AOL Inc. v. Philanthropics, Inc. a/k/a Nick Spanos
Claim Number: FA1006001330703
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 <latinoaol.com>, registered with eNom, Inc.
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.
Anne M. Wallace, Q.C. as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum
On June 21, 2010, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <latinoaol.com> domain name is registered with eNom, Inc. and that the Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. 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 22, 2010, the Forum
served the Complaint and all Annexes, including a Written Notice of the
Complaint, setting a deadline of July 12, 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 email@example.com. Also on
A timely Response was received and determined to be complete on
Complainant’s Additional Submission was received on
Respondent’s Additional Submission was received on
On July 28, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Anne M. Wallace, Q.C. as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Respondent registered the disputed domain name many years after
The name LatinoAOL is nearly identical and confusingly similar to the
Respondent registered and is using the disputed domain name with a bad faith intent to capitalize on
Respondent has no rights or legitimate interests in the infringing domain
name. Respondent is not named or commonly known as
Evidence of Respondent’s bad faith includes:
registered the disputed domain name years after the
b) Respondent’s commercial web site. Respondent used the disputed domain name with a web site that provided sponsored listings from commercial web sites and that stated “This Domain Might Be For Sale – Click Here”. Respondent previously, in 2007, used the disputed domain name with a pay-per-click web site that offered to sell the domain name and included links to adult content and dating services.
are numerous UDRP decisions stating that the use of the
e) Respondent has engaged in a significant pattern of cybersquatting. Respondent owns over 1,500 domain names, many of which infringe famous third-party trademarks. This pattern of cybersquatting violates UDRP Policy 4(b)(ii).
the fame of the
Respondent says Complainant,
Even if Complainant is entitled to bring the Complaint, the
Complainant has no registered or unregistered rights in the LatinoAOL or LatinoAOL.com marks. There is no evidence Complainant used an identical or similar mark before Respondent registered the disputed domain name in June 1998.
Complainant’s evidence does not establish that the 1998 registration of the disputed domain name and the use of the domain name by Latino Army of Light has infringed any right of the Complainant.
It is highly unlikely that today’s sophisticated Internet users would be misled into thinking that Latino Army of Light’s philanthropic activities and whatever activities are carried on on the web site have some connection to Complainant. It is frivolous for Complainant to seek domain name transfer on the grounds that consumers would make the unlikely assumption that a fraternal order of members of Latin descent that sponsors food drives, little leagues and community organizations on the Lower East Side of Manhattan is somehow related to an internet services provider.
Complainant did not object to the disputed domain name for more than twelve years. This suggests that America Online, Inc., did not regard the disputed domain name as identical or similar or its use as infringing whatever rights it had.
Complainant is engaging in reverse domain name hijacking because of Complainant’s ex post facto objection to Latino Army of Light’s registration of its domain name.
Respondent says that
Respondent says Latino Army of Light is a charitable organization that is not a commercial enterprise. It is not in the same market or same product line of business as Complainant.
Cases cited by Complainant do not prove that Complainant’s commercial interests in a mark encompass monopoly rights to preclude members of an ethnic group from registering and using a domain name that identifies them by their ethnicity for the purpose of charitable services.
Respondent claims rights in the disputed domain name because it
describes Latino Army of Light, which was started in 1948 in
Respondent registers domain names and maintains sites for many philanthropic endeavors.
Respondent’s owner, Spanos, is a well-known and well-respected member and presiding officer of the Latino Army of Light. In response to Complainant’s demand for transfer of the disputed domain name, Spanos explained the history of Latino Army of Light including its charitable status. Members of Latino Army of Light have expressed their objection to Complainant’s hostile attempt to take over their web site.
Respondent has a legitimate interest in using the acronym LatinoAOL in
connection with activities of Latino Army of Light.
The disputed domain name more clearly identifies the community activities of Latino Army of Light than it does the Complainant’s internet services. The disputed domain name is merely descriptive of the services provided by Latino Army of Light.
The Respondent has made fair use of the domain name.
Respondent says that in June 1998 an officer of Latino Army of Light
registered the disputed domain name with
Latino Army of Light has engaged in charitable activities since 1948 and does not seek commercial gain from its services to the Latino community.
Complainant’s assertions of bad faith are an attempt to discredit Respondent and divert the Panel’s attention from Complainant’s reverse domain name hijacking of the disputed domain name.
Respondent is free to purchase domain names. Trading in domain names is not an unlawful activity. Respondent has never received any other UDRP complaints, nor are there any other UDRP filings against Respondent.
Respondent did not offer to sell the disputed domain name to Complainant. Charitable donations are accepted anywhere in the world and are used by the Latino Army of Light in their work. Officials of Latino Army of Light do not profit from such donations. However, not even a finding of bad faith can detract from a Respondent’s legitimate rights and interests. See Am. Online, Inc. v. Frank Albanes, D2000-1604 (WIPO Jan. 25, 2001).
Respondent did not offer to sell the disputed domain name on commercial
web sites. While the Latino Army of Light web site was under reconstruction,
the domain name was parked and under the control of the host. On the parking
page it says “may be for sale”. This is not an offer and did not reflect any
intention to sell by Latino Army of Light. The links provided by the provider
were not intended by Latino Army of Light to provide commercial online services
Respondent’s use actually demonstrates lack of bad faith. Usually links on a web site are selected to match the domain name. Therefore, the parked page should have had links to internet services. Complainant alleges the links were to adult content. Therefore Complainant cannot complain that the links are related to America Online.
Latino Army of Light is not in competition with Complainant and has no intention
of disrupting the business of America Online in providing commercial online
internet services under the
Latino Army of Light is not in the business of providing internet services for commercial gain. It is unlikely consumers would be confused between America Online and Latino Army of Light.
The complete absence of any complaint for twelve years is evidence that America Online did not regard the disputed domain name to be registered with any bad faith intention.
C. Additional Submissions
Complainant’s Additional Submission
Contrary to Respondent’s assertion,
Complainant challenges the credibility of Respondent’s assertions. Complainant says the historic WHOIS records show that for nearly all its existence the disputed domain name was owned by Jeanette Catsikeas, vice president of Mr. Spanos’s real estate company, Bapple. During this time, Spanos (and the corporate names Apartments Express Inc. and Bapple, Inc.) are listed as the administrative contact. The disputed domain name was transferred to Respondent in 2010, contradicting Spanos’s claims that he registered the disputed domain name in 1998 as an officer of Latino Army of Light.
The older WHOIS records also reveal that Spanos used the
Respondent has not submitted a single piece of evidence showing that
the purported organization, Latino Army of Light, let alone Respondent, ever
Before this dispute, the disputed domain name was dormant for all but a
brief period in 2007. Information from the Wayback Machine shows that <latinoaol.com> generally had
been inactive since its registration and its use in 2007 was limited to
promoting adult dating and content sites, not Latino Army of Light. Screen
shots from 2007 show the disputed domain name was used with a pay-per-click
site that offered to sell the disputed domain name and promoted adult content
web sites. There is no reference to Latino Army of Light. A screen shot of
Respondent’s web site immediately before
Respondent also claims its request for a charitable donation does not constitute bad faith; however, requests for any type of consideration, including charitable contributions, in excess of registration fees, constitute bad faith.
Respondent’s Additional Submission
Respondent’s additional submissions are a repetition of earlier arguments.
The panel finds as follows:
domain name <latinoaol.com> is
confusingly similar to Complainant’s
2. Respondent does not have rights or legitimate interests in the domain name.
3. Respondent registered and is using the domain name in bad faith.
In light of these findings, there is no need to discus Respondent’s allegation of reverse domain name hijacking.
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’s evidence establishes that
Complainant is the owner of the
Complainant argues Respondent’s <latinoaol.com> domain name is confusingly similar to its
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. See Hanna-Barbera Prods., Inc. v.
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
Complainant has not licensed or otherwise
authorized Respondent to use its
Respondent replaced its previously infringing web site with a web site that refers to a charitable organization called the “Latino Army of Light” shortly after Complainant sent a cease-and-desist letter to Respondent. In addition, Respondent fails to submit evidence to support its claim that “latinoaol” is an acronym for “Latino Army of Light”. Indeed, Respondent has not provided any credible evidence that the organization even exists.
Instead of a noncommercial use, Complainant argues Respondent used the disputed domain name to profit from displaying links to third-party websites. As proof, Complainant submits screen shots from 2007 of Respondent’s previously resolving website. These images show a directory website that provides links to third-party sites, primarily websites relating to online dating. The links include titles such as “Atlanta Hispanic Singles,” “Meet Latino Women,” “Sexy Singles,” and “Meet Fit Singles.” Respondent used the disputed domain name to profit from the receipt of pay-per-click fees.
The Panel agrees. Respondent’s prior use of the <latinoaol.com> domain name indicates that it does not qualify as 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 Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business 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).”); see also ALPITOUR S.p.A. v. balata inc, FA 888649 (Nat. Arb. Forum Feb. 27, 2007) (finding that “using the confusingly similar <viaggidea.com> domain name to operate a website that features links to various commercial websites from which Respondent presumably receives referral fees….is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
provides evidence that Respondent’s disputed domain name previously resolved to
a website that displayed the messages “Buy this domain” and “The domain
latinoaol.com may be for sale by its owner!”
Respondent’s offer to sell the disputed domain name to the general
public demonstrates Respondent lacks of rights and legitimate interests in the <latinoaol.com>
domain name pursuant to Policy ¶ 4(a)(ii). See
Vance Int’l, Inc. v. Abend,
FA 970871 (Nat. Arb. Forum June 8, 2007) (“UDRP precedent is clear that auctioning
domains does not constitute a bona fide offering of goods and services or a
legitimate noncommercial or fair use of domains.”); see also Mothers Against
Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum
Respondent’s prior offer to sell the disputed
domain name to the public, presumably for more than Respondent’s out-of-pocket
costs, constitutes registration and use in bad faith pursuant to Policy ¶ 4(b)(i). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum
Respondent’s disputed domain name is
confusingly similar to Complainant’s
Respondent could not have registered and used the disputed domain name
without actual or constructive knowledge of Complainant and Complainant’s
rights in the
Respondent is responsible for the content of the website resolving from
the disputed domain name even though it was a parked webpage. See St. Farm Mutual Auto. Insr.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <latinoaol.com> domain name be TRANSFERRED from Respondent to Complainant.
Anne M. Wallace, Q.C., Panelist
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National Arbitration Forum