America Online, Inc. v. AOL Financial
Holdings Group Inc.
Claim
Number: FA0502000420500
Complainant is America Online, Inc. (“Complainant”), represented
by James R. Davis, of Arent Fox PLLC, 1050
Connecticut Ave., NW, Washington, DC 20036.
Respondent is AOL Financial
Holdings Group Inc. (“Respondent”) represented by Foo, Liew and Philip Lam, 151
Chin Swee Road, Manhattan House #07-08/10, Singapore 169876.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <aolfinancialholding.com>, registered with
Web Commerce Communications Limited d/b/a Webnic.cc.
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.
Sandra
Franklin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on February
11, 2005; the National Arbitration Forum received a hard copy of the Complaint
on February 14, 2005.
On
February 16, 2005, Web Commerce Communications Limited d/b/a Webnic.cc
confirmed by e-mail to the National Arbitration Forum that the domain name <aolfinancialholding.com>
is registered with Web Commerce Communications Limited d/b/a Webnic.Cc and that
Respondent is the current registrant of the name. Web Commerce Communications
Limited d/b/a Webnic.cc has verified that Respondent is bound by the Web
Commerce Communications Limited d/b/a Webnic.cc 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
February 16, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of March 8, 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@aolfinancialholding.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
March 11, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed Sandra
Franklin 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 <aolfinancialholding.com>
domain name is confusingly similar to Complainant’s AOL mark.
2. Respondent does not have any rights or
legitimate interests in the <aolfinancialholding.com> domain name.
3. Respondent registered and used the <aolfinancialholding.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
America Online, Inc., owns numerous trademark rights for the AOL mark and other
marks that incorporate “AOL” through registration with the United States Patent
and Trademark Office (i.e., Reg. No. 1,977,731, issued June 4, 1996; Reg. No.
1,984,337, issued July 2, 1996). Complainant
also owns British trademark registrations for the AOL mark (i.e., Reg. No.
2,022,968, issued June 5, 1995; Reg. No. 2,011,484, issued February 17, 1995).
Complainant
began using the AOL mark as early as 1989.
Complainant uses the AOL mark in connection with computer services,
including leasing access time to computer databases, computer bulletin boards,
computer networks, and computerized research and reference materials in fields
including but not limited to business, finance, news, weather and
telecommunications services.
Respondent
registered the <aolfinancialholding.com> domain name November 2,
2004. Respondent is using the disputed
domain name to redirect Internet users to its website where commercial online
services and financial services are offered.
More than three
months prior to Respondent’s registration of the disputed domain name,
Complainant sent a cease and desist letter to Respondent regarding Respondent’s
infringing use of the <aolholding.com> domain name. Ultimately, Complainant initiated UDRP
proceedings against Respondent and the <aolholding.com> domain name was
ordered transferred to Complainant. Am.
Online, Inc. v. AOL Fin. Holdings Group, Inc., FA 362287 (Nat. Arb. Forum
Dec. 20, 2004).
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 that it has rights in the AOL mark through registration with the
United States Patent and Trademark Office.
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.
The domain name
registered by Respondent is confusingly similar to Complainant’s AOL mark
because the domain name incorporates Complainant’s mark in its entirety and
deviates from it only by adding the generic or descriptive terms “financial
holding.” The mere addition of generic
or descriptive words to a registered mark does not negate the confusing
similarity of Respondent’s domain name pursuant to Policy ¶ 4(a)(i).
See L.L. Bean, Inc. v.
ShopStar Network, FA 95404 (Nat. Arb. Forum Sept. 14, 2000) finding
that combining the generic word “shop” with Complainant’s registered mark
“llbean” does not circumvent Complaint’s rights in the mark nor avoid the
confusing similarity aspect of the ICANN Policy; 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
Westfield Corp., Inc. v. Hobbs, D2000-0227 (WIPO May 18, 2000)
finding the <westfieldshoppingcenter.com> domain name confusingly similar
because the WESTFIELD mark was the dominant element; see also Brown & Bigelow, Inc. v. Rodela, FA 96466
(Nat. Arb. Forum Mar. 5, 2001) finding that the <hoylecasino.net> domain
name is confusingly similar to Complainant’s HOYLE mark, and that the addition
of “casino,” a generic word describing the type of business in which
Complainant is engaged, does not take the disputed domain name out of the realm
of confusing similarity.
Moreover, the
addition of the generic top-level domain “.com” does not sufficiently
distinguish the disputed domain name from Complainant’s AOL 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 Busy Body, Inc. v.
Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) ("the addition of
the generic top-level domain (gTLD) name ‘.com’ is . . . without legal
significance since use of a gTLD is required of domain name registrants");
see also Interstellar Starship Serv. Ltd. v. EPIX, Inc.,
983 F.Supp. 1331, 1335 (D.Or. 1997)
finding <epix.com> "is the same mark" as EPIX; see also Snow Fun, Inc. v. O'Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001)
finding that the domain name <termquote.com> is identical to
Complainant’s TERMQUOTE mark.
The Panel finds
that Complainant fulfilled Policy ¶ 4(a)(i).
Complainant
alleges that Respondent has no rights or legitimate interests in the <aolfinancialholding.com>
domain name. The burden shifts to
Respondent to show that it does have rights or legitimate interests once
Complainant establishes a prima facie case pursuant to Policy ¶
4(a)(ii). Due to Respondent’s failure
to respond to the Complaint, it is assumed that Respondent lacks rights and
legitimate interests in the disputed 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 Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228
(WIPO Nov. 28, 2000) finding that under certain circumstances the mere
assertion by Complainant that Respondent has no rights or legitimate interests
is sufficient to shift the burden of proof to Respondent to demonstrate that
such a right or legitimate interest does exist; 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 interests in the domain names.
Moreover, the
Panel may accept all reasonable allegations and inferences in the Complaint as
true because Respondent has not submitted a response. 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 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.
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.
Respondent is
using the <aolfinancialholding.com> domain name to redirect
Internet users to a website that advertises and offers commercial online
services and financial services, services similar to those offered by
Complainant. Respondent’s use of a
domain name confusingly similar to Complainant’s AOL mark to redirect Internet
users searching under Complainant’s marks to a commercial website that offers
similar financial and commercial online services is not a use in connection
with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and
is not a legitimate noncommercial or fair use of the domain name pursuant to
Policy ¶ 4(c)(iii). See Am. Online, Inc., v. Fu,
D2000-1374 (WIPO Dec. 11, 2000) (“it would be unconscionable to find a bona
fide offering of services in a respondent’s operation of a website using a
domain name which is confusingly similar to Complainant’s mark and for the same
business”); see also Am. Online,
Inc. v. Shenzhen JZT Computer Software Co., D2000-0809 (WIPO Sept.
6, 2000) noting Respondent’s operation
of a website offering essentially the same services as Complainant and
displaying Complainant’s mark was insufficient for a finding of bona fide
offering of goods or services; see
also Avery Dennison Corp. v. Steele, FA 133626 (Nat. Arb. Forum
Jan. 10, 2003) finding that Respondent had no rights or legitimate interests in
the disputed domain name where it used Complainant’s mark, without
authorization, to attract Internet users to its business, which competed with
Complainant.
Respondent lacks
rights and legitimate interests in the <aolfinancialholding.com> domain
name because the record fails to establish that Respondent is commonly known by
the domain name. Granted, the WHOIS
information for the <aolfinancialholding.com> domain name states
that the registrant is AOL Financial Holdings Group Inc., but this alone is
insufficient to show that Respondent is commonly known by the domain name. Thus, the Panel finds that Respondent lacks rights
and legitimate rights in the domain name pursuant to Policy ¶ 4(c)(ii). See
Yoga Works, Inc. v.
Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) finding that
Respondent was not "commonly known by" the
<shantiyogaworks.com> domain name despite listing its name as "Shanti
Yoga Works" in its WHOIS contact information because there was "no
affirmative evidence before the Panel that Respondent was ever 'commonly known
by' the disputed domain name prior to its registration of the disputed domain
name."; 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"; 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 mark precede Respondent's registration; (3) Respondent is not
commonly known by the domain name in question.
The Panel finds
that Complainant fulfilled Policy ¶ 4(a)(ii).
Respondent is
wholly appropriating Complainant’s mark in its domain name to lead
Complainant’s customers to a website that offers commercial and financial
services similar to Complainant’s services.
The Panel finds that Respondent registered and used the domain name in
bad faith because 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. Tercent 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 Perot Sys. Corp. v. Perot.net, FA 95312
(Nat. Arb. Forum Aug. 29, 2000) finding bad faith where the domain name in
question is obviously connected with Complainant’s well-known marks, thus
creating a likelihood of confusion strictly for commercial gain; see also Identigene, Inc. v. Genetest Lab., D2000-1100 (WIPO Nov. 30, 2000)
finding bad faith where Respondent's use of the domain name at issue to resolve
to a website where similar services are offered to Internet users is likely to
confuse the user into believing that Complainant is the source of or is
sponsoring the services offered at the site; see also Luck's
Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30,
2000) finding that Respondent had engaged in bad faith use and registration by
linking the domain name to a website that offers services similar to
Complainant’s services, intentionally attempting to attract, for commercial
gain, Internet users to its website by creating a likelihood of confusion with
Complainant’s marks.
Furthermore,
Respondent registered the domain name for the purpose of disrupting
Complainant’s business by redirecting Internet traffic intended for Complainant
to Respondent’s website where similar services are offered. 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(b)(iii). See
Lubbock Radio Paging v. Venture
Tele-Messaging, FA 96102 (Nat. Arb. Forum Dec. 23, 2000) concluding that
domain names were registered and used in bad faith where Respondent and
Complainant were in the same line of business in the same market area; see also 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.
The Panel finds
that Complainant fulfilled Policy ¶ 4(a)(iii).
Having established
all three elements required under the ICANN Policy, the Panel concludes that
relief shall be GRANTED.
Accordingly, it
is Ordered that the <aolfinancialholding.com> domain name be TRANSFERRED
from Respondent to Complainant.
Sandra Franklin, Panelist
Dated:
March 25, 2005
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