to Complainant’s AOL.COM mark.
2. Respondent does not have any rights or legitimate interests in the <aol-sluts.com> domain name.
3. Respondent registered and used the <aol-sluts.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, AOL, Inc., offers a wide range of computer and online services including; games, e-mail accounts, news, chat and dating services, as well as educational products. Complainant owns several trademark registrations with the United States Patent and Trademark Office ("USPTO") for its AOL (e.g., Reg. No. 1,977,731 issued June 4, 1996) and AOL.COM marks (e.g., Reg. No. 2,325,291 issued March 7, 2000).
Respondent, Robert Dodson, registered the <aol-sluts.com> domain name on April 25, 2010. Respondent’s disputed domain name resolves to a website that displays adult-oriented content and third-party hyperlinks to websites and businesses that are unrelated to Complainant.
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.
The Panel finds that Complainant has established rights in
its AOL and AOL.COM marks under Policy ¶ 4(a)(i) through its multiple trademark
registrations with the USPTO (e.g.,
Reg. No. 1,977,731 issued June 4, 1996) and (e.g., Reg. No. 2,325,291 issued March 7, 2000), respectively. See 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.”); see also Reebok Int’l Ltd. v.
Complainant argues that the <aol-sluts.com> domain name is confusingly similar to
Complainant’s AOL.COM mark. Complainant
argues that Respondent uses Complainant’s entire mark while adding a hyphen and
the generic term “sluts,” and that the above noted changes are not adequate to
distinguish the disputed domain name from Complainant’s mark. The Panel agrees and finds that Respondent’s <aol-sluts.com> domain name is
confusingly similar to Complainant’s AOL.COM mark under Policy ¶ 4(a)(i). See
Health Devices Corp. v.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent does not have any rights and legitimate interests in the <aol-sluts.com> domain name. Complainant is required to make a prima facie case in support of these allegations. Once Complainant has produced a prima facie case the burden of proof shifts to Respondent to show that it possesses rights or legitimate interests in the disputed domain name. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)); see also Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (“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), and then the burden shifts to Respondent to show it does have rights or legitimate interests.”). The Panel finds that Complainant has produced a prima facie case. Due to Respondent’s failure to respond to these proceedings, the Panel may assume Respondent does not have any rights or legitimate interests in the disputed domain name. See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.”); see also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond). The Panel, however, will examine the record to determine whether Respondent possesses rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c).
Complainant contends that Respondent is neither commonly known by the <aol-sluts.com> domain name nor has Complainant granted Respondent permission to use Complainant’s mark. The WHOIS information for the <aol-sluts.com> domain name identitfies “Robert Dodson c/o XVII Network” as the registrant of the disputed domain name. The Panel finds that there is no further evidence on record indicating that Respondent is commonly known by the disputed domain name, and Respondent offers no evidence to negate Complainant’s contentions. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under 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).
Complainant alleges that Respondent is using the disputed
domain name to display adult-oriented content, and that such use is evidence
that Respondent lacks rights and legitimate interests in the disputed domain
name. Complainant further alleges that
Respondent’s website features third-party links to websites that are not
affiliated with Complainant’s mark. The
Panel finds that Respondent’s diversion of Internet users to its website
offering adult-oriented content is not a use in connection with 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 Dipaolo v. Genero, FA 203168 (Nat. Arb. Forum Dec. 6, 2003) (“Diversion to
pornography is not a bona fide offering of goods or services or a legitimate
noncommercial or fair use of the domain name pursuant to Policy ¶¶ 4(c)(i) and
(iii).”); see also Yahoo! Inc. v.
Zuccarini, FA 183997 (Nat. Arb. Forum Oct. 20, 2003) (“Respondent's use of
the disputed domain names to redirect Internet users to pornographic websites,
where the names were selected specifically for the purpose of trading on the
goodwill of Complainant's marks, cannot qualify as a bona fide offering of
goods or services or as a legitimate noncommercial or fair use of the names
under the Policy.”).
The Panel finds that Policy ¶
4(a)(ii) has been satisfied.
Complainant contends that Respondent is using the disputed domain name to display adult-oriented content, and that such use is evidence of Respondent’s bad faith registration and use. Specifically, Complainant argues that Respondent is attempting to attract Internet users to its website for commercial gain. The Panel finds that Respondent’s use of the disputed domain name to display adult-oriented content is evidence that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv) because Respondent presumably collects fees associated with such content and for the hyperlinks Respondent has displayed. See Google Inc. v. Bassano, FA 232958 (Nat. Arb. Forum Mar. 8, 2004) (holding that the respondent’s use of the <googlesex.info> domain name to intentionally attract Internet users to a website featuring adult-oriented content constituted bad faith registration and use under Policy ¶ 4(b)(iv)); see also Microsoft Corp. v. Horner, D2002-0029 (WIPO Feb. 27, 2002) (holding that the respondent’s use of the complainant’s mark to post pornographic photographs and to publicize hyperlinks to additional pornographic websites evidenced bad faith use and registration of the domain name).
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 <aol-sluts.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: July 14, 2010
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