DECISION

 

America Online, Inc. v. Ultimate a/k/a Richard Stamin

Claim Number: FA0212000136299

 

PARTIES

Complainant is America Online, Inc., Dulles, VA (“Complainant”) represented by James R. Davis, II, of Arent Fox Kintner Plotkin & Kahn.  Respondent is Ultimate a/k/a Richard Stamin, San Diego, CA (“Respondent”).

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <4-aol.com> and <www4-aol.com>, registered with Register.com, Inc.

 

PANEL

On January 8, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James P. Buchele as Panelist.  The undersigned certifies that he or has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on December 6, 2002; the Forum received a hard copy of the Complaint on December 12, 2002.

 

On December 9, 2002, Register.com, Inc. confirmed by e-mail to the Forum that the domain names <4-aol.com> and <www4-aol.com> are registered with Register.com, Inc. and that Respondent is the current registrant of the names. Register.com, Inc. has verified that Respondent is bound by the Register.com, 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 December 12, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 2, 2003 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@4-aol.com and postmaster@www4-aol.com by e-mail.

 

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

 

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the 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 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:

 

Respondent’s <4-aol.com> and <www4-aol.com> domain names are confusingly similar to Complainant’s AOL mark.

 

Respondent does not have any rights or legitimate interests in the <4-aol.com> and <www4-aol.com> domain names.

 

Respondent registered and used the <4-aol.com> and <www4-aol.com> domain names in bad faith.

 

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

 

FINDINGS

Complainant, America Online, Inc., is the owner of numerous trademark registrations worldwide for the mark AOL, including U.S. Trademark Reg. Nos. 1,977,731 and 1,984,337, which were registered on June 4, 1996 and July 2, 1996, respectively, on the Principal Register of the United States Patent and Trademark Office. Complainant owns U.S. Trademark Reg. Nos. 2,325,291 and 2,325,292 for the mark AOL.COM. Complainant uses its mark AOL.COM as a domain name for its website, wherein its mark AOL is used extensively as a significant method of promoting Complainant’s various computer-related sales and services. As a result, consumers associate the mark AOL, when used in a domain name, with Complainant’s services.

 

Respondent, Ultimate a/k/a Richard Stamin, registered the <4-aol.com> and <www4-aol.com> domain names on September 2, 2002, and is not licensed or authorized to use the AOL mark for any purpose. Respondent uses the disputed domain names to redirect Internet users to a commercial website at <applauds.org>, which sells various medications

 

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.”

 

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the 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.

 

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 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 and/or Confusingly Similar

 

Complainant has established rights in the AOL and AOL.COM marks through registration on the Principal Register of the United States Patent and Trademark Office, as well as through widespread and continuous use of the mark in commerce.

 

Respondent’s <4-aol.com> and <www4-aol.com> domain names are both confusingly similar to Complainant’s registered AOL and AOL.COM marks. The addition of the “4-” prefix to Complainant’s mark in both domain names does not operate to distinguish the mark in any notable fashion. The addition of a simple number and a hyphen, especially in light of the strength of Complainant’s mark, is not enough of a change to prevent a finding of confusing similarity. See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that adding the suffixes "502" and "520" to the ICQ trademark does little to reduce the potential for confusion); see also Am. Online Inc. v. Chinese ICQ Network, D2000-0808 (WIPO Aug. 31, 2000) (finding that the addition of the numeral 4 in the domain name <4icq.com> does nothing to deflect the impact on the viewer of the mark ICQ and is therefore confusingly similar).

 

Respondent also added the “www” prefix to one of its domain names. This phrase, an acronym for “world wide web,” also does not change the fact that the dominant feature of the domain name remains the AOL mark. See Dow Jones & Co., Inc. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000) (holding that the deliberate introduction of errors or changes, such as the addition of a fourth “w” or the omission of periods or other such generic typos do not change Respondent’s infringement on a core trademark held by Complainant); see also Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that Respondent’s domain name <wwwbankofamerica.com> is confusingly similar to Complainant’s registered trademark BANK OF AMERICA because it “takes advantage of a typing error (eliminating the period between the www and the domain name) that users commonly make when searching on the Internet”).

 

Accordingly, the Panel finds that the <4-aol.com> and <www4-aol.com> domain names are confusingly similar to Complainant’s AOL and AOL.COM marks under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Respondent failed to respond to the Complaint in this dispute. As such, the Panel will accept as true all substantiated allegations put forth in the Complaint, and will draw all logical inferences accordingly. See 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”); see also Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).

 

Respondent uses the <4-aol.com> and <www4-aol.com> domain names to redirect Internet users to the <applauds.org> domain name, a commercial website which sells various medications. Nothing on this website makes reference to AOL. Respondent presumably recieves a referral fee for Internet users directed to this website through its use of Complainant’s registered mark. Such use is not a bona fide offering of goods or services as contemplated by Policy ¶ 4(c)(i), nor is it evidence of legitimate noncommercial or fair use of the domain names pursuant to Policy ¶ 4(c)(iii). See Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because Respondent's sole purpose in selecting the domain names was to cause confusion with Complainant's website and marks, it's use of the names was not in connection with the offering of goods or services or any other fair use); see also AltaVista v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding that use of the domain name to direct users to other, unconnected websites does not constitute a legitimate interest in the domain name).

 

Respondent, appearing to be known as “Ultimate” or “Richard Stamin,” does not appear to be “commonly known by” the <4-aol.com> or <www4-aol.com> domain names. In light of the fame surrounding the AOL mark, the Panel finds it difficult to imagine that Respondent could ever claim to be commonly known by any derriviative of the AOL mark, and finds that Policy ¶ 4(c)(ii) is inapplicable to Respondent. See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one “would be hard pressed to find a person who may show a right or legitimate interest” in a domain name containing Complainant's distinct and famous NIKE trademark).

 

Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the <4-aol.com> and <www4-aol.com> domain names under Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

The fame and goodwill surrounding the AOL mark, along with its registration on the Principal Register of the United States Patent and Trademark Office, permit the Panel to infer that Respondent was aware of Complainant’s rights in the mark prior to its registration of the <4-aol.com> and <www4-aol.com> domain names. Registration of domain names where Respondent had actual knowledge that Complainant had rights in a mark that Respondent was appropriating equates to bad faith registration under Policy ¶ 4(a)(iii). See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”); see also Reuters Ltd. v. Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000) (finding that Respondent demonstrated bad faith where Respondent was aware of Complainant’s famous mark when registering the domain name as well as aware of the deception and confusion that would inevitably follow if he used the domain names).

 

Respondent’s use of the disputed domain names evidences an attempt to profit off of the confusion created by its registration of two domain names incorporating the AOL mark. Such an attempt to create a likelihood of confusion as to the source or sponsorship of a website for commercial gain is an example of bad faith use and registration illustrated in Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with Complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain). 

 

Accordingly, the Panel finds that Respondent registered and used the <4-aol.com> and <www4-aol.com> domain names in bad faith, and Policy ¶ 4(a)(iii) is satisfied.

 

DECISION

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

 

Accordingly, it is Ordered that the <4-aol.com> and <www4-aol.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

James P. Buchele, Panelist

Dated: January 16, 2003

 

 

 

 

 

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