America Online, Inc. v Joker Productions
Inc.
Claim
Number: FA0503000449454
Complainant is America Online, Inc. (“Complainant”),
represented by James R. Davis, of Arent Fox PLLC, 1050
Connecticut Avenue NW, Washington, DC 20036.
Respondent is Joker Productions
Inc. (“Respondent”), 9360 West Flamingo Ste. 110-448, Las Vegas, NV 89147.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <aolalways.com>, registered with Go
Daddy Software, Inc.
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.
The
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on March
30, 2005; the National Arbitration Forum received a hard copy of the Complaint
on April 5, 2005.
On
April 6, 2005, Go Daddy Software, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <aolalways.com> is
registered with Go Daddy Software, Inc. and that 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
April 6, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
April 26, 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@aolalways.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
May 2, 2005, pursuant to Complainant's request to have the dispute decided by a
single-member Panel, the National Arbitration Forum appointed the Honorable
Charles K. McCotter, Jr. (Ret.) 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 <aolalways.com>
domain name is confusingly similar to Complainant’s AOL mark.
2. Respondent does not have any rights or
legitimate interests in the <aolalways.com> domain name.
3. Respondent registered and used the <aolalways.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
American Online, Inc., has rights in the AOL mark through registration with the
United States Patent and Trademark Office (Reg. No. 1,977,731, issued June 4,
1996). Complainant uses the AOL mark in
connection with providing information and services on the Internet in relation
to various online goods and services.
Complainant has used the mark continuously and extensively in interstate
and international commerce since as early as 1989.
Respondent
registered the <aolalways.com> domain name on February 11,
2003. Respondent is using the disputed
domain name to redirect Internet users to an offensive website called
“eBitchSlap – Send An Electronic Bitch Slap Today.” Respondent has also offered to sell the domain name for an amount
ranging from $10,000.00 to $125,000.00.
Additionally, Respondent continued to display banner advertisements for
services in direct competition with Complainant’s web hosting related services
even after receiving Complainant’s cease and desist letter. In fact, subsequent to Complainant’s cease
and desist letter, Respondent re-routed the disputed domain name to a website
entitled “All Our Love Always.”
Moreover, the website that Respondent’s domain name resolves to provides
a link that leads directly to Complainant’s official website.
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 and through continuous use of its
mark in commerce for the last sixteen years.
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 <aolalways.com>
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 phrase
“always.” 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 Westfield Corp. v. Hobbs,
D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com>
domain name confusingly similar because the WESTFIELD mark was the dominant
element); see also Yahoo! Inc. v. Zuccarini, D2000-0777 (WIPO Oct. 2, 2000)
(finding the registration and use of multiple domain names incorporating the
distinctive and famous YAHOO!, Yahooligans!, and GeoCities marks, together with
generic words such as ‘chat’ and ‘financial’ to be confusingly similar to
Complainant’s marks and likely to mislead Internet users into believing that
products and services offered by Respondents are being sponsored or endorsed by
YAHOO! or GeoCities, given the similarity of the names and products and
services offered).
Moreover,
the addition of the generic top-level domain “.com” is irrelevant in
determining whether the disputed domain name is confusingly similar to
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 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) was satisfied).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant
alleges that Respondent has no rights or legitimate interests in the disputed 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
right or legitimate interest is sufficient to shift the burden of proof to
Respondent to demonstrate that such rights or legitimate interests do 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).
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 the Complaint to be deemed 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 is
using the disputed domain name to redirect Internet users to a website
containing commercial content.
Respondent displays banner advertisements for services in direct
competition with Complainant’s web hosting related services at the disputed
domain name. Moreover, Respondent also
includes a link at the disputed domain leading directly to Complainant’s
official website. The Panel finds
Respondent’s use of a confusingly similar domain name to redirect Internet
users to a commercial website offering similar Internet products and services
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 Am. Online Inc. v. Shenzhen JZT Computer
Software Co., D2000-0809 (WIPO Sept. 6, 2000) (finding that 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 has
also offered to sell the disputed domain name registration for an amount
ranging from $10,000.00 to $125,000.00.
The Panel finds that Respondent’s offer to sell the disputed domain name
demonstrates that it lacks rights and legitimate interests in the domain
name. See Mothers Against Drunk
Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding
that under the circumstances, Respondent’s apparent willingness to dispose of
its rights in the disputed domain name suggested that it lacked rights
or legitimate interests in the domain name); see also Wal-Mart Stores, Inc. v. Stork,
D2000-0628 (WIPO Aug. 11, 2000) (finding Respondent’s conduct purporting to
sell the domain name suggests it has no legitimate use); see also Hewlett-Packard Co. v. High Performance
Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights
or legitimate interests where Respondent registered the domain name with the
intention of selling its rights).
Furthermore,
Respondent is not commonly known by the disputed domain name, and does not have
Complainant’s authorization to use the AOL mark or offer goods and services
under Complainant’s AOL mark.
Respondent has not presented any evidence and there is no proof in the
record suggesting that Respondent is commonly known by the disputed domain
names. Therefore, Respondent has not
established rights or legitimate interests in the disputed domain name pursuant
to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union
Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate
interests where Respondent was not commonly known by the mark and never applied
for a license or permission from Complainant to use the trademarked name); 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).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent intentionally
registered a domain name that is likely to confuse Internet users and
cause them to believe Respondent’s website hosted at the domain name would be
affiliated with or endorsed by Complainant.
This demonstrates bad faith under the Policy. See Sony
Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding 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"); see also Pavillion
Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000)
(finding that the "domain names are so obviously connected with the
Complainants that the use or registration by anyone other than Complainants
suggests 'opportunistic bad faith'").
Respondent is
incorporating Complainant’s mark in its domain name to lead Internet users to a
website that offers similar Internet hosting - related products and
services. The Panel finds that
Respondent is using the domain name to intentionally create a likelihood of
confusion with Complainant’s mark and to attract Internet users to Respondent’s
website for Respondent’s commercial gain, which constitutes bad faith pursuant
to Policy ¶ 4(b)(iv). See 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 confusingly similar domain name for the purpose of
disrupting Complainant’s business by redirecting Internet traffic intended for
Complainant to Respondent’s commercial website, where links to companies
offering similar Internet - related goods and services are displayed. Registration of a domain name confusingly
similar to Complainant’s mark for the purpose of disrupting Complainant’s
business 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).
Moreover,
Respondent has offered to sell the disputed domain name registration for an
amount ranging between $10,000.00 and $125,000.00. The Panel finds that this is further evidence of Respondent’s bad
faith registration and use of the domain name pursuant to Policy ¶
4(b)(i). See Am. Online, Inc. v. Avrasya Yayincilik
Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad
faith where Respondent offered domain names for sale); see also Banca Popolare Friuladria S.p.A. v. Zago,
D2000-0793 (WIPO Sept. 3, 2000) (finding bad faith where Respondent offered the
domain names for sale); see also Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web
Serv., FA 95685 (Nat. Arb. Forum
Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no
certain price is demanded, are evidence of bad faith”).
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 <aolalways.com> domain name be TRANSFERRED
from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated:
May 16, 2005
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