America Online, Inc. v. Tan Kim Fong
Claim Number: FA0511000590806
Complainant is America Online, Inc. (“Complainant”), represented by James R. Davis of Arent Fox PLLC, 1050 Connecticut Avenue, NW, Washington, DC 20036. Respondent is Tan Kim Fong (“Respondent”), Kampung Serdang, P.O. Box 201, Sitiawan, 32000 Malaysia.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <aolweather.com> and <aolamericangreetings.com>, registered with Iholdings.com, Inc. d/b/a Dotregistrar.com.
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.
Sandra Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 1, 2005; the National Arbitration Forum received a hard copy of the Complaint on November 4, 2005.
On November 4, 2005, Iholdings.com, Inc. d/b/a Dotregistrar.com confirmed by e-mail to the National Arbitration Forum that the <aolweather.com> and <aolamericangreetings.com> domain names are registered with Iholdings.com, Inc. d/b/a Dotregistrar.com and that Respondent is the current registrant of the names. Iholdings.com, Inc. d/b/a Dotregistrar.com has verified that Respondent is bound by the Iholdings.com, Inc. d/b/a Dotregistrar.com 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 November 4, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 28, 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@aolweather.com and postmaster@aolamericangreetings.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 2, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 <aolweather.com> and <aolamericangreetings.com> domain names are confusingly similar to Complainant’s AOL and AOL.COM marks.
2. Respondent does not have any rights or legitimate interests in the <aolweather.com> and <aolamericangreetings.com> domain names.
3. Respondent registered and used the <aolweather.com> and <aolamericangreetings.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, America Online, Inc., is a provider of computer
online services and many other Internet-related services, including
telecommunications services, leasing access time to computer databases,
computer bulletin boards, computer networks and computerized research and
reference materials in a variety of fields, including weather.
Complainant owns registrations with the United States Patent
and Trademark Office (“USPTO”) for the AOL (Reg. No. 1,977,737 issued June 4,
1996; Reg. No. 1,984,337 issued July 2, 1996; Reg. No. 2,325,292 issued March
7, 2000) and AOL.COM (Reg. No. 2,325,291 issued March 7, 2000) marks. Complainant began using the AOL mark at
least as early as 1989, and it begain using the AOL.COM mark in 1992.
Respondent registered the <aolweather.com> domain name on March 29, 2002 and the <aolamericangreetings.com> domain name on May 5, 2002. The disputed domain names resolve to directory websites that display links for numerous products and services, presumably for the purpose of earning referral fees for diverting Internet users to third-party websites.
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.
The Panel finds that Complainant’s registration of its AOL mark with the USPTO is sufficient to establish Complainant’s rights in the mark in connection with Policy ¶ 4(a)(i). See 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.”); see also 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.”).
The <aolweather.com> and <aolamericangreetings.com> domain names incorporate Complainant’s famous AOL and AOL.COM marks and merely add a generic or descriptive term or the mark of a third-party. The addition of a common term or third-party mark to Complainant’s registered marks does not distinguish the domain names and renders them confusingly similar under 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 Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business); PNC Fin. Servs. Group Inc. v. Unasi Inc., FA 535925 (Nat. Arb. Forum Sept. 20, 2005) (“[A]dditions of common terms and third-party marks are not enough to overcome a finding of confusing similarity under Policy ¶ 4(a)(i).”).
Complainant has satisfied Policy ¶ 4(a)(i).
The initial burden under Policy ¶ 4(a)(ii) is on Complainant to prove that Respondent does not have rights or legitimate interests in the disputed domain names. Once Complainant has made a prima facie case, the burden then shifts to Respondent to show that it does have rights or legitimate interests pursuant to the directions provided in Policy ¶ 4(c). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (describing the burden shifting from the complainant to the respondent regarding rights and legitimate interests); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”). The Panel finds that Complainant has presented a prima facie case, and the Panel now chooses to consider whether an evaluation of all the evidence demonstrates rights or legitimate interests for Respondent under Policy ¶ 4(c).
The <aolweather.com> and <aolamericangreetings.com> domain names direct Internet users searching for Complainant’s products and services under the AOL and AOL.COM marks to directory websites that display links to websites for a variety of products and services, including gambling, weather and online communications services. Due to the nature of the websites, the Panel infers that Respondent likely derives financial benefit from linking Internet users to the other websites via Respondent’s websites. Use of another party’s famous mark to attract Internet users to one’s own website for commercial gain is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain names under Policy ¶ 4(c)(iii). See WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy); see also Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Furthermore, Complainant asserts that Respondent is not commonly known by the <aolweather.com> and <aolamericangreetings.com> domain names nor authorized or licensed to use Complainant’s AOL or AOL.COM marks for any purpose. The Panel finds nothing in the record to contradict Complainant’s assertions. Thus, Respondent has not established rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain 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); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question).
Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s use of the <aolweather.com> and <aolamericangreetings.com> domain names to divert Internet users searching for Complainant’s AOL products and services to Respondent’s directory website demonstrates Respondent’s intent to attract Internet users to its website by creating confusion with Complainant’s mark. The registration and use of a domain name containing Complainant’s mark to divert Internet users for Respondent’s commercial gain is evidence of bad faith registration and use under 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 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).
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 <aolweather.com> and <aolamericangreetings.com> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: December 16, 2005
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