America Online, Inc. v. Digi Real Estate
Foundation
Claim
Number: FA0503000434241
Complainant is America Online, Inc. (“Complainant”), represented
by James R. Davis, II, of Arent Fox PLLC, 1050
Connecticut Avenue, NW, Washington, DC 20036.
Respondent is Digi Real Estate
Foundation (“Respondent”), PO Box 7-5324, Panama City, N7 8DJ, PA.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <aimexperss.com>,
<aolawaymessages.com>, <aolwebmail.com>, <comppuserve.com>,
<winump.com>, and <wunamp.com>. The <aimexperss.com> domain
name is registered with Central Registrar, Inc. d/b/a
Domainmonger.com, the <aolawaymessages.com> and <aolwebmail.com>
domain names are registered with eNom, Inc., the <winump.com> domain
name is registered with Dagnabit Incorporated, the <wunamp.com>
domain name is registered with Emily Names Domains, Inc. and the <comppuserve.com>
domain name is registered with GET SLD, 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.
Sandra
Franklin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on March
3, 2005; the National Arbitration Forum received a hard copy of the Complaint
on March 7, 2005.
On
March 3, 2005, eNom, Inc. confirmed by e-mail to the National Arbitration Forum
that the domain names <aolawaymessages.com> and <aolwebmail.com>
are registered with eNom, Inc. and that Respondent is the current registrant of
the names. eNom, Inc. has verified that
Respondent is bound by the eNom, 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
March 4, 2005, Emily Names Domains, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <wunamp.com> is registered
with Emily Names Domains, Inc. and that Respondent is the current registrant of
the name. Emily Names Domains, Inc. has
verified that Respondent is bound by the Emily Names Domains, 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
March 7, 2005, GET SLD, INC. confirmed by e-mail to the National Arbitration
Forum that the domain name <comppuserve.com>
is registered with GET SLD, INC. and that Respondent is the current
registrant of the name. GET SLD, INC. has
verified that Respondent is bound by the GET SLD, 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
March 8, 2005, Dagnabit Incorporated confirmed by e-mail to the National
Arbitration Forum that the domain name <winump.com> is registered
with Dagnabit Incorporated and that Respondent is the current registrant of the
name. Dagnabit Incorporated has
verified that Respondent is bound by the Dagnabit Incorporated 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
March 15, 2005, Central Registrar, Inc. d/b/a Domainmonger.com confirmed by
e-mail to the National Arbitration Forum that the domain name <aimexperss.com>
is registered with Central Registrar, Inc. d/b/a Domainmonger.com and that
Respondent is the current registrant of the name. Central Registrar, Inc. d/b/a Domainmonger.com has verified that
Respondent is bound by the Central Registrar, Inc. d/b/a Domainmonger.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
March 16, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
April 5, 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@aimexperss.com, postmaster@aolawaymessages.com,
postmaster@aolwebmail.com, postmaster@comppuserve.com, postmaster@winump.com
and postmaster@wunamp.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
April 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <aimexperss.com>,
<aolawaymessages.com>, <aolwebmail.com>, <comppuserve.com>,
<winump.com>, and <wunamp.com> domain names are
confusingly similar to Complainant’s AIM, AIM EXPRESS, AOL, COMPUSERVE, and
WINAMP marks.
2. Respondent does not have any rights or
legitimate interests in the <aimexperss.com>,
<aolawaymessages.com>, <aolwebmail.com>, <comppuserve.com>,
<winump.com>, and <wunamp.com> domain names.
3. Respondent registered and used the <aimexperss.com>,
<aolawaymessages.com>, <aolwebmail.com>, <comppuserve.com>,
<winump.com>, and <wunamp.com> domain names in bad
faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant
registered the AIM and AIM EXPRESS service marks with the U.S. Patent and
Trademark Office (“PTO”), respectively, on January 23, 2001 (Reg. No.
2,423,367) and December 24, 2002 (Reg. No. 2,665,694), in connection with:
COMPUTER SERVICES, NAMELY,
PROVIDING MULTIPLE-USER ACCESS TO COMPUTER NETWORKS FOR THE TRANSFER AND
DISSEMINATION OF A WIDE RANGE OF INFORMATION; ELECTRONIC TRANSMISSION OF DATA,
IMAGES, AND DOCUMENTS VIA COMPUTER NETWORKS; ELECTRONIC MAIL SERVICES;
PROVIDING ON-LINE CHAT ROOMS FOR TRANSMISSION OF MESSAGES AMONG COMPUTER USERS
CONCERNING A WIDE VARIETY OF FIELDS.
Complainant
registered the AOL service mark with the PTO on June 4, 1996 (Reg. No.
1,618,148) in connection with a variety of services, including:
TELECOMMUNICATIONS
SERVICES, NAMELY ELECTRONIC TRANSMISSION OF DATA, IMAGES, AND DOCUMENTS VIA
COMPUTER TERMINALS; ELECTRONIC MAIL SERVICES; AND FASCIMILE
TRANSMISSION…COMPUTER SERVICES, NAMELY LEASING ACCESS TIME TO COMPUTER
DATABASES…ELECTRONIC STORAGE AND RETRIEVAL OF DATA AND DOCUMENTS…
Complainant
registered the AOL trademark with the PTO on July 2, 1996 (Reg. No. 1,984,337)
in connection with:
COMPUTER OPERATING PROGRAMS AND
COMPUTER OPERATING SYSTEMS; PRE-RECORDED COMPUTER PROGRAMS FOR ACCESSING
COMPUTER NETWORKS, COMPUTER ONLINE SYSTEMS.
Complainant
registered the COMPUSERVE trademark and service mark with the PTO on August 27,
1991 (Reg. No. 1,654,785) in connection with a variety of goods and services,
including:
FLOPPY
DISKS; HARD DISKS; COMPUTER SOFTWARE…COMPUTER INFORMATION STORAGE AND RETRIEVAL
SERVICES; TAX PREPARATION SERVICES…COMPUTERIZED FINANCIAL INFORMATION SERVICES;
ELECTRONIC BANKING AND BROKERAGE SERVICES IN THE FIELD OF STOCKS, COMMODITIES
AND FUTURES; CASH MANAGEMENT SERVICES…ELECTRONIC MAIL SERVICES; FACSIMILE AND
TELECOPIER SERVICES…AIRLINE RESERVATION SERVICES…COMPUTERIZED SPORTS
INFORMATION SERVICES…
Complainant
registered the WINAMP trademark and service mark with the PTO on April 9, 2002
(Reg. No. 2,557,585) in connection with a variety of goods and services,
including:
DIGITAL AUDIO SOFTWARE FOR PLAYING HIGH-FIDELITY AUDIO VIA
AN ELECTRONIC COMMUNICATIONS NETWORK; DOWNLOADABLE SOFTWARE FOR PLAYING
HIGH-FIDELITY AUDIO VIA AN ELECTRONIC COMMUNICATIONS NETWORK…COMPUTERIZED
ON-LINE SERVICES IN THE FIELD OF COMPUTER SOFTWARE AND HARDWARE…
Respondent has
registered the following domain names: <aimexperss.com> (June 13,
2004), <aolawaymessages.com> (Jan. 9, 2004), <aolwebmail.com>
(Jan. 27, 2005), <comppuserve.com> (Dec. 6, 2004), <winump.com>
(Feb. 16, 2005), and <wunamp.com> (Feb. 16, 2005). The aforementioned domain names resolve to
generic search engine websites that feature advertisements.
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.
Registering a
trademark or service mark with the U.S. Patent and Trademark Office creates a
presumption of valid rights in the mark under the Policy, and incidentally,
under U.S. trademark law. See Janus
Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding
that the 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); see also Am. Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001) (finding that successful
trademark registration with the United States Patent and Trademark Office
creates a presumption of rights in a mark).
Complainant has registered
the following trademarks and/or service marks with the U.S. Patent and
Trademark Office: AIM,
AIM EXPRESS, AOL, COMPUSERVE, and WINAMP.
As a result, Complainant has established a presumption of valid rights
in the marks pursuant to Policy ¶ 4(a)(i).
In the absence of a response, the presumption stands. The Panel finds Complainant has established
rights in the prior marks under Policy ¶ 4(a)(i).
A domain name
that contains a version of a complainant’s mark, albeit with transposed
letters, has been found to be confusingly similar to the mark under Policy ¶
4(a)(i). In the instant case, the <aimexperss.com>
domain name contains a version of Complainant’s AIM EXPRESS mark, but
simply has transposed the letter “r” with the second “e” in the mark. Consistent with prior decisions under the
Policy, the Panel finds that the <aimexperss.com> domain name is
confusingly similar to Complainant’s AIM EXPRESS mark. See Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding
<googel.com> to be confusingly similar to Complainant’s GOOGLE mark and
noting that “[t]he transposition of two letters does not create a distinct mark
capable of overcoming a claim of confusing similarity, as the result reflects a
very probable typographical error”); see also Pier 1
Imps., Inc. v. Success Work,
D2001-0419 (WIPO May 16, 2001) (finding that the domain name <peir1.com>
is confusingly similar to Complainant's PIER 1 mark).
A domain name
containing a complainant’s mark in combination with additional terms that
describe the goods or services offered in connection with the complainant’s
mark, has been found to be confusingly similar to the mark pursuant to Policy ¶
4(a)(i). In the instant case, the <aolawaymessages.com>
and <aolwebmail.com>
domain names contain Complainant’s AOL mark in its entirety and simply add such
terms as “awaymessages” and “webmail,” which the Panel concludes relate to
e-mail services. As stated in the
findings, Complainant’s AOL mark is used in connection with “ELECTRONIC MAIL
SERVICES.” Therefore, since the <aolawaymessages.com>
and <aolwebmail.com>
domain names contain Complainant’s mark in combination with terms that describe
Complainant’s e-mail services, the Panel finds the domain names are confusingly
similar to Complainant’s AOL mark pursuant to Policy ¶ 4(a)(i). See Space Imaging LLC v. Brownell, 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
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).
When a domain
name contains a complainant’s mark in its entirety and simply adds a single
additional letter, panels have consistently found such domain names to be
confusingly similar to those marks pursuant to Policy ¶ 4(a)(i). In the instant case, the <comppuserve.com>
domain name contains Complainant’s COMPUSERVE mark in its entirety and
simply has added the letter “p” to the mark.
Therefore, consistent with prior decisions, the Panel finds the <comppuserve.com>
domain name confusingly similar to Complainant’s COMPUSERVE mark. See Am.Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679
(Nat. Arb. Forum Mar. 16, 2000) (finding that Respondent’s domain name,
<americanonline.com>, is confusingly similar to Complainant’s famous
AMERICA ONLINE mark); see also EBAY,
Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that
Respondent’s domain name <eebay.com> is confusingly similar to
Complainant’s registered EBAY trademark).
Moreover, a
domain name that differs from a complainant’s mark by only a single letter has
been found to be confusingly similar to the mark pursuant to Policy ¶
4(a)(i). In the instant case, the <winump.com>
and <wunamp.com> domain names differ from Complainant’s WINAMP
mark by simply substituting the letter “a” in the first intance and the letter
“i” in the second instance, with the letter “u.” Therefore, the Panel concludes the <winump.com> and <wunamp.com>
domain names are confusingly similar to Complainant’s WINAMP mark pursuant
to Policy ¶ 4(a)(i). See Toronto-Dominion
Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001) (finding that the domain
names <tdwatergouse.com> and <dwaterhouse.com> are virtually
identical to Complainant’s TD WATERHOUSE name and 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”).
Complainant has
established Policy ¶ 4(a)(i).
Respondent has
not responded, and therefore, has not challenged, the assertions set forth in
the Complaint. Therefore, the Panel may
accept all reasonable allegations in the Complaint as true, unless clearly
contradicted by the evidence. See Allergan
Inc. v. MedBotox Inc., FA 170639 (Nat. Arb. Forum Sept. 9, 2003) (“Respondent has not challenged the allegations in the Complaint.
Under these circumstances it is appropriate for the Panel to accept all
reasonable allegations and inferences in the Complaint as 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).
Respondent’s
failure to respond may be used as substantive evidence to prove by implication
that Respondent lacks rights and legitimate interests in the disputed domain
name pursuant to Policy ¶ 4(a)(ii). 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 Honeywell Int’l Inc. v. Domain Deluxe, FA 269166 (Nat. Arb. Forum June 29,
2004) (“The failure of Respondent to respond to the Complaint functions both as
an implicit admission that Respondent lacks rights to and legitimate interests
in the domain names, as well as a presumption that Complainant’s reasonable
allegations are true.”).
Complainant has
asserted that Respondent is not using the disputed domain names in connection
with a bona fide offering of goods or services, or a legitimate
noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) and (iii). The disputed domain names resolve to generic
search engine websites that feature advertisements. Prior cases have found that such use does not evidence a bona
fide offering of goods or services, or a legitimate noncommercial or fair
use pursuant to Policy ¶¶ 4(c)(i) and (iii).
Therefore, consistent with prior decisions under the Policy, and in the
absence of a response, the Panel accepts Complainant’s assertion as true. See Pioneer Hi-Bred Int’l Inc. v. Chan, FA 154119 (Nat. Arb.
Forum May 12, 2003) (finding that Respondent did not have rights or legitimate
interests in a domain name that used Complainant’s mark and redirected Internet
users to a website that pays domain name registrants for referring those users
to its search engine and pop-up advertisements); see also Geoffrey, Inc. v.
Toyrus.com, FA 150406 (Nat. Arb. Forum Apr. 5, 2003) (holding that
Respondent’s use of the disputed domain name, a simple misspelling of
Complainant’s mark, to divert Internet users to a website that featured pop-up
advertisements and an Internet directory, was neither a bona fide offering
of goods or services nor a legitimate noncommercial or fair use of the domain
name); see also Trans
Global Tours, LLC v. Li, FA 196166 (Nat. Arb. Forum Nov. 1, 2003) (“Respondent is using the disputed domain name to divert Internet
users to an Internet search engine with pop-up advertisements. This type of use is not a use in connection
with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i),
nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
In the absence
of a response, Panels frequently use the WHOIS registration information as a
factor in determining whether a respondent is “commonly known by the domain
name” pursuant to Policy ¶ 4(c)(ii). In
the instant case, the WHOIS registration information for each of the disputed
domain names lists “Digi Real Estate Foundation” as the registrant, not
“aimexperss,” “aolawaymessages,” “aolwebmail,” “comppuserve,” “winump,” or
“wunamp.” Nothing else in the record
would suggest that Respondent is known by any of the disputed domain
names. Therefore, the Panel concludes
that Respondent is not commonly known by any of the disputed domain names
pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee 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 whether Policy ¶ 4(c)(ii) applies); 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).
Complainant has
established Policy ¶ 4(a)(ii).
Complainant has
asserted that Respondent registered and used the disputed domain names in bad
faith pursuant to Policy ¶ 4(b)(iv).
Pursuant to Policy ¶ 4(b)(iv), bad faith registration and use of a
domain name is evidenced by the intentional attempt to attract Internet users
to a website for commercial gain by creating a likelihood of confusion with a
complainant’s mark(s) as to the source, sponsorship, affiliation, or
endorsement of the website.
In the instant
case, Respondent has registered six disputed domain names, all of which are
confusingly similar to Complainant’s marks, and has failed to respond to
Complainant’s allegations with regard to each of the disputed domain
names. The fact that Respondent
registered six domain names, which by happenstance are all confusingly similar
to Complainant’s marks, is strong evidence of Respondent’s intentions. Each of those domain names resolve to
websites that contain advertisements, presumably which provide revenue for
Respondent.
In the absence
of a response, and consistent with the following cases decided under the
Policy, the Panel concludes Respondent registered and used the disputed domain
names in bad faith 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. Univ.
v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's
mark with the intent to deceive Internet users in regard to the source or
affiliation of the domain name is evidence of bad faith.”); 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 Hancock Fabrics, Inc. v. Active Advantage, Inc., FA
204111 (Nat. Arb. Forum Dec. 4, 2003) (finding that respondent created a likelihood of confusion as to the source of its website
because it registered a domain name confusingly similar to complainant’s mark and
used it to redirect Internet traffic to a completely unrelated website).
Furthermore, Respondent
registered the disputed domain names with actual or constructive knowledge of
Complainant’s rights in the various marks due to Complainant’s registration of
the marks with the USPTO. Registration
of domain names confusingly similar to another’s mark despite actual or
constructive knowledge of the mark holder’s rights is evidence of bad faith
registration and use pursuant to Policy ¶ 4(a)(iii). See Digi
Int’l v. DDI Sys., FA
124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad
faith, when the respondent reasonably should have been aware of the
complainant’s trademarks, actually or constructively.”); see also Orange Glo
Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“[T]he
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.”).
Complainant has
established 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 <aimexperss.com>, <aolawaymessages.com>,
<aolwebmail.com>, <comppuserve.com>, <winump.com>,
and <wunamp.com> domain names be TRANSFERRED from
Respondent to Complainant.
Sandra Franklin, Panelist
Dated:
April 25, 2005
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