America Online, Inc. v. Sandie Kloszewski
d/b/a Pink Domain
Claim
Number: FA0310000204148
Complainant is America Online, Inc. (“Complainant”), represented
by James R. Davis II of Arent Fox Kintner Plotkin & Kahn, 1050 Connecticut Avenue, NW,
Washington, DC 20036. Respondent is Sandie Kloszewski d/b/a Pink Domain (“Respondent”), 2505 Laird Street, Santa Ana, CA 92706.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <aol-8plus.com> and
<aolfact.com>, registered with Melbourne IT, Ltd. d/b/a
Internet Names Worldwide.
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically October 23, 2003; the Forum received a hard copy of the
Complaint October 27, 2003.
On
October 29, 2003, Melbourne IT, Ltd. d/b/a Internet Names Worldwide confirmed
by e-mail to the Forum that the domain names <aol-8plus.com> and
<aolfact.com> are registered with Melbourne IT, Ltd. d/b/a Internet
Names Worldwide and that Respondent is the current registrant of the names. Melbourne
IT, Ltd. d/b/a Internet Names Worldwide verified that Respondent is bound by
the Melbourne IT, Ltd. d/b/a Internet Names Worldwide 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 30, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of November 19, 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@aol-8plus.com and
postmaster@aolfact.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
November 25, 2003, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks
Johnson as Panelist.
Having
reviewed the communications records, the Administrative Panel (the "Panel")
finds that the Forum 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain name registered by Respondent,
<aol-8plus.com> and <aolfact.com>, are confusingly
similar to Complainant’s AOL mark.
2. Respondent has no rights or legitimate
interests in the <aol-8plus.com> and <aolfact.com>
domain names.
3. Respondent registered and used the <aol-8plus.com>
and <aolfact.com> domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant
began to use its AOL mark in 1989 for its computer online services and other
Internet-related services. Currently
Complainant operates the most widely-used interactive online service in the
world and each year millions of AOL customers worldwide obtain services from
Complainant. Complainant is the owner
of a software program called “AOL 8.0 Plus.”
Complainant is the owner of several trademark registrations worldwide
for the AOL mark, including U.S. trademark registration Nos. 1,977,731 and
1,984,337, which were registered June 4, 1996, and July 2, 1996,
respectively.
Respondent
registered the <aol-8plus.com> and <aolfact.com>
domain names April 30, 2003. Respondent
uses the <aol-8plus.com> domain name to redirect Internet users to
Respondent’s commercial website, <pinkdomain.info>. Respondent uses the <pinkdomain.info>
website to advertise that it develops websites for customers that desire to
host websites that feature adult oriented web-cam shows. Currently, the <aolfact.com>
domain name resolves to a parking page for Webhosting.com and states “Welcome
to the future web site of … aolfact.com.”
Complainant asserts that when it contacted Respondent to attempt to
settle the dispute, Respondent stated that it would not transfer the domain
names to Complainant for less than $10,000.
Complainant also asserts that in a telephone conversation between the
two parties, Respondent admitted that it was a former AOL user.
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
will draw such inferences as the Panel 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
established by extrinsic proof in this proceeding that it has rights in the AOL
mark through its registration of the mark with the U.S. Patent and Trademark
Office (“USPTO”) and through the mark’s use in commerce since 1989. 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 Tuxedos
By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common
law rights in a mark where its use was continuous and ongoing, and secondary
meaning was established).
Respondent’s
domain names are confusingly similar to Complainant’s mark because the domain
names incorporate the AOL mark as a prefix to the generic phrase or word,
“8plus” and “fact,” and then add the generic top-level domain “.com.” The <aol-8plus.com> domain name
is likely to confuse and mislead consumers into falsely believing that the
services provided by Respondent are part of the AOL Version 8.0 software. The <aolfact.com> domain name
is likely to confuse and mislead consumers into falsely believing that
Respondent’s site provides information or “facts” about the AOL service. See Space
Imaging LLC v. Brownwell, 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 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); see also Rollerblade,
Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top
level of the domain name such as “.net” or “.com” does not affect the domain
name for the purpose of determining whether it is identical or confusingly
similar).
The
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Due to
Respondent’s failure to provide a Response to the Panel in this proceeding, the
Panel may accept all reasonable allegations in the Complaint as true. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000)
(stating that “[i]n the absence of a response, it is appropriate to accept as
true all allegations of the Complaint”).
Further, where Respondent fails to respond and controvert Complainant’s
allegations, the Panel may make all reasonable inferences in favor of the
Complainant. see also 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).
Moreover, since
Respondent failed to dispute the allegations of the Complaint, the Panel may
presume that Respondent lacks rights and legitimate interests in the domain
names. 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 Geocities v. Geociites.com,
D2000-0326 (WIPO June 19, 2000) (finding that Respondent has no rights or
legitimate interests in the domain name because Respondent never submitted a
response or provided the Panel with evidence to suggest otherwise).
Respondent is
not authorized or licensed to register or use domain names that incorporate the
AOL mark. The WHOIS information for the
disputed domain names does not establish that Respondent is commonly known by
the domain names or the AOL mark.
Therefore, the Panel finds that Respondent lacks rights and legitimate
interests in the domain names pursuant to Policy ¶ 4(c)(ii). See 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 trademarked name); see also 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).
Respondent has
used the misleading <aol-8plus.com> domain name to redirect
Internet users to its commercial website, which includes website development
services for adult websites.
Respondent’s use of the domain name, which is confusingly similar to
Complainant’s mark, for commercial gain is evidence that the domain name is not
being used to make a bona fide offering of goods or services nor used for a
noncommercial or fair use. See
Disney Enterss, Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum March 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).
In addition,
Respondent’s passive holding of the <aolfact.com> domain name for
over six months is evidence that Respondent lacks rights and legitimate
interests in the domain name. See Pharmacia & Upjohn AB v. Romero,
D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests
where Respondent failed to submit a Response to the Complaint and had made no
use of the domain name in question); see also Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000)
(finding no rights or legitimate interests in the domain name where there is no
proof that Respondent made preparations to use the domain name or one like it
in connection with a bona fide offering of goods and services before notice of
the domain name dispute, the domain name did not resolve to a website, and Respondent
is not commonly known by the domain name).
Lastly,
Respondent’s attempt to sell the two disputed domain names for more than
out-of-pocket costs is evidence that Respondent lacks rights or legitimate
interests in the domain names. See Am. Nat’l Red Cross v. Domains, FA 143684
(Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s
lack of rights and legitimate interests in the domain name is further evidenced
by Respondent’s attempt to sell its domain name registration to Complainant,
the rightful holder of the RED CROSS mark”); see also Mothers Against
Drunk Driving v. 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).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
The Panel makes
the inference that Respondent had actual knowledge of Complainant’s AOL mark
because the mark is registered with the USPTO, is widely known nationally and
internationally, and Respondent admitted that it was once an AOL customer. Registration of a domain name, despite
knowledge of Complainant’s rights, is evidence of bad faith registration pursuant
to Policy ¶ 4(a)(iii). See Digi
Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“there is a
legal presumption of bad faith, when Respondent reasonably should have been
aware of Complainant’s trademarks, actually or constructively”); 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); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb.
Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal
Register of the USPTO, a status that confers constructive notice on those
seeking to register or use the mark or any confusingly similar variation
thereof”).
Furthermore,
Respondent’s use of the misleading <aol-8plus.com> domain name to
redirect Internet users to its commercial website is evidence of 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. Kahn, 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)).
Also,
Respondent’s passive holding of the <aolfact.com> domain name for
over six months is evidence of bad faith registration and use pursuant to
Policy ¶ 4(a)(iii). Due to Respondent’s
bad faith use of the <aol-8plus.com> domain name the Panel
concludes that it would make little sense to wait until Respondent uses the <aolfact.com>
domain name to determine that Policy ¶ 4(a)(iii) has been satisfied when
inevitably its use will constitute bad faith.
See Phat Fashions v. Kruger,
FA 96193 (Nat. Arb. Forum Dec. 29, 2000) (finding bad faith under Policy ¶
4(b)(iv) even though Respondent has not used the domain name because “It makes
no sense whatever to wait until it actually ‘uses’ the name, when inevitably,
when there is such use, it will create the confusion described in the Policy”);
see also Alitalia –Linee Aeree
Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding
bad faith where Respondent made no use of the domain name in question and there
are no other indications that Respondent could have registered and used the
domain name in question for any non-infringing purpose); see also Am.
Univ. v. Cook, FA 159549 (Nat. Arb. Forum Aug. 21, 2003) (“Respondent has
established a pattern of bad faith use of Complainant’s AMERICAN UNIVERSITY
mark via the registration and use of the other four disputed domain names;
therefore, it makes little sense to wait until the <allamericanuniversity.info>
domain name is used to determine that Policy ¶ 4(a)(iii) has been satisfied
when inevitably its use will constitute bad faith”).
Lastly,
Respondent’s attempt to sell the domain names for more than out-of-pocket costs
constitutes additional evidence of bad faith, pursuant to Policy ¶
4(b)(i). See World Wrestling Fed’n Entm’t., 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); see also Dynojet Research, Inc. v. Norman,
AF-0316 (eResolution Sept. 26, 2000) (finding that Respondent demonstrated bad
faith when he requested monetary compensation beyond out-of-pocket costs in
exchange for the registered domain name).
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 <aol-8plus.com> and <aolfact.com>
domain names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: December 4, 2003
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