America Online, Inc. v. Nextnet
Technology's Customer d/b/a Web Master
Claim
Number: FA0503000438745
Complainant is America Online, Inc. (“Complainant”), represented
by James R. Davis of Arent Fox PLLC, 1050
Connecticut Avenue, NW, Washington, DC 20036.
Respondent is Nextnet
Technology's Customer d/b/a Web Master (“Respondent”), 7215 41st
Ave., Apt# 12A, Woodside, NY 11377.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <aol-anywhere.com>, registered with Enom,
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 March
10, 2005; the National Arbitration Forum received a hard copy of the Complaint
on March 14, 2005.
On
March 10, 2005, Enom, Inc. confirmed by e-mail to the National Arbitration
Forum that the domain name <aol-anywhere.com> is registered with Enom,
Inc. and that Respondent is the current registrant of the name. 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 15, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
April 4, 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@aol-anywhere.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 12, 2005, 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 <aol-anywhere.com>
domain name is confusingly similar to Complainant’s AOL ANYWHERE mark.
2. Respondent does not have any rights or
legitimate interests in the <aol-anywhere.com> domain name.
3. Respondent registered and used the <aol-anywhere.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, America Online, Inc., is a world leader in
providing online goods and services to tens of millions of subscribers around
the globe. Complainant has invested
substantial sums of money in developing and marketing its products and services
under its AOL marks. Sales under the
Complainant’s AOL marks total more than several billion dollars a year.
Complainant holds several registrations with the United States Patent and
Trademark Office (“USPTO”) for its AOL and AOL.COM marks (including Reg. No.
1,977,731 issued June 4, 1996 and Reg. No. 2,325,291 issued March 7, 2000). Complainant also holds a registration for
the AOL ANYWHERE mark (Reg. No. 2,464,280 issued June 26, 2001), which is used
for e-mail and a variety of other online services.
Respondent registered the <aol-anywhere.com> domain name on December 2, 2004. The disputed domain name resolves to a
website that provides products and services that compete with Complainant’s
online products and services.
Additionally, the website features advertisements, pop-up
advertisements, and links to third parties, some of which offer search engines
and other online services that compete with Complainant.
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 presumptive rights in the AOL marks through registration with the
United States Patent and Trademark Office.
Since Respondent has not disputed Complainant’s prima facie case
of rights, the Panel finds that Complainant has rights in the AOL ANYWHERE mark
for purposes of Policy ¶ 4(a)(i). 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 <aol-anywhere.com>
domain name registered by Respondent includes Complainant’s AOL ANYWHERE mark
in its entirety, deviating only with the addition of a hyphen. Under the Policy, the addition of a
punctuation mark such as a hyphen to a registered mark does nothing to
distinguish the domain name from the mark.
Thus, the Panel concludes that the disputed domain name is confusingly
similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Chernow
Communications, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding
“that 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 Pep Boys Manny, Moe, and Jack v. E-Commerce
Today, Ltd., AF-0145 (eResolution May 3, 2000) (finding that a hyphen
between words of Complainant’s registered mark is confusingly similar).
Accordingly, the
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent has
not responded to any of the allegations in the Complaint, which entitles the Panel
to accept all reasonable allegations and inferences in the Complaint as
true. See 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 the Complaint to be deemed true); see also
Bayerische Motoren Werke AG v. Bavarian AG, FA 110830 (Nat. Arb.
Forum June 17, 2002) (finding that, in the absence of a Response, the Panel is
free to make inferences from the very failure to respond and assign greater
weight to certain circumstances than it might otherwise do).
Complainant
contends that Respondent does not have rights or legitimate interests in the <aol-anywhere.com>
domain name that contains Complainant’s AOL ANYWHERE mark in its entirety. Complainant has made a prima facie
case in support of its allegations, which shifts the burden to Respondent to
show that it does have rights or legitimate interests pursuant to Policy ¶
4(a)(ii). However, Respondent has
failed to respond to Complainant’s allegations and has, therefore, provided no
evidence of rights or legitimate interests.
Thus, the Panel will take Respondent’s failure to respond into
consideration in its finding that Respondent lacks rights and legitimate
interests in the disputed domain name. See
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); 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
right or legitimate interest is sufficient to shift the burden of proof to
Respondent to demonstrate that such a right or legitimate interest does exist);
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).
The <aol-anywhere.com>
domain name resolves to a website presumably sponsored by Respondent. Complainant has asserted that Respondent’s
website provides services that compete with Complainant’s online services. The website also appears to include
advertisements and links to third parties, some of which offer search engines
and other online services that compete with Complainant. In light of these circumstances, it is the
Panel’s determination that Respondent’s use of the confusingly similar domain
name to divert Internet users searching for Complainant’s services to the
competing services of Respondent and other third parties is not a use in
connection with a bona fide offering of goods or services pursuant to
Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶
4(c)(iii). 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 Am.
Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (“[I]t would be
unconscionable to find a bona fide offering of services in a respondent’s
operation of web-site using a domain name which is confusingly similar to the
Complainant’s mark and for the same business.”); see also TM
Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002)
(finding that Respondent’s diversionary use of Complainant’s marks to send
Internet users to a website which displayed a series of links, some of which
linked to competitors of Complainant, was not a bona fide offering of goods or
services).
Complainant
asserts that Respondent is not commonly known by the <aol-anywhere.com>
domain name or Complainant’s mark.
Complainant further claims that Respondent is not licensed or authorized
to use Complainant’s AOL ANYWHERE mark or any of Complainant’s marks. Respondent has offered no evidence to refute
Complainant’s assertions that it is not commonly known by the disputed domain
name. Thus, the Panel determines that
Respondent lacks rights and legitimate interests in the disputed domain name
pursuant to Policy ¶ 4(c)(ii). See
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 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).
Thus, the Panel
finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is
using the <aol-anywhere.com> domain name in an attempt to profit
by intentionally attracting Internet users interested in locating Complainant’s
AOL ANYWHERE services. Respondent
presumably derives commercial benefit from these intentional diversions by
providing services similar to Complainant’s services and by redirecting
Internet users to third party websites.
The Panel, therefore, concludes that Respondent’s attempts to divert
Internet users for commercial gain by attracting Internet users to Respondent’s
website through a likelihood of confusion with Complainant’s AOL ANYWHERE mark
is evidence of bad faith registration and use pursuant to Policy ¶
4(b)(iv). See 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 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); 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).
Complainant
provides a wide variety of online products and services throughout the world
under its AOL, AOL ANYWHERE and other related marks. Respondent is using the <aol-anywhere.com> domain
name to redirect Internet users to a website that offers competing goods and
which displays links to other competitors.
Thus, the Panel finds that Respondent’s use of a domain name that is confusingly
similar to Complainant’s registered mark to advertise products and services in
direct competition with Complainant 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); see also Gen. Media Communications, Inc. v. Vine Ent., FA 96554 (Nat. Arb.
Forum Mar. 26, 2001) (finding bad faith where a competitor of Complainant
registered and used a domain name confusingly similar to Complainant’s
PENTHOUSE mark to host a pornographic web site).
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-anywhere.com> domain name be TRANSFERRED
from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated:
April 25, 2005
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