America Online, Inc. v. Darell Blandshaw
Claim Number: FA0503000444475
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 Darell Blandshaw (“Respondent”),
represented by William L. Warren, of The Marshall Firm, 1065 Avenue of the Americas, New York,
NY 10018.
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <aolhiphop.com>, <aolhiphop.net> and <aolhiphop.org>, registered with Go Daddy Software, Inc.
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.
Judge Irving H. Perluss
(Retired) is the
Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on March
21, 2005; the National Arbitration Forum received a hard copy of the Complaint
on March 24, 2005.
On
March 21, 2005, Go Daddy Software, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain names <aolhiphop.com>, <aolhiphop.net> and <aolhiphop.org> are registered with Go Daddy Software, Inc.
and that the Respondent is the current registrant of the name. Go Daddy Software, Inc. has verified that
Respondent is bound by the Go Daddy Software, 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 25, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of April 14,
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@aolhiphop.com, postmaster@aolhiphop.net and
postmaster@aolhiphop.org by e-mail.
A
timely Response was received and determined to be complete on April 14, 2005.
On April 21, 2005,
pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Irving H. Perluss (Retired) as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Identical
or Confusingly Similar. Policy ¶ 4(a)(i)
1. Complainant
America Online, Inc. (“AOL”) is the owner of numerous trademark registrations
worldwide for the AOL mark, including U.S. trademark Registration Nos.
1,977,731 and 1,984, 337, which were registered on June 4, 1996, and July 2,
1996, respectively. AOL registered and
uses its AOL mark in connection with, among other things, music and lifestyles.
2. AOL
uses its AOL.COM mark in connection with providing online services. AOL owns federal trademark Registration Nos.
2,325,291 and 2,325,292 for the AOL.COM mark.
The AOL mark is used extensively at the website.
3. Long
prior to Respondent’s February 19, 2004 registration of the disputed domain
names, <aolhiphop.com>, <aolhiphop.net> and <aolhiphop.org>,
and at least as early as 1989 for the AOL mark and 1992 for the AOL.COM mark,
AOL adopted and began using its marks in connection with computer online
services and other Internet-related services.
4. AOL
has invested substantial sums of money in developing and marketing its services
and marks. As a result, AOL is one of the most readily recognized and famous
marks on the Internet.
5. AOL
operates the most widely-used interactive online service in the world and each
year millions of AOL customers worldwide obtain services offered under the AOL
and AOL.COM marks.
6. The
disputed domain names, <aolhiphop.com>, <aolhiphop.net> and
<aolhiphop.org>, are nearly identical and confusingly similar to the AOL
and AOL.COM marks. Consumer confusion
is particularly likely because Respondent is using the very famous and
distinctive AOL mark as a prefix to the generic term “hip-hop,” which is a
popular style of music. Consumer
confusion is particularly likely because AOL has been providing online music
services for many years prior to the date on which Respondent registered the
disputed domain names. Moreover, AOL
provides a wide variety of online services related to the hip-hop music
style. Consumers, therefore, are likely
to recognize the famous AOL mark in the infringing domains and believe falsely
that AOL endorses or is affiliated with Respondent.
Rights
and Legitimate Interest. Policy ¶ 4(a)(ii)
1. Respondent
has no rights or legitimate interest in the disputed domain names. This is because Respondent (Darell
Blandshaw) is not commonly known as AOL, nor is he licensed or authorized to
use the AOL mark.
Registration
and Use in Bad Faith. Policy ¶
4(a)(iii)
1. Respondent’s
bad faith registration of the disputed domain names is evidenced by the fact
that the domains were registered many years after the AOL marks were used and
registered in the United States.
Moreover, Respondent uses an AOL e-mail address and is an AOL subscriber
with actual knowledge of AOL’s rights and the manner in which it uses its AOL
brand. Respondent, therefore, had
knowledge of AOL’s superior rights at the time he registered the infringing
domains.
2. Respondent’s
bad faith use of the domains is further demonstrated by Respondent’s use of the
disputed domain names to route to a commercial website that makes prominent use
of the AOL mark and provides and promotes various services, many of which are
offered by AOL. Respondent registered
the infringing domains solely to play off the famous AOL name and mark, and to
profit from the consumer confusion that is likely to occur when consumers
encounter the AOL mark in the disputed domains.
3. Respondent’s
bad faith intent and use of the infringing domains is further demonstrated by
several ICANN cases involving nearly identical cybersquatting motives and
strategies, what one arbitrator called “pathetic attempts to suggest an
unrelated origin for [the] use of AOL.”
See Am. Online, Inc. v. Cucamonga Elec. Corp., FA 103364 (Nat.
Arb. Forum Feb. 26, 2002) (“[I]n this age it is not a coincidence when a firm
uses the acronym AOL in any new setting.
In the absence of a credible explanation, I will infer that its purpose
is to mislead Internet users into thinking that whatever activities are carried
on on the site, AOL Inc. has some connection with them.”).
B.
Respondent
Identical
or Confusingly Similar. Policy ¶
4(a)(i)
1. All
Online Hip Hop.com was created as an online source for hip-hop lovers. All Online Hip Hop is not trying to confuse
its customers by using AOL as an acronym for which the Complainant calls a
popular style of music (hip-hop). Music
is a just part of hip-hop. All Online
Hip Hop services all aspects of the hip-hop culture, and Complainant is not
well known in the hip-hop community as a provider of hip-hop services.
2. Complainant’s
marks are not associated with hip-hop.
All Online Hip Hop.com is establishing a reputation as a source of
hip-hop services.
3. Respondent
admits that Complainant has been using its mark since 1992 and contends that
America Online has not been servicing hip-hop since that time.
4. Respondent
admits the recognition of Complainant as a famous online provider of goods and
services. However, Complainant is not recognized as a provider of hip-hop
services on the Internet, neither nationally nor internationally.
5. All
Online Hip Hop.com also reaches a wide customer base and the customers are
becoming exposed to the services provided by All Online Hip Hop.com.
Rights
and Legitimate Interest. Policy ¶
4(a)(ii)
1. The
words “hip-hop” are more widely known than the AOL mark. Complainant does not service hip-hop. Hip-hop is more than just rap music; it is a
culture, a way of life, one that is covered thoroughly on <aolhiphop.com>. Merely selling rap CDs is not servicing the
hip-hop community as Complainant claims.
2. Complainant
could have easily registered the <aolhiphop.com>, <aolhiphop.net>
and <aolhiphop.org> domains since it is implied that it services
the hip-hop community. It could have
done so since 1989, the year in which it claims to have adopted the AOL marks. Respondent registered these names in good
faith, understanding that Complainant is not commonly associated with “hip-hop”
and that it does not service this culture.
All Online Hip Hop services the hip-hop community, not only with music,
but with in-depth articles, videos, magazines and a personal view from someone
who has been a part of this hip-hop community for many years, something that
Complainant does not do.
Registration
and Use in Bad Faith. Policy ¶
4(a)(iii)
1. Complainant’s
AOL.COM mark may be well known, but the purchasing public does not associate
America Online as servicing the hip-hop community, at least to the extent that
it would confuse Complainant with All Online Hip Hop, which completely, and
exclusively services hip-hop and the hip-hop community.
2. Respondent
has no intention to profit in bad faith from Complainant’s AOL marks. America Online is not commonly associated
with the “hip-hop” culture. There is no
bad faith intent, or any confusion because America Online is not known to
service the hip-hop area.
3. There
is no resemblance to any of the America Online product sites by the disputed
domain names. Respondent uses the AOL
prefix since the Respondent is known as “All Online Hip Hop,” and exclusively
services the hip-hop community.
4. Respondent
is also willing to include a disclaimer on the site (for a reasonable and
agreed upon period of time) stating that it is not affiliated with Complainant
or any of its services. This disclaimer
will be in clear view.
FINDINGS AND DETERMINATIONS
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 should 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.
Preliminarily,
it is to be noted that there have been numerous attempts to utilize the
principal components of Complainant’s registered AOL mark as a domain
name. These attempts have been
extensively arbitrated and in each instance, transfer was ordered.
Arbitration
decisions which appear to be directly on point, because they involved services,
businesses, hobbies, lifestyles, cultures and interests, as here, include Am.
Online, Inc. v. RAM, FA 136310 (Nat. Arb. Forum, Jan. 21, 2003)
(<aol-india.com>); Am. Online, Inc. v. Tella, FA
101820 (Nat. Arb. Forum, Dec. 28, 2001) (<aolbox.com>); Am.
Online, Inc. v. Stop 2 Shop, FA 212629 (Nat. Arb. Forum, Jan. 9,
2004) (<aol-games.com>); Am. Online, Inc. v. Klemons, FA
203127 (Nat. Arb. Forum, Nov. 21, 2003) (<aolsmuts.com>); Am.
Online, Inc. v. Phat Nasty Prods., FA 146940 (Nat. Arb. Forum, Apr.
1, 2003) (<aolnasties.com>); Am. Online, Inc. v. AOL Logistics Co., Ltd.,
FA 166019 (Nat. Arb. Forum, Aug. 20, 2003) (<aologis.com>); Am.
Online, Inc. v. AOL Fin. Holdings Group, Inc., FA 362287, (Nat. Arb.
Forum, Dec. 20, 2004) (<aolholding.com>); Am. Online, Inc. v. Trapp,
FA 268418 (Nat. Arb. Forum, June 28, 2004) (<aol-land.com>); Am.
Online, Inc. v. N/A, FA 288982 (Nat. Arb. Forum, Aug. 6, 2004)
(<aolhome.com>); Am. Online, Inc. v. World Photo Video &
Imaging, Corp., FA 109031 (Nat. Arb. Forum, May 13, 2002)
(<aolcamera.com> and <aolcameras.com>); Am. Online, Inc. v. Touch Tone
Pictures, LLC, FA 105776, (Nat. Arb. Forum, Mar. 15, 2002)
(<aolparty.net>); Am. Online, Inc. v. Action Now Network,
FA 104131 (Nat. Arb. Forum, Mar. 15, 2002) (<aolracing.com> and
<aolracing.net>); Am. Online, Inc. v. Peppler, FA
103437 (Nat. Arb. Forum, Feb. 22, 2002) (numerous, including
<aolpogo.com> and <aolmediaplayer.com>); Am. Online, Inc. v. Anderson,
FA 103365 (Nat. Arb. Forum, Feb. 7, 2002) (<aolcollections.com>); Am.
Online, Inc. v. Berns, FA 273412, July 8, 2004)
(<aolove.com>).
Of
particular interest is the language of the Panelist in Am. Online, Inc. v. Cucamonga
Elec. Corp., FA 103364 (Nat. Arb. Forum, Feb. 26, 2002)
(<aolutility.com>). Therein, it
was said:
Despite
all the verbiage in the submissions, the issues are very simple. Is there any risk that a user calling the
name <aolutility.com> may think he is calling a site about some form of
utility that is owned by AOL, Inc. or associated with AOL Inc.?
The
answer is yes. Given the ubiquitous
nature of AOL Inc., there is no doubt some Internet users when they discover
<aolutility.com> will think they have reached a site operated under the
aegis of AOL, Inc. See, for example, America Online, Inc. v. Viper, WIPO Case
D2000-1198) (‘it is well past the day when Internet users would not make the
assumption that use of AOL as part of a domain name links that site in the mind
of the user to Complainant’).
And,
further:
At the same time, the acronym is now so
famous that coincidence is incredible.
The result is that one must infer that the name was chosen precisely
because it matched that of this large enterprise, AOL, Inc. To seek to use the goodwill of another
enterprise is not to create any rights or legitimate interests. On the contrary.
Finally:
Contrary
to the submissions of the council for the Respondent ‘AOL’ are not merely three
more letters. That argument assumes
that I am a fool. The three letters
together symbolize a large American enterprise. I simply repeat that in this age it is not a coincidence when a
firm uses the acronym AOL in any new setting.
In the absence of a credible explanation, I will infer that its purpose
is to mislead Internet users into thinking that whatever activities are carried
on on the site, AOL Inc. has some connection with them. This is fraud within the meaning of the
rules, and the law. See Sony Kabushiki Kaisha v. Inja, Kil,
D2000-1409 (WIPO Dec. 9, 2000) (finding that bad faith registration and use
where it is ‘inconceivable that the respondent could make any active use of the
disputed domain names without creating a false impression of association with
the Complainant’).
. . . . .
I
will say only for this Respondent that it has unlike others spared me the
pathetic attempts to suggest an unrelated origin for its use of AOL: America
Online, Inc. v. Yeteck Communication, Inc., D2001-0055 (WIPO Apr. 23, 2001)
(Respondent held to have acted in bad faith despite claims that
<aolcasino.com> was an acronym for ‘Adults On Line Casino’); America Online, Inc. v. East Coast Exotics,
D2001-0661 (WIPO July 10, 2001) (bad faith registration and use despite Respondent’s
claim that AOL is an acronym for ‘Amateurs On Line’).
It is found and determined that
Complainant has established rights in the AOL mark through its registration of
the mark with the United States Patent and Trademark Office (“USPTO”) (Reg.
Nos. 1, 977,731 issued June 4, 1996; 1,984,337 issued July 2, 1996) and through
continuous use of the mark in commerce since 1989. 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 America Online, Inc. v. Thomas P. Culver
Enters., D2001-0564 9WIPO June 18, 2001) (finding that successful
trademark registration with the United States Patent and Trademark Office
creates a presumption of rights in a mark).
It is further found and determined that
the disputed domain names, <aolhiphop.com>, <aolhiphop.net> and
<aolhiphop.org>, are confusingly similar to Complainant’s AOL mark. This is because the disputed domain names
incorporate the mark in its entirety, merely adding the term “hip hop.” This is not enough to overcome a finding of
confusing similarity between Respondent’s domain names and Complainant’s mark
pursuant to Policy ¶ 4(a)(i). In
addition to the arbitration decisions above cited, see 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 the complainant combined with a generic work or term); see also Sony
Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000)
(finding that “[n]either the addition of an ordinary descriptive word . . . nor
the suffix ‘.com’ detract from the overall impression of the dominant part of
the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is
satisfied).
Complainant has established the first
element required by Policy ¶ 4(a)(i).
Respondent claims that it is using the
disputed domain names in a broader context than the services offered by
Complainant. Nevertheless, it is found
and determined that Respondent is using the confusingly similar <aolhiphop.com>,
<aolhiphop.net>, and <aolhiphop.org> domain names to offer
commercial services that compete directly with the services provided by
Complainant. It is to be noted that the
services covered by Complainant’s mark go beyond “music” to include “lifestyles.” A competing use of the disputed domain names
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 N.
Coast Med., Inc. v. Allegro Med., FA 95541 (Nat. Arb. Forum Oct. 2,
2000) (finding no rights or legitimate interests in a domain name that diverted
Internet users to the respondent’s competing website through the use of the
complainant’s mark); see also Avery Dennison Corp. v. Steele, FA
133626 (Nat. Arb. Forum Jan. 10, 2003) (finding that the respondent had no
rights or legitimate interests in the disputed domain name where it used the
complainant’s mark, without authorization, to attract Internet users to its
business, which competed with the complainant).
Further, it is found and determined that
Respondent is neither commonly known by the disputed domain names nor
authorized to register domain names featuring Complainant’s AOL mark. Accordingly, Respondent lacks rights and
legitimate interests in the disputed domain names pursuant to Policy ¶
4(c)(iii). See Tercent
Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003( (stating
“nothing in the resondent’s WHOIS information implies that the respondent is
‘commonly known by’ the disputed domain name” as one factor in determining that
Policy ¶ 4(c)(iii) does not apply); see also Compagnie de Saint Gobain v.
Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights
or legitimate interests where the respondent was not commonly known by the mark
and never applied for a license or permission from the complainant to use the
trademarked name).
Complainant has established the second
element required by Policy ¶ 4(a)(ii).
It is found and determined that
Respondent is using the disputed domain names, <aolhiphop.com>,
<aolhiphop.net> and <aolhiphop.org>, to operate a website offering
services that directly compete with those offered by Complainant. Such competing use constitutes disruption
and is evidence that Respondent registered and used the disputed domain names
in bad faith pursuant to Policy ¶ 4(b)(iii).
See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum
July 18, 2000) (finding the respondent acted in bad faith by attracting
Internet users to a website that competes with the 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 the
complainant registered and used a domain name confusingly similar to the
complainant’s PENTHOUSE mark to host a pornographic website).
The disputed domain names have been found
to be confusingly similar to Complainant’s AOL marks. It is apparent, accordingly, that consumers accessing the domain
names may become confused as to Complainant’s affiliation with the resulting
commercial website. Respondent’s
commercial use of the disputed domain names, accordingly, constitutes bad faith
registration and use pursuant to Policy ¶ 4(b)(iv). See Qwest Communications, Int’l Inc. v. Ling Shun
Shing, FA 187431 (Nat. Arb. Forum Oct. 6, 2003) (“Respondent’s
attempt to commercially benefit from the misleading domain name is evidence of
bad faith pursuant to Policy ¶ 4(b)(iv).”); see also Identigene,
Inc. v. Genetest Lab., D2000-1100 (WIPO Nov. 30, 2000) (finding bad
faith where the 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 believe that the complainant is the source of or is sponsoring
the services offered at the site). And,
of course, see the many arbitration decisions involving the use of acronym
“AOL,” above cited.
Further, it is evident, and it is found
and determined, that Respondent registered the disputed domain names with
actual and constructive knowledge of Complainant’s rights in the AOL mark. The constructive knowledge is because of
Complainant’s registration of the mark with the USPTO and because of the
international fame that Complainant’s mark has acquired. The actual knowledge is because Respondent
was at one time a registered member of Complainant’s Internet service. The registration of domain names that are
confusingly similar to another’s mark despite actual or constructive knowledge
of the mark holder’s rights is tantamount to bad faith registration and use
pursuant to Policy ¶ 4(a)(iii). See
Digi
Intl’ v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002)
(“[T]here is a legal presumption of bad faith, when Respondent reasonably
should have been aware of Complainant’s trademarks, actually or
constructively.”); see also Exxon Mobile Corp. v. Fisher,
D2000-1412 (WIPO Dec. 18, 2000) (finding that the respondent had actual and
constructive knowledge of the complainant’s EXXON mark given the worldwide
prominence of the mark); see also Orange Glow Int’l v. Blume, FA
118313 (Nat. Arb. Forum October 4, 2002 (“[T]he complainant’s OXICLEAN mark is
listed on the Principal Register of the USPTO, a status that confers
constructive notice of those seeking to register or use the mark or any
confusingly similar variation thereof.”).
Finally, the offered disclaimer by
Respondent on his websites does not alleviate his problem. This is because such disclaimers are not
sufficient to prevent initial interest confusion. See Ciccone v.
Parisi (Madonna.com), D2000-0847 (WIPO Oct. 12, 2000) (“Respondent’s use of a disclaimer on its website
is insufficient to avoid a finding of bad faith. First, the disclaimer may be
ignored or misunderstood by Internet users. Second, a disclaimer does nothing
to dispel initial interest confusion that is inevitable from the respondent’s
actions. Such confusion is a basis for finding a violation of the complainant’s
rights.”).
Complainant has established the third
element required by Policy ¶ 4(a)(iii).
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 <aolhiphop.com>,
<aolhiphop.net> and <aolhiphop.org> domain names be TRANSFERRED
from Respondent to Complainant.
JUDGE IRVING H. PERLUSS
(Retired), Panelist
Dated: May 4, 2005
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