America Online, Inc. v. garybush co uk
a/k/a Gary Bush
Claim
Number: FA0411000360612
Complainant is America Online, Inc. (“Complainant”),
represented by James R. Davis, of Arent Fox PLLC, 1050
Connecticut Avenue NW, Washington, DC 20036.
Respondent is garybush co uk a/k/a Gary Bush (“Respondent”), PO Box 542,
Enfield, Middlesex, EN2 6ZQ, Great Britain.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <0aol.com>, registered with Tucows Inc.
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.
Tyrus
R. Atkinson, Jr., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on November
2, 2004; the National Arbitration Forum received a hard copy of the Complaint
on November 4, 2004.
On
November 2, 2004, Tucows Inc. confirmed by e-mail to the National Arbitration
Forum that the domain name <0aol.com> is registered with Tucows
Inc. and that Respondent is the current registrant of the name. Tucows Inc. has
verified that Respondent is bound by the Tucows 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
November 5, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of November 29, 2004 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@0aol.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 National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
December 8, 2004, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed Tyrus R.
Atkinson, Jr., 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." Therefore, the Panel may issue its decision
based on the documents submitted and in accordance with the ICANN Policy, ICANN
Rules, the National Arbitration 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 <0aol.com>
domain name is confusingly similar to Complainant’s AOL mark.
2. Respondent does not have any rights or
legitimate interests in the <0aol.com> domain name.
3. Respondent registered and used the <0aol.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
America Online, Inc., owns numerous trademark registrations worldwide for the
AOL mark and other marks incorporating the AOL mark including in the United
States (e.g. Reg. No. 1,977,731, issued
June 4, 1996) and United Kingdom (e.g. Reg. No. 2,011,484, issued February 17,
1995). Complainant uses the AOL mark in
connection with the offering of, inter alia, online computer services and other
Internet-related services which has since expanded into the field of providing
information related to the housing market and mortgages.
Respondent
registered the <0aol.com> domain name on May 26, 2003. Respondent is using the disputed domain name
to promote a commercial website called “MortgageShop.com” where various
financial and mortgage services are offered.
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 registration with the USPTO and
other countries throughout the world including Great Britain. 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).
Respondent’s
domain name is confusingly similar to Complainant’s AOL mark because the
disputed domain name incorporates the mark with the mere addition of the
nondistinctive number “0.” The addition
of the number “0” is insufficient to distinguish the domain name from
Complainant’s mark. See Am. Online, Inc. v. iDomainNames.com, FA
93766 (Nat. Arb. Forum Mar. 24, 2000) (finding that Respondent’s domain name
<go2AOL.com> was confusingly similar to Complainant’s AOL mark); see
also Oxygen Media, LLC v. Primary Source, D2000-0362 (WIPO June 19, 2000)
(finding that the domain name <0xygen.com>, with zero in place of letter
“O,” “appears calculated to trade on Complainant’s name by exploiting likely
mistake by users when entering the url address”).
Furthermore, the
addition of the generic top-level domain “.com” to the mark is irrelevant in
determining whether the domain name is confusingly similar to Complainant’s
mark. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000)
(finding <pomellato.com> identical to Complainant’s mark because the
generic top-level domain (gTLD) “.com” after the name POMELLATO is not
relevant); 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, the Panel accepts all reasonable
allegations and inferences in the Complaint as true. See Talk City, Inc.
v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a
response, it is appropriate to accept as true all allegations of the
Complaint.”); see also Charles
Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it
appropriate for the Panel to draw adverse inferences from Respondent’s failure
to reply to the Complaint).
Furthermore, due
to Respondent’s failure to respond, the Panel presumes that Respondent lacks
rights and legitimate interests in the domain name. 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 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).
Nothing in the
record establishes that Respondent is commonly known by the domain name. Moreover, Respondent is not licensed or
authorized to register or use a domain name that incorporates Complainant’s
mark. Therefore, the Panel concludes
that Respondent lacks rights and legitimate interests in the 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).
Respondent is
using the <0aol.com> domain name to redirect Internet users to a
commercial website called “MortgageShop.com” where Respondent offers various
mortgage and financial services similar to the housing market and mortgage
services that are offered by Complainant.
Respondent’s use of a domain name that is confusingly similar to
Complainant’s AOL mark to redirect Internet users interested in Complainant’s
products and services is not a use in connection with a bona fide offering of
goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate
noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See Hewlett-Packard Co. v. Inversiones
HP Milenium C.A., FA 105775 (Nat. Arb.
Forum Apr. 12, 2002) (finding Respondent’s use of the confusingly similar
domain name <hpmilenium.com> to sell counterfeit versions of
Complainant’s HP products was not a bona fide offering of goods or services pursuant
to Policy ¶ 4(c)(i)); see also MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000)
(finding no rights or legitimate interests in the famous MSNBC mark where
Respondent attempted to profit using Complainant’s mark by redirecting Internet
traffic to its own website).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
registered a domain name that contains in its entirety Complainant’s well-known
AOL mark and did so for Respondent’s own commercial gain. Respondent’s domain name diverts Internet
users who seek Complainant’s AOL mark to Respondent’s commercial website
through the use of a domain name that is confusingly similar to Complainant’s mark. The Panel finds that Respondent is intentionally
creating a likelihood of confusion to attract Internet users for Respondent’s
commercial gain, 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 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); 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)).
Additionally,
Respondent registered the domain name for the purpose of disrupting
Complainant’s business by redirecting Internet traffic intended for Complainant
to Respondent’s website that competed with Complainant. The Panel finds that registration of a
domain name for the primary purpose of disrupting the business of a competitor
is evidence of bad faith registration and use pursuant to Policy ¶
4(a)(iii). See S. Exposure v.
S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding
Respondent acted in bad faith by attracting Internet users to a website that
competes with Complainant’s business); see also Puckett v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that
Respondent has diverted business from Complainant to a competitor’s website in
violation of Policy ¶ 4(b)(iii)).
Respondent’s
registration of the <0aol.com> domain name, a domain name that
incorporates Complainant’s well-known registered mark, in its entirety and
deviates only with the addition of the nondistinctive number “0,” suggests that
Respondent knew of Complainant’s rights in the AOL mark. Furthermore, Complainant holds registration
rights with the USPTO for the AOL mark, the mark is an established and
well-known, and Respondent’s <0aol.com> domain name is used to
market services similar to those offered by Complainant. Thus, the Panel finds that Respondent likely
chose the <0aol.com> domain name based on the distinctive and
well-known qualities of Complainant’s mark.
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 Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding
that the ICQ mark is so obviously connected with Complainant and its products
that the use of the domain names by Respondent, who has no connection with
Complainant, suggests opportunistic bad faith).
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 domain name, <0aol.com>, be TRANSFERRED
from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated:
December 22, 2004
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