National Arbitration Forum

 

DECISION

 

America Online, Inc. v. connectionworldwide inc a/k/a gary francis

Claim Number: FA0412000384811

 

PARTIES

Complainant is America Online, Inc. (“Complainant”), represented by James R. Davis, of Arent Fox PLLC, 1050 Connecticut Avenue NW, Washington, DC 20036.  Respondent is connectionworldwide inc a/k/a Gary Francis (“Respondent”), P.O. Box 3444, Road Town, Tortola, Virgin Islands.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <youvegotg-mail.com> (the “Domain Name”), registered with Register.com.

 

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.

 

Michael Albert as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on December 16, 2004; the National Arbitration Forum received a hard copy of the Complaint on December 20, 2004.

 

On December 20, 2004, Register.com confirmed by e-mail to the National Arbitration Forum that the domain name <youvegotg-mail.com> is registered with Register.com and that the Respondent is the current registrant of the name. Register.com has verified that Respondent is bound by the Register.com 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 December 20, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 10, 2005 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@youvegotg-mail.com by e-mail.

 

A timely Response was received and determined to be complete on January 10, 2005.

 

On January 18, 2005, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Michael Albert as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

 

Complainant contends that it owns a family of YOU’VE GOT marks, including YOU’VE GOT MAIL, YOU’VE GOT AOL and YOU’VE GOT PICTURES, and that it uses these marks in commerce in connection with, among other things, providing online services and information.

 

Complainant has obtained United States trademark registrations for these marks.  It began using these marks in commerce long before Respondent registered the Domain Name.  Complainant has made extensive use of these marks in commerce worldwide, which is known to its millions of subscribers, as well as to others, including viewers of a popular film which used the YOU’VE GOT MAIL mark under license from Complainant.

 

Complainant avers that the Domain Name is confusingly similar to its marks, in that it differs only by one letter (“g”) and one typographical character (a hyphen).  It asserts that Respondent has no rights in, and is not commonly known by, the Domain Name, and that Respondent registered the Domain Name in bad faith as evidenced by the registration long after Complainant’s marks became famous, by its use of the Domain Name to direct Internet traffic to Respondent’s web site at <g-mailgreetingcards.com>, and that confusion of the public “is particularly likely given that Respondent is providing online services that are likely to be confused with those provided by AOL under its various YOU’VE GOT marks.”  Complainant further asserts that bad faith is shown by Respondent’s use of the Domain Name to direct users to its business which “sells underwear and displays photographs of naked women.”

 

B. Respondent

 

Respondent denies the allegations of the Complaint, and asserts that it operates a legitimate business, that because its products are so different from Complainant’s there is no likelihood of confusion, that it registered the Domain Name solely “to prevent future competitors utilising wording taken from our web-site,” and that the term “youvegotg-mail” is a play on words derived from “common and widely used vernacular” and that it “relates specifically to our product concept.”  It denies that there was any intent to confuse, or likelihood of confusion, and that when contacted by Complainant, it offered to include a disclaimer on its website denying any association between the two companies, as well as to discontinue the link between the Domain Name and the <g-mailgreetingcards.com> e-commerce website.

 

FINDINGS

The Panel finds that Complainant has met its burden of proof to show that Respondent’s domain name is confusingly similar to a trademark owned by Complainant; that Respondent does not have legitimate rights in the Domain Name; and that the Domain Name was registered in bad faith.

 

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 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.

 

Identical and/or Confusingly Similar

 

Complainant has established rights in the YOU’VE GOT MAIL mark through registration with the United States Patent and Trademark Office and through continuous use in commerce since 1992. 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 appears to contend that the mark is generic. A generic term cannot function as a trademark, and therefore its purported owner cannot prevent others from using the term in commerce.  This proceeding is not designed to enable a full and final adjudication of the genericness question; and in any event Respondent has provided little or no evidence from which any such finding can be made.  While the mark may be well-known (as both parties apparently agree), that does not make it generic.  Moreover, the evidence before the Panel suggests that much of that fame may result from the use of the mark in connection with a popular film.  Because that usage was made under license from Complainant, the usage does not undermine the mark’s ability to function as a trademark;  rather, the licensed use operates to the benefit of the licensor, whose ownership rights in the mark were recognized in the license.  Moreover, the USPTO’s registration of the mark is prima facie evidence that it functions as a trademark and is not generic.  Accordingly, this Panel will follow the above-noted presumption that the mark is distinctive and validly owned by Complainant.  Nothing herein is intended to preclude any court of law from addressing this question on a more fully developed factual record.

 

The next issue is whether the mark and the Domain Name are confusingly similar.  The Panel finds that the <youvegotg‑mail.com> domain name is confusingly similar to Complainant’s YOU’VE GOT MAIL mark because the domain name fully incorporates Complainant’s mark, adding only the letter “g” and making a couple of inconsequential typographical adjustments – adding a hyphen, removing an apostrophe and spaces (which cannot be used in domain names), and adding the “.com” generic top-level domain (gTLD). These minor changes fail to distinguish the Domain Name from the mark, leaving the two confusingly similar.  See 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); see also Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also Chernow Communications, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (“the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark”); see also Chi-Chi’s, Inc. v. Rest. Commentary, D2000-0321 (WIPO June 29, 2000) (finding the domain name <chichis.com> to be identical to Complainant’s CHI-CHI’S mark, despite the omission of the apostrophe and hyphen from the mark); see also Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a Respondent does not create a distinct mark but rather one that is confusingly similar to complainant’s marks); see also Am. Online, Inc. v. Tencent Communications Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that <oicq.net> and <oicq.com> are confusingly similar to Complainant’s ICQ mark).

 

The question is a close one, because “[i]n the Internet context, consumers are aware that domain names for different Web sites are quite often similar, because of the need for language economy, and that very small differences matter.”  Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1147 (9th Cir. 2002).  Similarity and likelihood of confusion are highly context-specific, and in some contexts, the addition of the single letter “g” might well distinguish the marks.  See Knight-Ridder, Inc. v. Cupcake Patrol, FA 96551 (Nat. Arb. Forum Mar. 6, 2001) (finding that the domain name <hearld.com> is not identical or confusingly similar to Complainant’s typographically similar trademark).  Here, however, the Panel finds that the extra “g” – which, notably, is the same letter as in the word “got” and thus which may appear to be a typographical error resulting from re-typing a letter –does not do enough to distinguish the Domain Name from the mark.  This conclusion is reinforced by the apparent absence of any significance to the use of the phrase YOU’VE GOT MAIL that would explain or justify Respondent’s adoption of a variant of that mark for what seems to be an unrelated business.  Rather than suggesting any legitimate play on words, this usage seems to be little more than an adoption and slight modification of Complainant’s mark, leaving the two confusingly similar.

 

Rights or Legitimate Interests

 

Respondent is not known by the <youvegotg‑mail.com> domain name.  Indeed, that is not even the primary domain name of its e-commerce business, but rather merely redirects traffic to another site.  Accordingly, there is little basis for the Panel to find that Respondent has any rights or legitimate interests in the Domain Name pursuant to Policy ¶ 4(c)(ii). See 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); see also 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").

 

Complainant contends that Respondent has used the disputed domain name to divert Internet users searching under Complainant’s mark to Respondent’s website, which sells underwear and displays photographs of naked women.  Respondent points out that the women in question are not entirely naked, but rather are clad in Respondent’s product (a g-string).  Even so, the Panel concludes that Respondent’s website bears little or no relationship to the famous mark that Respondent has chosen to incorporate into the Domain Name, and accordingly that – whatever the bona fide use may be of the underlying business Respondent is operating – this is not a bona fide use of that mark in connection with Respondent’s business.  See 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); 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); see also Am. Online, Inc. v. Tencent Communications 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 Isleworth Land Co. v. Lost In Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (finding that Respondent’s use of its domain name to link unsuspecting Internet traffic to an adult-oriented website, containing images of scantily clad women in provocative poses, did not constitute a connection with a bona fide offering of goods or services or a noncommercial or fair use); see also Paws, Inc. v. Zuccarini, FA 125368 (Nat. Arb. Forum Nov. 15, 2002) (holding that the use of a domain name that is confusingly similar to an established mark to divert Internet users to an adult-oriented website “tarnishes Complainant’s mark and does not evidence noncommercial or fair use of the domain name by a respondent”).

 

Once Complainant makes a prima facie case regarding Policy ¶ 4(a)(ii), the burden shifts to Respondent to establish rights or legitimate interests in the domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests with respect to the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name).  Respondent’s argument and evidence on this point are inadequate.  It asserts first that the registration “was only done to prevent future competitors utilising wording taken from our web-site.”  The significance of this point is not readily apparent to the Panel, and does not clearly explain why Respondent has any legitimate rights or interests in the Domain Name.  Respondent later asserts that “our website is www.g-mailgreetingcards.com and the [Domain Name] in question was merely registered to protect the content of our site and business idea. We have linked other domains registered by us to protect our site content and business idea including the domain name in question but also www.gmailcards.com , www.gmailgreetingcards.com, etc. We provided links from all the domains we have registered to our site.”  This assertion shows only that the <g-mailgreetingcards.com> domain name may legitimately belong to Respondent; but fails to explain why Respondent should be permitted to trade on the goodwill of a different and unrelated trademark in order to direct traffic to its website.

 

Registration and Use in Bad Faith

 

The Domain Name is confusingly similar to a famous mark, resolves to a commercial website that contains photographs of scantily clad women, and Respondent has no particular justification for the choice of a domain name so similar to Complainant’s mark.  Moreover, Respondent commercially benefits when Internet users visit its website.  The Panel infers that Respondent registered and used the Domain Name in bad faith under 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 Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where Respondent directed Internet users seeking Complainant’s site to its own website for commercial gain).

 

While Respondent may be right that its e-commerce business is legitimate and that it is totally unrelated to the uses to which Complainant’s marks are put, the Panel must nonetheless consider the “totality of the circumstances” in determining whether bad faith has been shown.  See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the “totality of circumstances”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“the examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive”).

 

Panels have commonly found that using a famous mark to redirect Internet users to a website that contains “adult-oriented content” is bad faith under Policy ¶ 4(a)(iii). See Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO Mar. 4, 2003) (“whatever the motivation of Respondent, the diversion of the domain name to a pornographic site is itself certainly consistent with the finding that the Domain Name was registered and is being used in bad faith”); see also Wells Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (finding that Respondent’s tarnishing use of the disputed domain names to redirect Internet users to adult-oriented websites was evidence that the domain names were being used in bad faith).  Even assuming that the content of Respondent’s e-commerce site is distinguishable from those other cases, the lack of any commercial or linguistic relationship between the Domain Name and the business nonetheless suggests that the choice of Domain Name was made primarily due to the fame of the mark that it adapted, rather than as a result of any legitimate need to choose this particular Domain Name independently of the goodwill associated with Complainant’s mark.

 

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 <youvegotg-mail.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

 

Michael Albert, Panelist
Dated: February 1, 2005

 

 

 

 

 

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