America Online, Inc. v. Phat Nasty
Productions
Claim Number: FA0302000146940
Complainant is America Online, Inc., Dulles, VA (“Complainant”) represented by James R. Davis, of Arent
Fox Kintner Plotkin & Kahn. Respondent is Phat Nasty Productions, Orlando, FL (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <aolnasties.com>,
registered with Dotster.
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.
Judge
Harold Kalina (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on February 27, 2003; the Forum received a hard copy of the
Complaint on March 3, 2003.
On
March 3, 2003, Dotster confirmed by e-mail to the Forum that the domain name <aolnasties.com> is registered
with Dotster and that Respondent is the current registrant of the name. Dotster
has verified that Respondent is bound by the Dotster 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
March 3, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
March 24, 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@aolnasties.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
March 27, 2003, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed Judge Harold Kalina (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 <aolnasties.com> domain name is confusingly similar to
Complainant’s AOL mark.
2. Respondent does not have any rights or
legitimate interests in the <aolnasties.com>
domain name.
3. Respondent registered and used the <aolnasties.com> domain name in
bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
American Online, Inc., owns numerous trademark registrations worldwide for the
AOL mark, including trademarks registered with the United States Patent and
Trademark Office (Reg. No. 1,977,731, registered on June 4, 1996 and Reg. No.
1,984,337, registered on July 2, 1996).
Complainant uses the AOL mark in the online industry, providing services
such as access time to computer databases, computerized research and reference
materials, and computer bulletin boards.
Complainant also offers online shopping services under the AOL mark in
fields of computer goods and services and general consumer goods (e.g.,
movies).
Complainant
holds a trademark registration for the AOL.COM mark (Reg. No. 2,325,291,
registered on March 7, 2000). This mark
represents Complainant’s primary website where the AOL mark is used extensively
and Complainant’s wide array of services may be accessed. Complainant has over thirty-five million
subscribers, making its AOL online services the most widely used in the
world. In addition, each year millions of
non-subscribers access Complainant’s AOL services on the Internet.
Since initiating
its online business, Complainant has actively invested substantial sums of
money to develop and market its AOL services.
In an effort to strengthen AOL services Complainant widely publicizes
through a worldwide advertising campaign, investing millions of dollars in
advertising through many media outlets.
Because of Complainant’s continuous promotional efforts and resultant
business success in connection with its AOL online services, the AOL mark has
become very well-known and famous among members of the purchasing public.
Respondent
registered the <aolnasties.com>
domain name on October 30, 2002.
Respondent uses the domain name for a website that solicits sales of
pornographic videos.
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
demonstrated rights in the AOL mark through proof of trademark registration
with the U. S. Patent and Trademark Office.
Respondent’s <aolnasties.com> domain name
incorporates Complainant’s entire AOL mark.
Complainant’s AOL mark is distinctive and carries a significant amount
of goodwill stemming from Complainant’s highly successful online services. The AOL mark is predominantly displayed in
the <aolnasties.com> domain
name. The second level domain name is
comprised of two parts: the first is
the AOL mark; and the second is the slang word “nasties.” Taken together “aolnasties” has no source
identifying significance and neither does the slang word “nasties.” However, the distinctiveness of the AOL mark
signifies Complainant’s online services and as a consequence the AOL mark is
the focal point of the <aolnasties.com>
domain name. Therefore, the Panel finds
that Respondent’s <aolnasties.com>
domain name is confusingly similar to Complainant’s famous AOL mark. See
Sony Kabushiki Kaisha v. Inja, Kil,
D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an
ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall
impression of the dominant part of the name in each case, namely the trademark
SONY” and thus Policy ¶ 4(a)(i) is satisfied); 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).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent has
not come forward to challenge the Complainant, which establishes a case against
Respondent’s rights or legitimate interests in the <aolnasties.com> domain name. In the absence of a Response contesting Complainant’s
allegations, those allegations will be accepted as true. Moreover, the Panel will draw all reasonable
inferences in Complainant’s favor. 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 Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000)
(finding it appropriate for the Panel to draw adverse inferences from
Respondent’s failure to reply to the Complaint).
Respondent uses
the <aolnasties.com> domain
name in association with a website that sells pornographic videos. Since the <aolnasties.com> domain name displays Complainant’s famous
AOL mark and Respondent has no apparent interest in the AOL mark or in the
“aolnasties” second level domain, such use is disruptive of Complainant’s
online video shopping services.
Respondent uses the <aolnasties.com>
domain name to offer a similar service, in that Respondent sells videos at the
resulting website but the videos contain pornographic content. Respondent’s active use is unpleasant by
nature and does not constitute rights or legitimate interests under Policy ¶¶
4(c)(i) or (iii). See MBS
Computers Ltd. v. Workman, FA
96632 (Nat. Arb. Forum Mar. 16, 2001) (finding no rights or legitimate
interests when Respondent is using a domain name identical to Complainant’s
mark and is offering similar services); see
also MSNBC Cable, LLC v. Tysys.com,
D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in
the famous MSNBC mark where Respondent attempted to profit using the
Complainant’s mark by redirecting Internet traffic to its own website).
Furthermore, no
rights or legitimate interests in favor of Respondent, pursuant to Policy ¶
4(c)(ii), are palpable given the facts before the Panel. Complainant claims that Respondent is known
as Phat Nasty Productions, which is the name listed under the Registrant,
Administrative Contact and Technical Contact sections on the WHOIS information
page. There is no evidence to warrant a
finding that Respondent is commonly known by the <aolnasties.com> domain name and Complainant has never
licensed or authorized Respondent to use the AOL mark. Therefore, Policy ¶ 4(a)(ii) will not work
in Respondent’s favor. See Broadcom
Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001)
(finding no rights or legitimate interests because Respondent is not commonly
known by the disputed domain name or using the domain name in connection with a
legitimate or fair use); see also Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where
Respondent was not commonly known by the mark and never applied for a license
or permission from Complainant to use the trademarked name).
Accordingly, the
Panel finds that Respondent has no rights or legitimate interests in the <aolnasties.com> domain name and
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent uses
the <aolnasties.com> domain
name to sell pornographic videos, which is likely to tarnish the AOL mark’s
goodwill by way of source confusion.
The Panel presumes that Respondent profits from this venture due to the
commercial sale of the pornographic videos.
Furthermore, nothing on record suggests that Respondent has an interest
in the AOL mark, and the AOL moniker has no logical connection with Respondent’s
adult-related content at the resulting website. The Panel thus concludes that Respondent registered and uses the <aolnasties.com> domain name to
profit from the goodwill associated with the AOL mark in bad faith under 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 Busy Body, Inc. v.
Fitness Outlet, Inc., D2000-0127 WIPO Apr. 22, 2000) (finding bad faith
where Respondent attempted to attract customers to its website,
<efitnesswholesale.com>, and created confusion by offering similar
products for sale as Complainant).
Moreover, due to
the notoriety of the AOL mark, the Panel presumes that Respondent was aware of
the significant value the AOL mark holds for Complainant. Respondent failed to seize the opportunity
to explain its connection with the AOL mark, and its justification for
registering a domain name that incorporates the famous trademark. Thus, the Panel infers that Respondent
registered the <aolnasties.com>
domain name in an attempt to capitalize on the AOL mark’s goodwill. Registering a domain name with knowledge of
Complainant’s rights in a mark reflected in the domain name is evidence of bad
faith under Policy ¶ 4(a)(iii). See Exxon
Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that
Respondent had actual and constructive knowledge of Complainant’s EXXON mark
given the worldwide prominence of the mark and thus Respondent registered the
domain name in bad faith); see also Samsonite Corp. v. Colony Holding, FA
94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith
includes actual or constructive knowledge of a commonly known mark at the time
of registration).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it
is Ordered that the <aolnasties.com>
domain name be TRANSFERRED from
Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated:
April 1, 2003
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