America Online, Inc. v. Kieran McGarry
Claim Number: FA0507000514956
Complainant is America Online, Inc. (“Complainant”), represented
by James R. Davis, of Arent Fox PLLC, 1050 Connecticut
Avenue, N.W., Washington, DC 20036.
Respondent is Kieran McGarry (“Respondent”),
2902 Logan Rd., Ocean, NJ 07712.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <aolwhore.com>,
registered with Go Daddy Software, 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.
Judge
Harold Kalina (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on July
12, 2005; the National Arbitration Forum received a hard copy of the Complaint
on July 15, 2005.
On
July 15, 2005, Go Daddy Software, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <aolwhore.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
July 18, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
August 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@aolwhore.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
August 11, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed Judge Harold
Kalina (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 <aolwhore.com> domain name is confusingly similar to
Complainant’s AOL mark.
2. Respondent does not have any rights or
legitimate interests in the <aolwhore.com>
domain name.
3. Respondent registered and used the <aolwhore.com> domain name in bad
faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
America 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 the provision of 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. Complainant’s mark has acquired world-wide prominence and is
associated with high and uniform quality services.
Respondent
registered the <aolwhore.com>
domain name on June 12, 2003.
Respondent’s domain name resolves to a website featuring adult-oriented
content.
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. The Panel is entitled to accept all reasonable allegations and
inferences set forth in the Complaint as true unless the evidence is clearly
contradictory. See Vertical
Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum
July 31, 2000) (holding that the respondent's failure to respond allows all
reasonable inferences of fact in the allegations of the complaint to be deemed
true); see also 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.").
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 with extrinsic proof in this proceeding that it has rights in the
AOL mark through registration with the USPTO and by continuous use of the mark
in commerce. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat.
Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations
establish Complainant's rights in the BLIZZARD mark.”); see also
Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18,
2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes
Complainant's rights in the mark.”).
The <aolwhore.com> domain name is
confusingly similar to Complainant’s AOL mark because the domain name
incorporates Complainant’s mark in its entirety and merely adds the word
“whore.” This change is not enough to
overcome the confusingly similar aspects of Respondent’s domain name pursuant
to Policy ¶ 4(a)(i). 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 word or term); see also 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).
Furthermore,
Respondent’s <aolwhore.com>
domain name is confusingly similar to Complainant’s AOL mark because the domain
name adds the generic top-level domain ‘.com.’
The addition of a generic top-level domain does not negate the
confusingly similar aspects of Respondent’s domain name pursuant to Policy ¶
4(a)(i). See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000)
(finding <pomellato.com> identical to the complainant’s mark because the
generic top-level domain (gTLD) “.com” after the name POMELLATO is not
relevant); see also Rollerblade, Inc. v.
McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the
domain name such as “.net” or “.com” does not affect the domain name for the
purpose of determining whether it is identical or confusingly similar).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant
alleges that Respondent does not have rights or legitimate interests in the <aolwhore.com> domain name. When a complainant establishes a prima facie case pursuant to Policy ¶
4(a)(ii), the burden shifts to the respondent to prove that it has rights or
legitimate interests. Due to
Respondent’s failure to respond to the Complaint, the Panel infers that
Respondent does not have rights or legitimate interests in the disputed domain
name. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21,
2000) (finding that once the complainant asserts that the respondent does not
have rights or legitimate interests with respect to the domain, the burden
shifts to the respondent to provide credible evidence that substantiates its
claim of rights or 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 the complainant that the
respondent does not have rights or legitimate interests is sufficient to shift
the burden of proof to the respondent to demonstrate that such rights or
legitimate interests do exist); see also
Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000)
(finding that by not submitting a response, the respondent has failed to invoke
any circumstance which could demonstrate any rights or legitimate interests in
the domain name).
The Panel
interprets Respondent’s use of the <aolwhore.com>
domain name to operate an adult-oriented
website with links to similar as evidence that Respondent lacks rights
and legitimate interests pursuant to Policy ¶ 4(a)(ii). See Isleworth
Land Co. v. Lost In Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002)
(finding that Respondent’s use of its domain
name to link unsuspecting Internet traffic to an adult orientated website,
containing images of scantily clad women in provocative poses, did not
constitute a connection with a bona fide
offering of goods or services or a noncommercial or fair use); see also McClatchy Mgmt. Serv., Inc. v.
Carrington, FA 155902 (Nat. Arb. Forum June 2, 2003) (holding that
Respondent’s use of the disputed domain
names to divert Internet users to a website that features pornographic
material, had been “consistently held” to be neither a bona fide offering of
goods or services . . . nor a legitimate noncommercial or fair use); see also Nat’l Football League Prop., Inc.
v. One Sex Entm’t Co., D2000-0118 (WIPO Apr. 17, 2000) (finding that
Respondent had no rights or legitimate interests in the
<chargergirls.com> and <chargergirls.net> domain names where
Respondent linked these domain names to its pornographic website).
Respondent has
not offered any proof, and there is no indication in the record, suggesting
that Respondent is commonly known by the <aolwhore.com>
domain name. Furthermore, Respondent
has neither permission nor a license to use Complainant’s mark. Thus, Respondent has not established rights
or legitimate interests in the disputed domain name pursuant to Policy ¶
4(c)(ii). See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum
Jan. 23, 2001) (finding that the respondent does not have rights in a domain
name when the respondent is not known by the mark); 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); see also Broadcom Corp. v. Intellifone Corp.,
FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate
interests because the respondent is not commonly known by the disputed domain
name or using the domain name in connection with a legitimate or fair use).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
registered a domain name containing a confusingly similar version of
Complainant’s well-known mark, and did so for Respondent’s commercial
gain. Respondent’s domain name diverts
Internet users searching under Complainant’s AOL mark to Respondent’s
commercial website. The Panel infers
that Respondent receives click-through fees for diverting Internet users to
Complainant’s competitors. The Panel
finds that Respondent registered and used the disputed domain name in bad faith
pursuant to Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex
Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the
respondent registered and used the domain name in bad faith pursuant to Policy
¶ 4(b)(iv) because the respondent was using the confusingly similar domain name
to attract Internet users to its commercial website); see also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002)
(finding that if the respondent profits from its diversionary use of the
complainant’s mark when the domain name resolves to commercial websites and the
respondent fails to contest the complaint, it may be concluded that the
respondent is using the domain name in bad faith pursuant to Policy ¶
4(b)(iv)); see also Drs. Foster &
Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad
faith where the respondent directed Internet users seeking the complainant’s
site to its own website for commercial gain).
Respondent has
registered and used the <aolwhore.com>
domain name in bad faith pursuant to Policy ¶ 4(a)(iii) by using the domain
name, which contains a confusingly similar version of Complainant’s AOL mark,
to market adult-oriented material. Such
use is evidence that Respondent registered and used the domain name in bad
faith pursuant to Policy ¶ 4(a)(iii). See Wells Fargo & Co. v. Party Night
Inc., FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (finding that Respondent’s tarnishing use of the disputed domain names to redirect Internet users to adult-oriented websites was evidence
that the domain names were being used in bad faith); see also Six
Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO Mar. 4, 2003) (stating
that “whatever the motivation of Respondent, the diversion of the domain name
to a pornographic site is itself certainly consistent with the finding that the
Domain Name was registered and is being used in bad faith”); see also Ty, Inc. v. O.Z. Names,
D2000-0370 (WIPO June 27, 2000) (finding that absent contrary evidence, linking
the domain names in question to graphic, adult-oriented websites is evidence of
bad faith).
Furthermore,
Respondent registered the <aolwhore.com>
domain name with actual or constructive knowledge of Complainant’s rights in
the AOL mark due to Complainant’s registration of the mark with the United
States Patent and Trademark Office.
Moreover, the Panel infers that Respondent registered the domain name
with knowledge of Complainant’s rights in the mark due to the immense and
international fame of the AOL mark.
Registration of a domain name that is confusingly similar to another’s
mark despite actual or constructive knowledge of the mark holder’s rights in
the mark 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) (“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.”); see
also Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding
that Respondent had actual and constructive knowledge of Complainant’s EXXON
mark given the worldwide prominence of the mark and thus Respondent registered
the domain name in 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 <aolwhore.com>
domain name be TRANSFERRED from
Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated:
August 24, 2005
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