America Online, Inc. v. Raju Patel a/k/a Raj
Claim Number: FA0301000142130
PARTIES
Complainant is America Online, Inc., Dulles, VA (“Complainant”) represented by James R. Davis, of Arent Fox Kintner Plotkin & Kahn. Respondent is Raju Patel a/k/a Raj, Great Neck, NY (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <aoldeals.com>, registered with Go Daddy Software, Inc.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on January 16, 2003; the Forum received a hard copy of the Complaint on January 17, 2003.
On January 17, 2003, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the domain name <aoldeals.com> is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, 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 January 17, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 6, 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@aoldeals.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.
On February 13, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <aoldeals.com> domain name is confusingly similar to Complainant’s AOL mark.
2. Respondent does not have any rights or legitimate interests in the <aoldeals.com> domain name.
3. Respondent registered and used the <aoldeals.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, America Online, Inc., is the owner of numerous trademark registrations worldwide for the AOL mark, including U.S. Trademark Reg. Nos. 1,977,731 and 1,984,337. These marks were registered on June 4, 1996 and July 2, 1996, respectively, on the Principal Register of the United States Patent and Trademark Office (“USPTO”). Complainant also owns U.S. Trademark Reg. Nos. 2,325,291 and 2,325,292 for the AOL.COM mark. Complainant uses its AOL.COM mark as a domain name for its website, wherein its AOL mark is used as a method of promoting Complainant’s various computer-related sales and services.
Complainant has used its AOL and AOL.COM marks extensively
in connection with computer and Internet-related goods and services since
1989. Under its AOL and AOL.COM marks,
Complainant operates the most widely used interactive online service in the
world. Complainant has spent millions of dollars advertising and promoting its
services under the AOL family of marks, resulting in over thirty-five million
subscribers worldwide and billions of dollars in sales.
Respondent, Raju Patel a/k/a Raj, registered the <aoldeals.com> domain name on November 14, 2002, and is not licensed or authorized to use Complainant’s marks for any purpose. Respondent uses the disputed domain name to sell various brands of perfume, and includes on its webpage a logo for “AOLDeals.com” that mimics both the font and the style of several of Complainant’s registered AOL marks. The webpage also welcomes Internet users to “America’s Online Source for Fragrance Deals!”
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.
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 has established rights in its AOL mark through registration on the Principal Register of the USPTO, as well as through widespread and continuous use of the mark.
Respondent’s <aoldeals.com>
domain name is confusingly similar
to Complainant’s AOL mark. Respondent has only added the generic word “deals”
to Complainant’s famous AOL mark, which remains the distinctive feature of the
domain name. This minor variation is
insufficient to defeat a finding of confusing similarity pursuant to Policy ¶
4(a)(i). See America Online, Inc. v. iDomainNames.com, FA 93766 (Nat. Arb.
Forum Mar. 24, 2000) (finding that Respondent’s domain name <go2AOL.com>
was confusingly similar to Complainant’s AOL mark); see also Arthur Guinness Son & Co. (Dublin)
Ltd. v. Healy/BOSTH, D2001-0026
(WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in
dispute contains the identical mark of the Complainant combined with a generic
word or term).
Accordingly, the Panel finds that the <aoldeals.com> domain name is confusingly similar to Complainant’s AOL mark under Policy ¶ 4(a)(i).
In order to prevail under Policy ¶ 4(a)(ii), Complainant must make out a prima facie case against Respondent. Complainant can accomplish this with a showing that Respondent’s activities do not equate to any of the “safe harbor” provisions enumerated in Policy ¶¶ 4(c)(i)-(iii). At that point, Complainant’s burden shifts to Respondent, and Respondent’s failure to respond to the Complaint results in an inability to meet that burden. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding where Complainant has asserted that Respondent has no rights or legitimate interests in respect of the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests with respect to the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name).
Respondent uses the <aoldeals.com> domain name to sell perfumes, none of which
are remotely associated with or known by the AOL mark. Furthermore, Respondent actually attempts to
increase the initial interest confusion associated with its infringing domain
name by mirroring Complainant’s trademark logo with its own and including text
on its webpage that gives the impression that the website is associated with
Complainant. Intentionally trading off
of the goodwill surrounding Complainant’s mark for commerical gain, without
license or authorization to do so, is neither a bona fide offering of goods and
services nor a legitimate noncommercial or fair use of the domain name. Thus, the Panel finds that Policy ¶¶ 4(c)(i) and (iii) do not apply to
Respondent. See Am. Online, Inc.
v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding
that use of Complainant’s mark “as a portal to suck surfers into a site sponsored
by Respondent hardly seems legitimate”); see also Ziegenfelder Co. v. VMH Enter., Inc.
D2000-0039 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests
based on the fact that the domain names bear no relationship to the business of
Respondent and that Respondent would only legitimately choose to use
Complainant’s mark in a domain name if Respondent was seeking to create an
impression that the two businesses were affiliated).
Complainant’s principal business is that of Internet-related services and products. In light of the fame surrounding Complainant’s business, the Panel doubts that any online entity could ever claim to be “commonly known by” any derivative of Complainant’s AOL mark. Considering both Respondent’s attempts to mirror Complainant’s marks on its website and Respondent’s failure to offer any evidence to the contrary, the Panel infers that Respondent is not commonly known by the name AOLDEALS or <aoldeals.com>, and Policy ¶ 4(c)(ii) does not apply to Respondent. See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (Interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); 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)
The Panel also chooses to view Respondent’s lack of response in this dispute as evidence that it has no rights or legitimate interests in the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response, Respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name).
Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the <aoldeals.com> domain name under Policy ¶ 4(a)(ii).
Respondent registered and used the <aoldeals.com> domain name in bad faith. The dominant feature of Respondent’s
infringing domain name is Complainant’s famous and distinctive AOL mark. Furthermore, Respondent’s has crafted its
webpage so that an Internet user familiar with Complainant’s marks could
believe that its website was in some way sponsored by Complainant. These facts permit the Panel to infer that
Respondent had actual knowledge of Complainant’s rights in the AOL mark prior
to registration of the <aoldeals.com> domain name.
Such opportunistic registration of a domain name is evidence of bad
faith 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 the Respondent demonstrated bad
faith where the Respondent was aware of the 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).
In light of the facts discussed above, the Panel infers that Respondent
is deliberately attempting to create a likelihood of confusion as to the source
or sponsorship of its website. As
Respondent is using that likelihood of confusion with Complainant’s marks to
attract Internet users for commercial gain, its activities evidence bad faith
use and registration of the infringing domain name pursuant to Policy ¶
4(b)(iv). See Am. Online, Inc. v. Tencent Comm. Corp.,
FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent
registered and used an infringing domain name to attract users to a website
sponsored by Respondent); 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 the
Complainant’s well-known marks, thus creating a likelihood of confusion
strictly for commercial gain).
The Panel thus finds that Respondent registered and used the <aoldeals.com> domain name in bad faith, and that Policy ¶ 4(a)(iii) is satisfied.
Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <aoldeals.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: February 19, 2003
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