America Online, Inc. v. Amigos On Line RJ
Claim Number: FA0207000115041
PARTIES
Complainant
is America Online, Inc., Dulles, VA,
USA (“Complainant”) represented by James
R. Davis, of Arent Fox Kintner
Plotkin & Kahn. Respondent is Amigos On Line RJ, Rio de Janeiro,
BRAZIL (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <aolrj.com>,
registered with Tucows, Inc.
PANEL
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.
Tyrus
R. Atkinson, Jr., as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on July 10, 2002; the Forum received a hard copy of the
Complaint on July 11, 2002.
On
July 11, 2002, Tucows, Inc. confirmed by e-mail to the Forum that the domain
name <aolrj.com> is registered
with Tucows, Inc. and that Respondent is the current registrant of the
name. Tucows, Inc. has verified that
Respondent is bound by the Tucows, 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
July 12, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of August 1,
2002 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@aolrj.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
August 14, 2002, pursuant to Complainant’s request to have the dispute decided
by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr., 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.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
The
<aolrj.com> domain name is confusingly similar to Complainant’s
AOL mark.
Respondent
has no rights or legitimate interests in the <aolrj.com> domain
name.
Respondent
registered and used the <aolrj.com> domain name in bad faith.
B.
Respondent
Respondent failed to
submit a Response in this proceeding.
FINDINGS
Complainant is the owner of numerous
worldwide trademark registrations for the AOL mark, 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. Complainant
also owns at least four Brazilian registrations for the AOL trademark, all of
which were registered before October 1997.
Complainant uses the AOL mark for, inter
alia, “computer services, namely leasing access time to computer databases,
computer bulletin boards, computer networks, and computerized research and
reference materials, in the fields of business, finance, news, weather, sports,
computing and computer software, games, music, theater, movies, travel,
education, lifestyles, hobbies and topics of general interest.” One of the uses of the AOL mark that has
gained the most notoriety for Complainant is for “telecommunications services,
namely electronic transmission of data, images, and documents via computer
terminals; electronic mail services; and facsimile transmission.” The consuming public has grown accustomed to
the AOL mark and associates the mark with Complainant’s services.
Complainant has over thirty-four million
subscribers to its AOL Internet services.
Complainant’s large customer base makes it the most widely used
interactive online service in the world.
Complainant uses the AOL mark extensively
in interstate and international commerce in connection with the advertising and
sale of its Internet and computer-related services. Complainant invests a substantial amount of money and effort
annually to promote and market its AOL mark.
As a result of Complainant’s quality services offered under the AOL mark
and Complainant’s promotional fortitude, Complainant’s AOL mark is one of the
most readily recognized and famous marks used on the Internet.
Respondent registered the <aolrj.com>
domain name on June 19, 2001.
Respondent uses the domain name in connection with a website that offers
similar online and computer services as those provided by Complainant. Moreover, Respondent’s website references
the ICQ and WinAmp services, both of which Complainant owns and operates. Complainant asserts that Respondent adopted
the “Amigos On Line” name to cause the perception that it has an interest in
the AOL mark. Respondent’s “Amigos On
Line” logo, found at the <aolrj.com> attached website, is similar
in design to Complainant’s stylized AOL logo.
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 the Respondent is identical or confusingly
similar to a trademark or service mark in which the Complainant has rights; and
(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.
Identical and/or Confusingly Similar
Complainant has established its rights in
the AOL mark through proof of worldwide trademark registration and continuous
use of the mark in commerce.
Respondent’s <aolrj.com> domain
name contains Complainant’s famous AOL mark with the addition of random letters
(“rj”) before the generic top-level domain.
Previous Panels have consistently held that the addition of a string of
indiscriminate letters to a famous mark in a second level domain name does not
differentiate the domain name from the mark.
Therefore, Respondent’s <aolrj.com> domain name is
confusingly similar to Complainant’s AOL mark.
See Kelson Physician
Partners, Inc. v. Mason, CPR003 (CPR 2000) (finding that <kelsonmd.com>
is identical or confusingly similar to Complainant’s federally registered
service mark, “Kelson”); see also Am.
Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21,
2000) (finding that <oicq.net> and <oicq.com> are confusingly similar
to Complainant’s mark, ICQ).
The Panel finds that Policy ¶ 4(a)(i) has
been satisfied.
Rights or Legitimate Interests
Complainant asserts that Respondent has
no rights or legitimate interests in the <aolrj.com> domain name
and that Respondent only uses the “Amigos On Line” name to create a false
appearance that Respondent has an interest in the AOL mark. Complainant’s contentions remain unrefuted,
so it may be presumed that Respondent has no rights or legitimate interests in
either the <aolrj.com> domain name or the “Amigos On Line”
alias. 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 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 <aolrj.com>
domain name for a website that offers online and computer services much like
the services provided by Complainant.
Respondent operates the website under the adopted name “Amigos On Line,”
which raises the inference that Respondent’s underlying intentions were to
trade off of Complainant’s established goodwill in the same e-commerce
market. The use of a confusingly
similar domain name to provide Internet users the same services that
Complainant offers does not represent a connection with a bona fide offering of
goods or services, nor does it constitute a legitimate or fair use. Therefore, pursuant to Policy ¶¶ 4(c)(i) and
(iii), Complainant has no rights or legitimate interests in the <aolrj.com>
domain name. 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 Am. Online Inc. v. Shenzhen JZT Computer
Software Co., D2000-0809 (WIPO Sept. 6, 2000) (finding that Respondent’s
operation of website offering essentially the same services as the Complainant
and displaying the Complainant’s mark was insufficient for a finding of bona
fide offering of goods or services); see also 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).
Respondent has not come forward to
provide affirmative evidence that it is commonly known by the <aolrj.com>
domain name. Most importantly,
Respondent does not answer Complainant’s assertion that Respondent’s “Amigos On
Line” moniker is a mask that makes it appear Respondent has an interest in the
AOL mark. Therefore, it may be presumed
that Respondent uses the “Amigos On Line” name as a means to further confuse
the consuming public. Respondent is
only known by the illicitly adopted “Amigos On Line RJ” name and there is no
evidence of Respondent having any interests in an abbreviated version of that
name. Hence, Respondent has no rights
or legitimate interests in the <aolrj.com> domain name pursuant to
Policy ¶ 4(c)(ii). 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 Hartford Fire Ins. Co. v. Webdeal.com, Inc.,
FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent has no rights
or legitimate interests in domain names because it is not commonly known by
Complainant’s marks and Respondent has not used the domain names in connection
with a bona fide offering of goods and services or for a legitimate
noncommercial or fair use).
Accordingly, the Panel finds that
Respondent has no rights or legitimate interests in the <aolrj.com>
domain name; thus, Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s use of the <aolrj.com>
to divert unsuspecting Internet users who attempt to access Complainant’s
service is presumably for Respondent’s monetary benefit. Respondent offers the same services that
Complainant offers and uses an illusory logo, found at its infringing website,
that is graphically similar to Complainant’s stylized AOL logo. Furthermore, it is evident that Respondent’s
“Amigos On Line” moniker is used to justify the unauthorized and improper use
of Complainant’s famous AOL mark.
Respondent’s actions were clearly designed with the intent to confuse
Internet users as to Complainant’s sponsorship or affiliation with the
infringing <aolrj.com> domain name and attached website. Therefore, Respondent registered and used the
domain name in bad faith under Policy ¶ 4(b)(iv). See Am. Online, Inc.
v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that Respondent
intentionally attempted to attract Internet users to his website for commercial
gain by creating a likelihood of confusion with the Complainant’s mark and
offering the same chat services via his website as the Complainant); see
also Luck's Music Library v. Stellar
Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the
Respondent had engaged in bad faith use and registration by linking the domain
name to a website that offers services similar to Complainant’s services,
intentionally attempting to attract, for commercial gain, Internet users to its
website by creating a likelihood of confusion with the Complainant’s marks); see
also Reuters Ltd. v. Global Net 2000,
Inc., D2000-0441 (WIPO July 13, 2000) (finding bad faith where the
Respondent attracted users to a website sponsored by the Respondent and created
confusion with the Complainant’s mark as to the source, sponsorship, or
affiliation of that website).
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
DECISION
Having established all three elements
required under the ICANN Policy, the Panel concludes that the requested relief
shall be hereby granted.
Accordingly, it is Ordered that the
domain name <aolrj.com> be transferred from Respondent to
Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: August 28, 2002.
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