America Online, Inc. v. Ivory Investments
Claim Number: FA0509000568232
Complainant is America Online, Inc. (“Complainant”), represented by James R. Davis, of Arent Fox PLLC, 1050 Connecticut Avenue, NW, Washington, DC, 20036. Respondent is Ivory Investments (“Respondent”), 60 Market Square, PO Box 364, Belize City, N/A BELIZE.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <iluvaol.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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 27, 2005; the National Arbitration Forum received a hard copy of the Complaint on September 29, 2005.
On September 27, 2005, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <iluvaol.com> domain name 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 September 29, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 19, 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@iluvaol.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 25, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard 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, among others:
Complainant, American Online, Inc., operates the most widely-used interactive online service in the world, with millions of subscriber-customers.
Complainant has registered the AOL and AOL.COM marks with the U.S. Patent and Trademark Office beginning as early as 1996.
Respondent, Ivory Investments, registered the <iluvaol.com> domain name on May 11, 2002.
The website to which the disputed domain name resolves offers various goods and services, including links to gambling and pornographic sites.
Respondent’s <iluvaol.com> domain name is confusingly similar to Complainant’s AOL mark.
Respondent does not have any rights or legitimate interests in the <iluvaol.com> domain name.
Respondent has registered and is using the <iluvaol.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Respondent having defaulted, leaving Complainant’s allegations uncontested, the panel makes the following findings on the basis of the evidence admitted in the record:
1. Respondent’s <iluvaol.com> domain name is confusingly similar to Complainant’s AOL and AOL.COM marks.
2. Respondent does not have any rights or legitimate interests in the <iluvaol.com> domain name.
3. Respondent has registered and is using the <iluvaol.com> domain name in bad faith.
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); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000).
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 demonstrated rights in the AOL and AOL.COM
marks by virtue of its registrations of those marks with the pertinent
authorities. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004); see also Vivendi
Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11,
2003).
The Panel thus finds that the <iluvaol.com>
domain name is confusingly similar to marks in which Complainant has
rights. The only difference between the
domain name and the marks is the addition of the generic expression “iluv,”
shorthand for “I love.” It has many
times been held, and we agree, that creating a domain name by adding a generic
expression to another’s mark does not significantly distinguish the domain name
from the mark. See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24,
2002); see also Quixtar Inv., Inc.
v. Smithberger, D2000-0138 (WIPO Apr. 19, 2000).
The Panel thus concludes that Complainant has adequately met the proof requirements of Policy ¶ 4(a)(i).
Respondent has appropriated Complainant’s AOL and AOL.COM
marks to refer Internet traffic to various websites that offer, inter alia,
pornography and gambling. The Panel
finds that thus appropriating another’s marks is not a bona fide offering of a
good or service pursuant to Policy ¶ 4(c)(i) because it tarnishes Complainant’s
marks and does not evidence legitimate noncommercial or fair use of the domain
name. See Paws, Inc. v. Zuccarini, FA 125368 (Nat. Arb. Forum
Nov. 15, 2002); see also
Imation Corp. v. Streut, FA
125759 (Nat. Arb. Forum Nov. 8, 2002).
For this reason, and because Respondent has provided no
evidence demonstrating that it is commonly known by the disputed domain name
pursuant to Policy ¶ 4(c)(ii), the Panel finds that Complainant has satisfied
Policy ¶ 4(a)(ii). See Tercent Inc. v. Lee Yi, FA
139720 (Nat. Arb. Forum Feb. 10, 2003); see
also W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003).
Complainant’s registration of the AOL and AOL.COM marks with
the United States Patent and Trademark Office confers upon Respondent at least
constuctive knowledge of Complainant’s rights in those marks. The Panel therefore finds, consistent with
the findings of other panels which have considered this issue, that
registration of a confusingly similar domain name despite actual or constructive
knowledge of another’s rights in a mark is evidence of bad faith registration
and use of the domain name pursuant to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506
(Nat. Arb. Forum Oct. 24, 2002); and Orange Glo Int’l v. Blume, FA
118313 (Nat. Arb. Forum Oct. 4, 2002).
The Panel also finds that Respondent is using Complainant’s AOL mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith pursuant to Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000); see also Encyclopaedia Britannica Inc. v. Shedon.com, D2000-0753 (WIPO Sept. 6, 2000).
The Panel therefore concludes that Complainant has
demonstrated bad faith registration and use of the disputed domain name within
the meaning of Policy ¶ 4(a)(iii).
Having found all three elements required under the ICANN Policy, the Panel concludes that the relief requested shall be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <iluvaol.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: November 7, 2005
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