America Online, Inc. v. Gary Clowers, Sr.
Claim Number: FA0310000199821
Complainant is America Online, Inc., Dulles, VA
(“Complainant”) represented by James R.
Davis of Arent Fox Kintner Plotkin & Kahn, PLLC, 1050 Connecticut Avenue NW, Washington DC 20036. Respondent is Gary Clowers, 3185 Terrace Court, Apt.
Q, Norcross, GA 30092 (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <compuserverefundrecovery.com> registered
with Domaindiscover.
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.
The
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on October 3, 2003; the Forum received a hard copy of the
Complaint on October 9, 2003.
On
October 10, 2003, Domaindiscover confirmed by e-mail to the Forum that the domain
name <compuserverefundrecovery.com> is registered with Domaindiscover
and that Respondent is the current registrant of the name. Domaindiscover has
verified that Respondent is bound by the Domaindiscover 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
October 13, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of November 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@compuserverefundrecovery.com by e-mail.
Having
received no formal 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
November 10, 2003, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the Forum appointed the Honorable Charles K.
McCotter, Jr. (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 <compuserverefundrecovery.com>
domain name is confusingly similar to Complainant’s COMPUSERVE mark.
2. Respondent does not have any rights or
legitimate interests in the <compuserverefundrecovery.com> domain
name.
3. Respondent registered and used the <compuserverefundrecovery.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant has
provided evidence of a trademark registration with the United States Patent and
Trademark Office (“USPTO”) for the COMPUSERVE mark (Reg. No. 1,654,785
registered on August 27, 1991) in relation to, inter alia, computer
software and services. Complainant uses the mark to provide a number of
services, including assistance to consumers that have purchased products and
had problems with shipping or delivery.
Respondent
registered the <compuserverefundrecovery.com> domain name on April
30, 2003. Respondent used the disputed domain name to divert Internet traffic
to its website, which assists consumers who have paid a shipping fee for
packages not timely delivered. Respondent offered to sell the <compuserverefundrecovery.com>
domain name to Complainant for $2,300.
Respondent has subsequently said that he has stopped using the domain
name for anything.
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 that it has rights in the COMPUSERVE mark through registration
with the USPTO. 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”).
Complainant
argues that Respondent’s <compuserverefundrecovery.com> domain
name is confusingly similar to Complainant’s COMPUSERVE mark because the
disputed domain name appropriates the entire mark and simply adds the generic
or descriptive terms “refund” and “recovery” as a suffix of the mark. The
addition of these generic or descriptive terms does not serve to distinguish
sufficiently the domain name from the mark pursuant to Policy ¶ 4(a)(i) because
Complainant’s COMPUSERVE mark remains the dominant element of the domain name. See AXA China Region Ltd. v. KANNET Ltd.,
D2000-1377 (WIPO Nov. 29, 2000) (finding that common geographic qualifiers or
generic nouns can rarely be relied upon to differentiate the mark if the other
elements of the domain name comprise a mark or marks in which another party has
rights); 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).
Accordingly, the
Panel concludes that Complainant has established Policy ¶ 4(a)(i).
Respondent has
failed to come forward and challenge the allegations in the Complaint. Thus,
the Panel accepts all of Complainant’s reasonable allegations and inferences to
be true. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc.,
FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to
respond allows all reasonable inferences of fact in the allegations of
Complainant to be deemed true); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000)
(finding that failing to respond allows a presumption that Complainant’s
allegations are true unless clearly contradicted by the evidence).
Furthermore,
based on Respondent’s failure to respond to the Complaint, the Panel is
permitted to presume Respondent lacks any rights to or legitimate interests in
the disputed domain name with regard to Policy ¶ 4(a)(ii). See Parfums Christian Dior v. QTR Corp.,
D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response,
Respondent has failed to invoke any circumstance which could demonstrate any
rights or legitimate interests in the domain name); see also Canadian Imperial Bank of Commerce v. D3M
Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no
rights or legitimate interests where no such right or interest was immediately
apparent to the Panel and Respondent did not come forward to suggest any right
or interest it may have possessed).
Respondent is
using the <compuserverefundrecovery.com> domain name to divert
Internet traffic to its website, which assists consumers who have paid a
shipping fee for packages not timely delivered. Respondent’s use of the
disputed domain name represents neither a bona fide offering of goods or
services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use
under Policy ¶ 4(c)(iii) because Respondent is using a domain name confusingly
similar to Complainant’s mark to divert Internet users to Respondent’s
unauthorized, commercial website. See Disney Enterss, Inc. v. Dot Stop,
FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that Respondent’s
diversionary use of Complainant’s mark to attract Internet users to its own
website, which contained a series of hyperlinks to unrelated websites, was
neither a bona fide offering of goods or services nor a legitimate
noncommercial or fair use of the disputed domain names); see also U.S.
Franchise Sys., Inc. v. Howell, 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).
Moreover, Respondent has proffered no evidence and there is no
suggestion in the record that Respondent is commonly known by COMPUSERVE REFUND
RECOVERY or <compuserverefundrecovery.com>. Accordingly, the Panel finds that
Respondent has failed to demonstrate any rights to or legitimate interests in
the disputed domain name for purposes of Policy ¶ 4(c)(ii). See RMO, Inc. v.
Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶
4(c)(ii) "to require a showing that one has been commonly known by the
domain name prior to registration of the domain name to prevail"); see
also Gallup Inc. v. Amish Country
Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent
does not have rights in a domain name when Respondent is not known by the
mark).
The Panel
concludes that Complainant has established Policy ¶ 4(a)(ii).
Respondent’s
unauthorized, commercial use of the <compuserverefundrecovery.com> domain
name, a domain name confusingly similar to Complainant’s COMPUSERVE mark,
demonstrates Respondent’s bad faith registration and use of the disputed domain
name because Respondent’s intentional attempt to attract Internet users to its
website for commercial gain by creating a likelihood of confusion with
Complainant’s mark evidences bad faith registration and use pursuant to Policy
¶ 4(b)(iv). See 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)); see also 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).
Moreover,
Respondent’s offer to sell the <compuserverefundrecovery.com>
domain name to Complainant for $2,300 suggests that the disputed domain name
was registered primarily for the purpose of selling the domain name registration
to Complainant for valuable consideration in excess of Complainant’s
out-of-pocket costs directly related to the domain name. See Little Six, Inc v. Domain For Sale, FA
96967 (Nat. Arb. Forum Apr. 30, 2001) (finding Respondent's offer to sell the
domain name at issue to Complainant was evidence of bad faith); see also World Wrestling Fed’n Entmt., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000)
(finding that Respondent used the domain name in bad faith because he offered
to sell the domain name for valuable consideration in excess of any
out-of-pocket costs).
The Panel
concludes that Policy ¶ 4(a)(iii) has been established.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <compuserverefundrecovery.com> domain name be TRANSFERRED
from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated:
November 14, 2003
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