America Online, Inc. v. Advanced
Membership Services, Inc.
Claim Number: FA0308000180703
PARTIES
Complainant
is America Online, Inc., Dulles, VA
(“Complainant”) represented by James R.
Davis II of Arent Fox Kintner Plotkin & Kahn, PLLC.
Respondent is Advanced Membership
Services, Inc., Miami, FL (“Respondent”) represented by John T. Um of Klein, Zelman, Rothermel & Dichter, LLP.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <gayaol.com>
registered with Network Solutions, Inc.
PANEL
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
Richard B. Wickersham, Ret., as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on August 7, 2003; the Forum received a hard copy of the
Complaint on August 11, 2003.
On
August 13, 2003, Network Solutions, Inc. confirmed by e-mail to the Forum that
the domain name <gayaol.com>
is registered with Network Solutions, Inc. and that Respondent is the current
registrant of the name. Network Solutions, Inc. has verified that Respondent is
bound by the Network Solutions, 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
August 14, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of September
3, 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@gayaol.com by e-mail.
A
timely Response was received and determined to be complete on September 3, 2003.
On September 12, 2003, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the Forum appointed Judge Richard B.
Wickersham, Ret., as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant,
America Online, Inc. (“AOL”), is the owner of numerous trademark registrations
worldwide for the mark AOL.
AOL
uses the registered mark AOL.COM in connection with providing services on the
Internet.
Long
prior to Respondent’s registration of the <gayaol.com>
domain name, and 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.
AOL
has invested substantial sums of money in developing and marketing its services
and marks. As a result, the AOL brand
is one of the most readily recognized and famous marks used on the Internet.
With
approximately thirty-five million subscribers, AOL operates the most widely
used interactive online service in the world and each year millions of AOL
customers worldwide obtain services offered under the AOL and AOL.COM marks;
millions more are exposed to said marks through advertising and promotion.
Many
years after AOL’s adoption and first use of its AOL marks, Respondent
registered the infringing domain name <gayaol.com>
with a bad faith intent to profit from the confusion that would be generated
from this domain.
The
<gayaol.com> domain name is
nearly identical and confusingly similar to the AOL and AOL.COM marks. Consumer confusion is particularly likely
because Respondent is using the very famous and distinctive mark AOL as a
suffix to the descriptive word “gay.”
Respondent
has no rights or legitimate interests with respect to the infringing
domain. Respondent, Advanced Membership
Services, Inc., is not commonly known as AOL and is not licensed or authorized
to use the famous AOL mark.
B.
Respondent
Respondent’s
President, Steven Polakoff, incorporated Gay All Our Lives, Inc., in the State
of Florida in February of 2002 as an organization dedicated to address critical
issues facing the gay community. Mr.
Polakoff purchased the domain name <gayaol.com>
as an acronym of his organization to operate as a platform for education and
community service. The domain name
subject to this Complaint is presently inactive, apart from a web page
announcing its intended non-commercial use.
As
an initial matter, the <gayaol.com>
domain name is clearly not identical to the AOL and AOL.COM trademarks and/or
service marks owned by Complainant. In
spite of Complainant’s allegation that Respondent intended gay to be a suffix
for AOL, the <gayaol.com>
domain name is not, and was never intended to be, associated with the marks AOL
or AOL.COM.
The
Respondent registered the domain name subject to this Complaint in good faith
as an acronym for Mr. Polakoff’s corporation and the requisite bad faith
registration required by Rule 4 of the UDRP is not present.
Based
on Complainant’s failure to satisfy its burden and Respondent’s demonstration
that: 1) the <gayaol.com> domain name is neither identical nor confusingly
similar to Complainant’s marks; 2)
Respondent has rights to, and legitimate interests in, the <gayaol.com> domain name arising from its corporate name; and
3) Respondent registered, and intends to use, the <gayaol.com> domain name in good faith, Respondent should
remain the registered owner of the domain name subject to this Complaint.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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 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;
(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.
Complainant provides evidence of a number
of trademark registrations with the United States Patent and Trademark Office
for the AOL mark, including Reg. No. 1,977,731 (registered on June 4, 1996)
related to telecommunications and computer services. The Panel concludes that this evidence demonstrates Complainant’s
rights in the AOL mark pursuant to Policy Paragraph 4(a)(i). See
Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002)
(“Under U.S. trademark law, registered marks hold a presumption that they are
inherently distinctive and have acquired secondary meaning”); see also Janus Int’l Holding Co. v.
Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions
have held that registration of a mark is prima
facie evidence of validity, which creates a rebuttable presumption that the
mark is inherently distinctive.
Respondent has the burden of refuting this assumption).
Complainant contends that Respondent’s <gayaol.com> domain name is confusingly
similar to Complainant’s AOL mark because the domain name incorporates
Complainant’s entire mark and simply adds the generic or descriptive term “gay”
to the mark. The Panel rules that the
addition of a generic or descriptive term such as “gay” does not significantly
differentiate a domain name from a registered trademark. See
Am. Online, Inc. v. Neticq.com Ltd., D2000-1606 (WIPO Feb. 12, 2001)
(finding that the addition of the generic word “Net” to Complainant’s ICQ mark,
makes the <neticq.com> domain name confusingly similar to Complainant’s
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 Complainant combined with a generic word or term).
Complainant avers that Respondent is not
commonly known by the <gayaol.com>
domain name. Moreover, Complainant
maintains that Respondent is neither authorized nor licensed to use
Complainant’s famous AOL mark. The
Panel decides that Respondent has not demonstrated any rights to or legitimate
interests in the disputed domain name under Policy Paragraph 4(c)(ii). See
RMO, Inc. v. Burbridge, FA 96949 (Nat.
Arb. Forum May 16, 2001) (interpreting Policy Paragraph 4(c)(ii) “to
require a showing that one had been commonly known by the domain name prior to
registration of the domain name to prevail”); 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 trademark name).
Complainant asserts that Respondent had
actual or constructive knowledge of Complainant’s rights in the AOL mark based
on the widespread fame of Complainant’s mark around the world. The Panel finds that Respondent’s
registration and use of the <gayaol.com>
domain name with the intent to divert Internet users to Respondent’s website
suggests that Respondent has no rights to or legitimate interests in the
disputed domain name pursuant to Policy Paragraph 4(a)(ii). 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 U.S. Franchise Sys. Inc. v. Thurston Howell III, FA 152457
(Nat. Arb. Forum May 6, 2003) (holding that Respondent’s use of Complainant’s
mark and the goodwill surrounding that mark as a means of attracting Internet
users to an unrelated business was not a bona fide offering of goods or
services).
Complainant argues that Respondent’s
registration and use of the <gayaol.com>
domain name despite either actual or constructive notice of Complainant’s
rights in its famous AOL mark demonstrates Respondent’s bad faith registration
and use. The Panel finds that
Respondent’s registration and use of a domain name confusingly similar to
Complainant’s mark despite knowledge of Complainant’s rights in the AOL mark
suggests that the disputed domain name was registered and used in bad faith
pursuant to Policy Paragraph 4(a)(iii).
See Yahoo! Inc. v. Ashby,
D2000-0241 (WIPO June 14, 2000) (finding that the fame of the YAHOO! Mark
negated any plausible explanation for Respondent’s registration of the
<yahooventures.com> domain name);
see also 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).
Moreover, Complainant argues that
Respondent’s use of the disputed domain name to divert Internet traffic to a
pornographic website establishes bad faith registration and use under the
Policy. See Youtv, Inc. v. Alemdar, FA 94243 (Nat. Arb. Forum Apr. 25,
2000) (finding bad faith where Respondent attracted users to his website for
commercial gain and linked his website to pornographic websites); see also Geocities v. Geociites.com,
D2000-0326 (WIPO June 19, 2000) (finding bad faith where Respondent linked the
domain name in question to websites displaying banner advertisements and
pornographic material).
FINDINGS AND DECISION
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <gayaol.com>
domain name be TRANSFERRED from Respondent to Complainant.
Judge Richard B. Wickersham, Ret.,
Panelist
Dated: September 26, 2003
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