AOL Inc. v. Brian Przybylski
Claim Number: FA1102001373766
Complainant is AOL Inc. (“Complainant”), represented by James R. Davis of Arent Fox LLP, Washington, D.C., USA. Respondent is Brian Przybylski (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <aimchatdirectory.com>, registered with Melbourne IT, Ltd. d/b/a Internet Names Worldwide.
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.
ROBERT T. PFEUFFER, Senior District Judge, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 18, 2011; the National Arbitration Forum received payment on February 18, 2011.
On February 20, 2011, Melbourne IT, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the <aimchatdirectory.com> domain name is registered with Melbourne IT, Ltd. d/b/a Internet Names Worldwide and that Respondent is the current registrant of the name. Melbourne IT, Ltd. d/b/a Internet Names Worldwide has verified that Respondent is bound by the Melbourne IT, Ltd. d/b/a Internet Names Worldwide registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 22, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 14, 2011 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@aimchatdirectory.com. Also on February 22, 2011, 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.
A timely Response was received and determined to be complete on March 15, 2011.
On March 18, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed ROBERT T. PFEUFFER, Senior District Judge, as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant alleges that it has rights in the AIM mark as a result of its United States Patent and Trademark Office (“USPTO”) registrations:
Reg. No. 2,423,367 issued January 23, 2001 and
Reg. No. 2,423,368 issued January 23, 2001.
Complainant contends that Respondent’s <aimchatdirectory.com> domain name is confusingly similar to Complainant’s AIM mark because it combines the AIM mark with the descriptive terms “chat” and “directory” and the generic top-level domain (“gTLD”) “.com.”
Complainant argues that Respondent is not commonly known by the <aimchatdirectory.com> domain name. Complainant alleges that it has not authorized or licensed Respondent to use the AIM mark.
Complainant also asserts that the links featured on Respondent’s resolving website at the <aimchatdirectory.com> domain name primarily relate to adult-themed material and websites. Complainant argues that the metadata associated with the website also specifically refers to Complainant and uses terms like “sex chat,” “xxx chat,” and “adult chat.” Complainant argues that the use of these tags and the presence of the adult-themed links at the <aimchatdirectory.com> domain name tarnishes Complainant’s AIM mark and reputation and therefore indicates that Respondent does not have rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
Complainant contends that the links featured at the <aimchatdirectory.com> domain name are pay-per-click links that are intended to earn Respondent money when clicked.
Complainant alleges that the links displayed and the metadata associated with the <aimchatdirectory.com> domain name all relate to adult-oriented material and websites.
B. Respondent
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
Respondent argues that it has rights and legitimate interests in the <aimchatdirectory.com> domain name because it is making a fair use of Complainant’s AIM mark, exercising its right of free speech, and not using the disputed domain name for the business of making money. Respondent asserts that it is only providing hyperlinks to chatrooms that are either user created and run on Legacy AIM software or that are old Legacy chatrooms which were originally created by Complainant. Respondent suggests that the disputed domain name has served the purpose of providing these links since its inception. Respondent denies that it pretends to be Complainant and argues that the difference between Complainant and Respondent is evident due to Respondent’s low budget content and links. Respondent contends that any ads on the website are not there to earn revenue but only to maintain the domain name and bandwidth for user downloads. Respondent argues that the disputed domain name has made very little money in the past and is only recognized by a small number of AIM users who still use Legacy software. Respondent also denies that adult-themed content on the resolving website tarnishes Complainant’s mark by stating that the chatrooms advertised at the disputed domain name were actually created by Complainant and are not actually adult-themed.
Respondent argues that it did not register and is not using the <aimchatdirectory.com> domain name in bad faith because its use of the disputed domain name is a fair use and an exercise of its free speech rights. Respondent argues that it did not register the disputed domain name to pretend to be Complainant or cause confusion. Respondent also states that it did not register or use the disputed domain name for commercial gain as any revenue collected from the website has been very minimal and only for the purpose of maintaining the bandwidth. Respondent alleges that it registered and uses the disputed domain name solely to provide Legacy hyperlinks to chatrooms, some of which were originally created by Complainant.
The panel makes the following findings:
The domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and Respondent has no rights or legitimate interests in respect of the domain name; and the domain name has been registered and is being used in bad faith.
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."
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.
Complainant alleges that it has rights in the AIM mark as a result of its registrations with the United States Patent and Trademark Office (“USPTO”). The Panel finds that these trademark registrations are substantive evidence of Complainant’s rights in the mark for the purposes of Policy ¶ 4(a)(i). See Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the complainant’s registration of the DISNEY trademark with the USPTO prior to the respondent’s registration of the disputed domain name is sufficient to prove that the complainant has rights in the mark pursuant to Policy ¶ 4(a)(i)); see also Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (finding that “Complainant’s timely registration with the USPTO and subsequent use of the BIG TOW mark establishes rights in the mark pursuant to Policy ¶ 4(a)(i).”).
Complainant contends that Respondent’s <aimchatdirectory.com> domain name is confusingly similar to Complainant’s AIM mark because it combines the AIM mark with the descriptive terms “chat” and “directory” and the generic top-level domain (“gTLD”) “.com.” The Panel finds that adding descriptive terms to Complainant’s mark to create the disputed domain name does not negate a finding of confusing similarity under Policy ¶ 4(a)(i). See Eastman Chem. Co. v. Patel, FA 524752 (Nat. Arb. Forum Sept. 7, 2005) (“Therefore, the Panel concludes that the addition of a term descriptive of Complainant’s business, the addition of a hyphen, and the addition of the gTLD ‘.com’ are insufficient to distinguish Respondent’s domain name from Complainant’s mark.”); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (finding that by adding the term “security” to the complainant’s VANCE mark, which described the complainant’s business, the respondent “very significantly increased” the likelihood of confusion with the complainant’s mark). The Panel also finds that attaching a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”); see also Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”). The Panel has thus determined that Respondent’s <aimchatdirectory.com> domain name is confusingly similar to Complainant’s AIM mark pursuant to Policy ¶ 4(a)(i).
Complainant argues that Respondent is not commonly known by the <aimchatdirectory.com> domain name. Complainant alleges that it has not authorized or licensed Respondent to use the AIM mark. The Panel finds that the WHOIS information for the disputed domain name, which identifies the registrant as “Brian Przybylski,” does not reflect that Respondent is commonly known by the disputed domain name. The Panel has therefore concluded that Respondent lacks rights and legitimate interests in the <aimchatdirectory.com> domain name according 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 Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because the respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).
Complainant contends that Respondent is using the <aimchatdirectory.com> domain name to direct Internet users to its website featuring various links to adult-themed websites. Complainant asserts that Respondent’s resolving website also includes an advertisement for Zoosk and a link to PayPal. Complainant alleges that Respondent earns money each time a visitor clicks on the displayed links. The Panel finds that displaying and profiting from pay-per-click links hosted at a confusingly similar disputed domain name does not comport with the Policy requirements of a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use according to Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy).
Complainant also asserts that the links featured on Respondent’s resolving website at the <aimchatdirectory.com> domain name primarily relate to adult-themed material and websites. Complainant argues that the metadata associated with the website also specifically refers to Complainant and uses terms like “sex chat,” “xxx chat,” and “adult chat.” Complainant argues that the use of these tags and the presence of the adult-themed links at the <aimchatdirectory.com> domain name tarnishes Complainant’s AIM mark and reputation and therefore indicates that Respondent does not have rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). The Panel agrees that the evidence supports this allegation. See Isleworth Land Co. v. Lost In Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (finding that the respondent’s use of its domain name to link unsuspecting Internet traffic to an adult orientated website, containing images of scantily clad women in provocative poses, did not constitute a connection with a bona fide offering of goods or services or a noncommercial or fair use); see also Paws, Inc. v. Zuccarini, FA 125368 (Nat. Arb. Forum Nov. 15, 2002) (holding that the use of a domain name that is confusingly similar to an established mark to divert Internet users to an adult-oriented website “tarnishes Complainant’s mark and does not evidence noncommercial or fair use of the domain name by a respondent”).
Complainant contends that the links featured at the <aimchatdirectory.com> domain name are pay-per-click links that are intended to earn Respondent money when clicked. The Panel finds that using Complainant’s AIM mark in a domain name to attract Internet users and create source confusion at a website where these links are hosted shows that Respondent registered and uses the <aimchatdirectory.com> domain name in bad faith by attempting to profit from the goodwill of Complainant’s mark. The Panel finds this behavior evidences bad faith registration and use according to Policy ¶ 4(b)(iv). See MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme); see also The Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For Sale, FA 857581 (Nat. Arb. Forum Jan. 4, 2007) (holding that the respondent’s use of the disputed domain name to maintain a pay-per-click site displaying links unrelated to the complainant and to generate click-through revenue suggested bad faith registration and use under Policy ¶ 4(b)(iv)).
Complainant alleges that the links displayed and the metadata associated with the <aimchatdirectory.com> domain name all relate to adult-oriented material and websites. The Panel finds that as associations with this type of content may negatively affect Complainant’s mark and reputation, such use of the disputed domain name reveals bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Wells Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (finding that the respondent’s tarnishing use of the disputed domain names to redirect Internet users to adult-oriented websites was evidence that the domain names were being used in bad faith); see also 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)).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <aimchatdirectory.com> domain name be TRANSFERRED from Respondent to Complainant.
ROBERT T. PFEUFFER, Panelist
Dated: March 20, 2011
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