AOL Inc. v. WTS aka Vikas Lov
Claim Number: FA1309001520401
Complainant is AOL Inc. (“Complainant”), represented by James R. Davis of Arent Fox LLP, Washington, D.C., USA. Respondent is WTS aka Vikas Lov (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <aolemailsupport.com>, registered with PDR LTD. d/b/a PUBLICDOMAINREGISTRY.COM.
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.
Luz Helena Villamil Jimenez as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 19, 2013; the National Arbitration Forum received payment on September 19, 2013.
On September 20, 2013, PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM confirmed by e-mail to the National Arbitration Forum that the <aolemailsupport.com> domain name is registered with PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM and that Respondent is the current registrant of the name. PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM has verified that Respondent is bound by the PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM 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 September 20, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 10, 2013 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@aolemailsupport.com. Also on September 20, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 September 23, 2013.
On September 25, 2013, the parties mutually agreed to an order requesting a stay of the proceedings. The Order to Stay the Administrative Proceeding was approved pursuant to Supplemental Rule 6(b)(ii) on September 25, 2013.
On November 8, 2013, at the request of Complainant, the Order to Stay was removed and this proceeding commenced.
On November 12, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Luz Helena Villamil Jimenez as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts that AOL uses its mark AOL.COM in connection with the AOL portal Web site. Furthermore, Complainant contends that it is the owner of Reg. Nos. 1,977,731 and 1,984,337 for the trademark AOL respectively in Classes 35, 38 and 42 on the one hand, and in Class 42 on the other; in addition, complainant states that it also owns Reg. Nos. 2,325,291 and 2,325,292 for the trademark AOL.COM in Classes 42, and 38 respectively, all of said trademarks having been registered with the United States Patent and Trademark Office ("USPTO"). The marks are used in connection with, among other things, providing a wide range of online services, including email and related support services to its customers.
Complainant adds that the mark AOL is used extensively at the AOL Web site, which is a significant method of promoting AOL's service. As a result, when the mark AOL is used in a domain name consumers associate the mark AOL with AOL's services. Complainant explains that AOL has invested substantial sums of money in developing and marketing its services and marks. As a result, the AOL mark is one of the most readily recognized and famous marks in the world.
Complainant also states that long before Respondent’s registration of the domain name <aolemailsupport.com> (at least as early as 1989 for the mark AOL, and 1992 for the mark AOL.COM), AOL adopted and began using its marks in connection with computer online services and other Internet-related services, including providing support services to AOL users.
Complainant contends that Respondent’s domain name <aolemailsupport.com> is confusingly similar to the AOL and AOL.COM marks and that consumer confusion is particularly likely given that the domain name uses the famous AOL name and mark as a prefix to the generic phrase “email support,” which turns out to be one of the many services that AOL provides to its many customers. According to the Complainant, the resulting domain name <aolemailsupport.com> falsely implies AOL endorses or is affiliated with Respondent’s IT support services.
B. Respondent
Respondent’s contentions in regards to this dispute consist entirely of various statements made through e-mail to the Forum and to Complainant. The Panel therefore establishes that no response was given to the Complaint in accordance with Policy ¶ 4(c).
Complainant is the owner of the trademarks AOL and AOL.COM, as it is evidenced by the registration copies that were submitted by the Complainant as Annexes B and C to the Complaint, consisting of copies of the relevant records taken from the website of the U.S. Patent and Trademark Office.
The Panel therefore finds that with such registrations the Complainant has established rights in the mark AOL under Policy ¶ 4(a)(i) regardless of the location of Respondent. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”).
Complainant next argues that Respondent’s <aolemailsupport.com> domain name is confusingly similar to the AOL mark. Complainant notes that the domain name adds the phrase “email support” to the AOL mark—a mark that is used to provide e-mail services. The Panel agrees that the phrase “email support” as it appears in this domain name enhances the confusing similarity of the domain name, as the AOL mark is known to be used in connection with e-mail services. See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark). The Panel further agrees that the generic top-level domain (“gTLD”) “.com” is not relevant to a confusing similarity analysis under Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel therefore concludes that the <aolemailsupport.com> domain name is confusingly similar to the AOL mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent is not commonly known by the disputed domain name or any of Complainant’s marks. The Panel notes that the disputed domain name registrant information identifies “WTS aka Vikas Lov” as the registrant. Based upon this information, the Panel finds that indeed, the Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
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.
The first requirement of the Policy in Paragraph 4(a)(i) for the Complainant to meet is to demonstrate its rights over a trademark identical or confusingly similar to a domain name registered by the Respondent.
In the present case, Complainant demonstrated with the trademark registration copies submitted with the Complaint that it is the exclusive owner of the trademarks AOL and AOL.COM.
The similarities between the trademarks AOL / AOL.COM and the domain name <aolemailsupport.com> are undeniable. The trademark AOL is totally contained in the disputed domain name and in addition the words “email support” are merely explicative and directly refer to some of the services rendered by the Complainant, and therefore it would not be possible to deny that there is a virtual identity, but in any case an irrefutable confusing similarity, between the registered trademark and the disputed domain name.
In light of the foregoing, there is no doubt for the Panel that the Policy requirement in Paragraph 4(a)(i) is met as to the fact that the disputed domain name <aolemailsupport.com> is confusingly similar to the trademarks owned by the Complainant.
Complainant argues that Respondent has no connection whatsoever with the name “AOL”. The Panel finds that since the Registrant of the disputed domain name is “WTS aka Vikas Lov”, indeed, Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Moreover, according to Complainant, Respondent uses the <aolemailsupport.com> domain name to operate a competing business. The Panel notes that according to the evidence submitted by the Complainant the domain name resolves to a website wherein a picture of a woman with a headset on is displayed alongside the text: “AOL Technical Support will help you with Certified Technicians,” with another page similarly showing a list of “AOL Customer Support Services” offered through the domain name. The Panel further notes that the domain name apparently serves as a method for sending Internet users who click on the links to the <techsaviours.com> domain name wherein competing and unauthorized support services for AOL products are offered. See id. The panel in Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006), did not find a bona fide offering, or a legitimate use, when the domain name was used to provide competing services. The Panel agrees that Respondent cannot claim to have either a Policy ¶ 4(c)(i) bona fide offering of goods or services, or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use, when the domain name is used to shuttle Internet users to Respondent’s own competing services.
Complainant also notes its fear that Respondent is passing itself off as Complainant, or a subsidiary of Complainant. The Panel again notes that Respondent uses the AOL mark explicitly in phrasing its services as being “AOL” services, and that its staff are “certified.” (Complaint Annex, Ex. F). The Panel agrees that Respondent is attempting to pass itself off as the Complainant, and as such none of its offerings through its purely commercial use of the domain name are bona fide within the meaning of Policy ¶ 4(c)(i). See, e.g., Crow v. LOVEARTH.net, FA 203208 (Nat. Arb. Forum Nov. 28, 2003) (“It is neither a bona fide offerings [sic] of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant . . . .”).
In light of the foregoing, the Panel establishes that the Policy requirement in Paragraph 4(a)(ii) is met inasmuch as the Respondent has no rights or legitimate interests in respect of the domain name <aolemailsupport.com> .
According to Paragraph 4 (b) of the Policy, when certain circumstances are present in a given case they shall be evidence of the registration and use of a domain name in bad faith. Among such circumstances the Policy mentions in Paragraph 4(b)(i): circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name;
In the present case Complainant claims that when he asked to the Respondent if he would transfer the domain the Respondent answered that he “got this domain as a premium domain and paid a lot of money, and therefore if the Complainant wanted the domain name he would have to ‘pay what I paid to get this domain.’” This statement, though, contradicts the prior response given to the Complainant by the Respondent when he stated that “this domain name aolemailsupport was available on the domain registered websites. And it was not taken so I though (sic) we should take it…” From the foregoing statements It is clear to the panel that the Respondent found a domain name that was not registered and “took it” less than a year ago, with the intention of selling it for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name.
Complainant argues as well that Respondent’s operation of a competing business through the <aolemailsupport.com> domain name is evidence of bad faith commercial disruption. The Panel again notes that evidently the disputed domain name functions as a front—Internet users that click on any of the links on this domain name are taken to Respondent’s competing business at the <techsaviours.com> domain name. The Panel agrees that this use of the <aolemailsupport.com> domain name evidences a Policy ¶ 4(b)(iii) bad faith attempt to unfairly disrupt Complainant’s business by using a confusingly similar domain name to promote a directly competing commercial enterprise. See Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website).
Complainant also argues that Respondent generates commercial gains by creating the false impression that its goods and services are endorsed by or affiliated with Complainant. The Panel once again notes the usage of the AOL mark through the disputed domain name’s landing pages, an attempt it seems to associate Respondent’s competing business with Complainant’s AOL business. In Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002), the panel found a bad faith likelihood of confusion under Policy ¶ 4(b)(iv), when a directly competing business was operating through and profiting from the use of a confusingly similar domain name.
All the foregoing makes it imperative to conclude that there is bad faith registration and use of the disputed domain name by the Respondent in the case at hand under Policy ¶ 4(b)(i).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <aolemailsupport.com> domain name be TRANSFERRED from Respondent to Complainant.
Luz Helena Villamil Jimenez, Panelist
Dated: November 26, 2013
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