America
Online, Inc. v. Simo Elbaz
Claim
Number: FA0306000165950
Complainant is America Online, Inc., Dulles, VA (“Complainant”) represented by James R. Davis, of Arent Fox Kintner Plotkin & Kahn. Respondent is Simo Elbaz, Miami, FL (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The domain name at issue is <aolemailaddress.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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on June 27, 2003; the Forum received a hard copy of the Complaint on June 30, 2003.
On June 30, 2003, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the domain name <aolemailaddress.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 June 30, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 21, 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@aolemailaddress.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 July 30, 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 <aolemailaddress.com> domain name is confusingly similar to Complainant’s AOL mark.
2. Respondent does not have any rights or legitimate interests in the <aolemailaddress.com> domain name.
3. Respondent registered and used the <aolemailaddress.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant operates the most widely used interactive online service in the world. Complainant provides computer services such as leasing access time to computer databases, electronic mail services, computer bulletin boards, computer networks, and computerized research and reference materials. Complainant has used the AOL mark in conjunction with these services since 1989. Complainant holds several registrations for the AOL mark with the U.S. Patent and Trademark Office, including Reg. Nos. 1,977,731 (registered June 4, 1996) and 1,984,337 (registered July 2, 1996). Complainant holds registration for the <aol.com> domain name and uses it in conjunction with its business.
Respondent registered the <aolemailaddress.com> domain name on September 19, 2002. When Respondent registered the disputed domain name, Respondent placed an advertisement within the domain name’s WHOIS information that stated five times, “this name is for sale.” When Complainant sent correspondence to Respondent requesting transfer of the domain name, Respondent replied via e-mail stating, “this domain name is for sale I will consider all reasonable offers.” Initially the disputed domain name redirected Internet users to Respondent’s <moving411.com>, a commercial website. Currently Respondent uses the disputed domain to sell listings of registered email addresses.
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 the AOL mark through use in commerce and registration with the U.S. Patent and Trademark Office.
Respondent’s <aolemailaddress.com> domain name is confusingly similar to Complainant’s AOL mark because the disputed domain name fully incorporates Complainant’s mark and merely adds the generic words “email” and “address.” The two generic words “email” and “address” are insufficient to avoid a finding of confusing similarity pursuant to Policy ¶ 4(a)(i) because they are words that are commonly associated with services provided by Complainant in conjunction with the AOL mark. Also, regardless of whether the words “email” or “address” are commonly associated with Complainant’s mark, they are generic terms; therefore, they are insufficient to avoid a finding of confusing similarity. See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where Respondent’s domain name combines Complainant’s mark with a generic term that has an obvious relationship to Complainant’s business); see also America Online, Inc. v. Anytime Online Traffic School, FA 146930 (Nat. Arb. Forum April 11, 2003) (finding that Respondent’s domain names, which incorporated Complainant’s entire mark and merely added the descriptive terms “traffic school,” “defensive driving,” and “driver improvement” did not add any distinctive features capable of overcoming a claim of confusing similarity).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent has attempted to profit from the goodwill associated with Complainant’s mark by incorporating the AOL mark in the disputed domain name, which directs Internet users to Respondent’s commercial website. Respondent has used the disputed domain name for two commercial purposes. First, the disputed domain name was previously used to redirect Internet users to Respondent’s <moving411.com> website, which is a commercial website. Second, Respondent is currently using the disputed domain name to sell listings of registered email addresses to marketers. Respondent’s use of the disputed domain name is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Wells Fargo & Co. v. Nadim, FA 127720 (Nat. Arb. Forum Nov. 29, 2002) (finding that Respondent’s use of Complainant’s WELLS FARGO mark to redirect Internet users to a domain name featuring magazine subscriptions was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name); see also Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that Respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to Complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name).
Also, Respondent is not affiliated with Complainant and the evidence fails to establish that Respondent is authorized or licensed to register or use domain names or marks containing the AOL mark. In addition, the WHOIS information for the <aolemailaddress.com> domain name lists Respondent, Simo Elbaz, as the registrant; however, it fails to establish that Respondent is commonly known by the disputed domain name. Therefore, Respondent lacks rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Tercent, Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question).
Furthermore, Respondent attempted to sell the disputed domain name by placing an advertisement within the WHOIS information for the <aolemailaddress.com> domain name. Also, Respondent attempted to sell the domain name directly to Complainant. Respondent’s attempts to sell the disputed domain name are evidence that Respondent lacks rights or legitimate interests in the domain name. See Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, Respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name); see also Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests where Respondent registered the domain name with the intention of selling its rights).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel infers that Respondent knew of Complainant’s rights in the AOL mark because Respondent attempted to sell the disputed domain name to Complainant, Respondent has fully incorporated Complainant’s mark in the disputed domain name, and Complainant’s mark is registered with the U.S. Patent and Trademark Office and has been used in commerce since 1989. Registration of a domain name, despite knowledge of Complainant’s rights, is evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii). See 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); see also Victoria’s Cyber Secret Ltd. P’ship v. V Secret Catalogue, Inc., 161 F.Supp.2d 1339, 1349 (S.D.Fla. 2001) (noting that “a Principal Register registration [of a trademark or service mark] is constructive notice of a claim of ownership so as to eliminate any defense of good faith adoption” pursuant to 15 U.S.C. § 1072).
Furthermore, Respondent’s attempts to sell the disputed domain name by proposing a sale to the Complainant and by placing an advertisement within the domain name’s WHOIS information constitutes bad faith pursuant to Policy ¶ 4(b)(i). See Microsoft Corp. v. Mehrotra, D2000-0053 (WIPO Apr. 10, 2000) (finding bad faith where that Respondent registered the domain name for the purpose of selling it, as revealed by the name Respondent chose for the registrant, “If you want this domain name, please contact me”); see also Parfums Christain Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding bad faith where Respondent’s WHOIS registration information contained the words, “This is domain name is for sale”); see also Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”).
Also, Respondent attempted to commercially benefit from the goodwill associated with Complainant’s mark by fully incorporating the AOL mark within the disputed domain name and directing Internet users to unrelated commercial sites. Respondent’s use of the disputed domain name constitutes bad faith pursuant to Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its diversionary use of Complainant's mark when the domain name resolves to commercial websites and Respondent fails to contest the Complaint, it may be concluded that Respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <aolemailaddress.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: August 13, 2003
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page