America Online, Inc. v. The Auto Channel
Inc d/b/a Robert Gordon
Claim
Number: FA0508000542422
Complainant, America Online, Inc. (“Complainant”), is
represented by James R. Davis of Arent Fox PLLC, 1050
Connecticut Avenue, NW, Washington, DC 20036.
Respondent is The Auto Channel
Inc d/b/a Robert Gordon (“Respondent”), 332 West
Broadway, Louisville, KY 40202.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <aolautoschannel.com>, <aolautoschannel.info>,
<aol-tv.com>, and <netscape-tv.com>, registered with Dotster.
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.
James
A. Crary as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on August
17, 2005; the National Arbitration Forum received a hard copy of the Complaint
on August 22, 2005.
On
August 17, 2005, Dotster confirmed by e-mail to the National Arbitration Forum
that the <aolautoschannel.com>, <aolautoschannel.info>,
<aol-tv.com>, and <netscape-tv.com> domain names are
registered with Dotster and that Respondent is the current registrant of the
names. Dotster has verified that
Respondent is bound by the Dotster 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
August 25, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of September
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@aolautoschannel.com, postmaster@aolautoschannel.info,
postmaster@aol-tv.com, and postmaster@netscape-tv.com by e-mail.
Having
received no response from Respondent, the National Arbitration Forum
transmitted to the parties a Notification of Respondent Default.
On
September 22, 2005, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the National Arbitration Forum appointed
James A. Crary 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 <aolautoschannel.com>,
<aolautoschannel.info>, and <aol-tv.com> domain names
are confusingly similar to Complainant’s AOL mark and that Respondent’s <netscape-tv.com>
domain name is confusingly similar Complainant’s NETSCAPE mark.
2. Respondent does not have any rights or
legitimate interests in the <aolautoschannel.com>, <aolautoschannel.info>,
<aol-tv.com>, and <netscape-tv.com> domain names.
3. Respondent registered and used the <aolautoschannel.com>,
<aolautoschannel.info>, <aol-tv.com>, and <netscape-tv.com>
domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
America Online, Inc., and its subsidiary, Netscape Communication Corp.,
(collectively “Complainant”) own exclusive worldwide rights to the AOL and
NETSCAPE marks. Complainant uses the
AOL and NETSCAPE marks in connection with providing services and general
interest information on the Internet.
Complainant holds numerous registrations for both marks with the United
States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,977,731
issued on June 4, 1996; Reg. No. 2,027,552 issued on Dec. 31, 1996). Complainant has invested substantial sums of
money in developing and marketing its services under both marks. Sales of services under Complainant’s marks
have amounted to many millions of dollars.
Respondent
registered the <aolautoschannel.com> domain name on August 11,
2003, the <aolautoschannel.info> domain name on December 26, 2004,
and the <aol-tv.com> and <netscape-tv.com> domain
names on November 11, 1997. Respondent
has used the disputed domain names to route Internet traffic to commercial
websites owned and operated by Respondent.
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.
Panels have
consistently held that a complainant’s registration of its mark with the USPTO
is sufficient to establish the complainant’s rights in that mark. In Innomed
Techs., Inc. v. DRP Services, FA 221171
(Nat. Arb. Forum Feb. 18, 2004), for example, a panel held that, “Registration
of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the
mark.” Id. Likewise, in Vivendi Universal
Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003), a
panel held, “Complainant's federal trademark registrations establish Complainant's
rights in the BLIZZARD mark.” Id. Thus, the Panel concludes that Complainant’s
registrations of its AOL and NETSCAPE marks with the USPTO are sufficient to
establish Complainant’s rights in the mark.
Complainant
argues the disputed domain names are confusingly similar to its AOL and
NETSCAPE marks, as each domain name adds either the common terms “autos” and
“channel” or a hyphen and the letters “tv.”
The Panel holds that the addition of common terms or hyphens is
insufficient to distinguish Respondent’s domain names from Complainant’s
marks. 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
Parfums Christian Dior v. 1 Netpower, Inc., D2000-0022 (WIPO Mar. 3, 2000)
(finding that four domain names that added the descriptive words
"fashion" or "cosmetics" after the trademark were
confusingly similar to the trademark); see also Sports Auth. Mich. Inc. v.
Batu 5, FA 176541 (Nat. Arb. Forum Sept. 23, 2003) (“The addition of a
hyphen to Complainant's mark does not create a distinct characteristic capable
of overcoming a Policy ¶ 4(a)(i) confusingly similar analysis.”).
Thus, the Panel
finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant
asserts that Respondent does not have rights or legitimate interests in the
disputed domain names. The Panel holds
that Complainant’s assertion establishes a prima facie case and shifts
the burden to Respondent. To meet its
burden, Respondent must provide the Panel with evidence that it does have
rights or legitimate interests in the disputed domain names. Compagnie Generale des Matieres
Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001):
Proving that
the Respondent has no rights or legitimate interests in respect of the Domain
Name requires the Complainant to prove a negative. For the purposes of this sub
paragraph, however, it is sufficient for the Complainant to show a prima facie
case and the burden of proof is then shifted on to the shoulders of
Respondent. In those circumstances, the
common approach is for respondents to seek to bring themselves within one of the
examples of paragraph 4(c) or put forward some other reason why they can fairly
be said to have a relevant right or legitimate interests in respect of the
domain name in question.
Id.; see also G.D. Searle v. Martin Mktg.,
FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission
constitutes a prima facie case under the Policy, the burden effectively
shifts to Respondent. Respondent’s failure to respond means that Respondent has
not presented any circumstances that would promote its rights or legitimate
interests in the subject domain name under Policy ¶ 4(a)(ii).”). The Panel will analyze whether Respondent
could meet its burden of establishing rights or legitimate interests for
purposes of Policy ¶ 4(a)(ii).
Complainant
avers that Respondent is not commonly known by the disputed domain names. In fact, Respondent’s WHOIS information for
both domain names indicates that Respondent is known as “The Auto Channel Inc
d/b/a Robert Gordon.” Because
Respondent did not provide the Panel with a response, the Panel accepts
Complainant’s allegation that Respondent is not commonly known by the disputed
domain names as true. See Desotec N.V. v. Jacobi Carbons AB,
D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a
presumption that the complainant’s allegations are true unless clearly
contradicted by the evidence). Because
Respondent did not provide any evidence to prove that it is commonly known by
the disputed domain names pursuant to Policy ¶ 4(c)(ii), the Panel infers that
Respondent does not have rights or legitimate interests in the <aolautoschannel.com>,
<aolautoschannel.info>, <aol-tv.com>, and <netscape-tv.com>
domain names. See Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest 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 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).
Additionally,
Complainant argues that Respondent is using the confusingly similar disputed
domain names to divert Internet users looking for Complainant’s websites to
Respondent’s website for Respondent’s commercial gain. The Panel finds that such diversionary use
is neither a bona fide offering of goods or services under Policy ¶
4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶
4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's
demonstrated intent to divert Internet users seeking Complainant's website to a
website of Respondent and for Respondent's benefit is not a bona fide offering
of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also MSNBC Cable, LLC v. Tysys.com,
D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in
the famous MSNBC mark where the respondent attempted to profit using the
complainant’s mark by redirecting Internet traffic to its own website).
Accordingly, the
Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant
argues that Respondent is using the disputed domain names to benefit from the
goodwill associated with Complainant’s mark by confusing Internet users and
diverting them to Respondent’s websites for Respondent’s commercial gain. The
Panel holds that Respondent’s diversionary use and attempts to capitalize on
Internet user confusion is evidence of bad faith use and registration under
Policy ¶ 4(b)(iv). See 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 the complainant’s well-known marks, thus
creating a likelihood of confusion strictly for commercial gain); see also Anne of Green Gable Licensing Auth., Inc. v.
Internetworks, AF-0109 (eResolution June 12, 2000) (finding that the
respondent violated Policy ¶ 4(b)(iv) because the respondent admittedly used
the complainant’s well-known mark to attract users to the respondent's website).
Moreover,
Complainant contends that Respondent had constructive knowledge of
Complainant’s rights in the AOL and NETSCAPE marks at the time Respondent
registered the disputed domain names.
Panels have held that a complainant’s registration of a mark with the
USPTO confers constructive knowledge on respondents. See 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.”). The Panel holds that Respondent had actual
or constructive knowledge of Complainant’s rights in the marks at the time of
registration and that such knowledge is evidence of bad faith use and registration
under Policy ¶ 4(a)(iii). See Samsonite Corp. v. Colony Holding, FA
94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith
includes actual or constructive knowledge of a commonly known mark at the time
of registration); see also Exxon
Mobil 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 and thus the respondent
registered the domain name in bad faith).
The Panel finds
that Complainant has satisfied 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 <aolautoschannel.com>, <aolautoschannel.info>,
<aol-tv.com>, and <netscape-tv.com> domain names be TRANSFERRED
from Respondent to Complainant.
James A. Crary, Panelist
Dated:
October 3, 2005
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