America Online, Inc. v. Anil Thricovil
Claim Number: FA0602000638077
PARTIES
Complainant is America Online, Inc. (“Complainant”), represented by James R. Davis, of Arent Fox PLLC, 1050 Connecticut Avenue, NW, Washington, DC 20036. Respondent is Anil Thricovil (“Respondent”), represented by Michael P. Eddy, of Law Office of Michael P. Eddy12526 High Bluff Dr., Suite 300, San Diego, CA 92130.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <aolvideo.com>,
registered with Network Solutions, Inc.
PANEL
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding:
Hon. Nelson A. Diaz (Ret.), Hon. James A. Carmody (Ret.) and David Sorkin as Panelists.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on February 1, 2006; the National Arbitration Forum received a
hard copy of the Complaint on February 6, 2006.
On February 3, 2006, Network Solutions, Inc. confirmed by e-mail to the
National Arbitration Forum that the <aolvideo.com>
domain name is registered with Network Solutions, Inc. and that the Respondent
is the current registrant of the name. Network
Solutions, Inc. has verified that Respondent is bound by the Network Solutions,
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 February 6, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of February 27, 2006 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@aolvideo.com by e-mail.
A timely Response was received and determined to be complete on February
27, 2006.
Complainant submitted an Additional Submission within the five-day time
period prescribed for additional submissions by the Forum’s Supplemental Rule
7. Respondent subsequently submitted an
Reply to Complainant’s Additional Submission, but not within the period
required by Supplemental Rule 7.
On March 8, 2006, pursuant to Complainant’s
request to have the dispute decided by a three-member Panel, the National
Arbitration Forum appointed Hon. Nelson A. Diaz (Ret.), Hon. James A. Carmody (Ret.) and David
Sorkin as Panelists.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant has established rights in the AOL mark (Reg. No. 1,977,731
issued June 4, 1996) through registration with the United States Patent and
Trademark Office (“USPTO”). Complainant
claims to have long used the AOL mark in the United States, India and
throughout the world. In addition, Complainant
claims to have sold billions of dollars in services in connection with the
mark. Complainant contends that
Respondent’s <aolvideo.com> domain
name is confusingly similar to Complainant’s registered mark, i.e. that Respondent’s disputed domain name
contains Complainant’s entire AOL mark and merely adds the generic term
“video”. Complainant contends that the
addition of generic terms fails to sufficiently distinguish a domain name
pursuant to Policy ¶ 4(a)(i).
Complainant also contends that Respondent is
neither commonly known by the disputed domain name nor licensed to register
domain names featuring Complainant’s AOL mark.
Complainant further contends that Respondent’s willingness to sell the
domain name, through correspondence between the two parties, is evidence of a
lack of rights or legitimate interests in the domain name. Complainant also disputes Respondent’s
assertion of demonstrable preparations to use the disputed domain name in
connection with a bona fide offering of goods or services.
Complainant asserts
that the disputed domain name was registered with prior knowledge of
Complainant’s right in the AOL mark.
Complainant further contends that Respondent subsequently used the
domain name in bad faith. Specifically,
Complainant contends that Respondent is
using the disputed domain name to operate a website which features links to
competing and non-competing commercial websites from which Respondent
presumably receives referral fees.
B. Respondent
Respondent does not dispute Complainant’s rights in the AOL mark in the United States. Respondent does dispute, however, the scope of those rights. Specifically, Respondent denies that those rights extend to video services and to India, the planned location of Respondent’s own on-line video services. Furthermore, Respondent contends that the addition of the generic term “video” to “aol” is sufficient to distinguish Respondent’s domain name from Complainant’s mark. Respondent thus denies Complainant’s allegation that the <aolvideo.com> domain name is confusingly similar to Complainant’s AOL mark.
Respondent asserts that it using the domain name <aolvideo.com> in connection with a bona fide offering of goods and services and denies any bad faith in registration or use. Notably, Respondent asserts that: it has been making preparations to use the disputed domain name for the purpose of offering an online video service for Internet users; and it intended the domain name to be an abbreviation of the phrase “Anil’s On-line Video.”
Respondent denies that it intended to sell
the disputed domain name, but was instead contacted by Complainant, who wanted
to reach an “amicable solution.”
C. Additional Submissions
The Panel has reviewed the additional submissions submitted by the
parties but declines to consider them in reaching its decision. Additional submissions should be admitted
only in exceptional circumstances, such as where they reflect newly discovered
evidence not reasonably available to the submitting party at the time of its original
submission or to rebut arguments by the opposing party that the submitting
party could not reasonably have anticipated.
Deutsche Post AG v. NJDomains, D2006-0001 (WIPO Mar. 1, 2006). No such exceptional circumstances exist in
this case.
FINDINGS
The Panel finds that Complainant has established rights in the AOL mark
in the United States, as well as elsewhere in the world, including India. The Panel finds that Complainant’s rights in
the AOL mark extend to video and
related services. The Panel further
finds that Respondent’s <aolvideo.com>
domain name is confusingly similar to Complainant’s registered mark.
The Panel finds that Respondent’s use
of the confusingly similar <aolvideo.com> domain name to operate a website featuring links
to various competing and non-competing commercial websites from which
Respondent presumably receives referral fees is neither a bona fide offering of goods or services pursuant to
Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy
¶ 4(c)(iii). The Panel further finds that Respondent
is not commonly known by the <aolvideo.com> domain name for purposes of Policy ¶ 4(c)(ii)
and that Respondent failed to present sufficient evidence showing
demonstrable preparations to use the <aolvideo.com> domain name in connection with rights or
legitimate interests over the past seven years pursuant to Policy ¶
4(a)(ii).
The Panel finds that Respondent is using the
disputed domain name to operate a website which features links to competing and
non-competing commercial websites from which Respondent presumably receives
referral fees and that such use is evidence of bad faith registration and use
pursuant to Policy ¶ 4(b)(iv).
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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.”
Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark
or service mark in which the Complainant has rights;
(2)
the 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.
It is uncontroverted that Complainant has established rights in the AOL mark in the United States, as well as India. 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”). Respondent’s argument notwithstanding, the uncontroverted evidence shows that Complainant’s rights in the AOL mark extend to video and related services. Even if this were not so, it would be readily concluded that Respondent’s <aolvideo.com> domain name is confusingly similar to Complainant’s registered mark for it is well-established that the addition of a generic term, such as “video”, is insufficient to distinguish Respondent’s domain name from Complainant’s mark. 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 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) is satisfied).
By focusing solely on registrations (and the absence
of such registrations in India), Respondent misapprehends the applicable
trademark law. It is well-established
United States law that trademark rights arise from both federal registration of
a mark and actual use of a mark in commerce.
Further, trademark protection goes beyond merely banning another’s use
of the identical term, it also prohibits another’s commercial use of any
confusingly similar term. Complainant
thus has met its burden of proving that the
domain name registered by the Respondent is identical or confusingly similar to
a trademark or service mark in which Complainant has rights.
Complainant proffered evidence that Respondent is using the confusingly similar <aolvideo.com> domain name to divert internet users to Respondent’s own commercial website. Complainant also proffered evidence that Respondent is not commonly known by the <aolvideo.com> domain name. See Google, Inc. v. Freije, FA 102609 (Nat. Arb. Forum Jan. 11, 2002) (“Respondent would be hard pressed to show that it had rights or legitimate interests in the domain name because Complainant’s [GOOGLE] mark is so well known.”); see also 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). This evidence belies Respondent’s claim of rights and legitimate interests in the domain name.
Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the 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 the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist). Here, Complainant’s proffered evidence satisfies its burden, thus shifting the burden to Respondent to offer evidence of rights of legitimate interests in the domain name.
Respondent, however, has not rebutted
Complainant’s evidence; indeed the evidence proffered by Respondent
substantiates Complainant’s claim that Respondent intentionally used the
confusingly similar <aolvideo.com> domain name to operate a website featuring links
to various competing and non-competing commercial websites from which Respondent
presumably receives referral fees. 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 Am. Online, Inc. v. Advanced Membership Servs., Inc., FA 180703 (Nat.
Arb. Forum Sept. 26, 2003) (“Respondent's registration and use of the <gayaol.com> domain name with the intent to divert Internet users to
Respondent's website suggests that Respondent has no rights to or legitimate
interests in the disputed domain name pursuant to Policy Paragraph
4(a)(ii).”). Based on the foregoing, the Panel finds that Respondent has not
established rights or legitimate interests in the disputed domain name pursuant
to Policy ¶ 4(c).
The Panel further finds that Respondent presented no credible evidence that it is commonly known by the <aolvideo.com> domain name for purposes of Policy ¶ 4(c)(ii). See Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected); see also 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). Respondent’s self-serving assertion aside, there is no evidence that members of the general public recognize this domain name as an abbreviation of the phrase “Anil’s On-line Video.”
Finally,
Respondent’s assertion that, for the past seven years, it has been making
preparations to use the disputed domain name as part of an on-line video
service is not credible. The evidence
simply does not show any “demonstrable preparations” to use the <aolvideo.com> domain name in connection with a legitimate
business. See Compl. Annex F
(in prior communications with AOL’s
counsel in July 2001, Respondent
claimed that he already had spent 3 years “developing the infrastructure and
technology”, that “the building for the enterprise is nearing completion and we
are planning to move in shortly”, and that he was planning to quit his current
job to “spearhead the venture.”).
Almost five years later, there is still no credible evidence that Respondent has been working in good faith to
develop its on-line video service. See Franzus Co. v. Cotner, FA 125365
(Nat. Arb. Forum Nov. 7, 2002) (determining that after the respondent’s passive
holding of the disputed domain name for five years, its “unsupported,
self-serving allegations alone are insufficient to establish that Respondent
has rights or legitimate interests in respect of the domain name at issue”); see also AT&T Corp. v. Domains by Brian
Evans, D2000-0790 (WIPO Sept. 27, 2000) (finding no rights or legitimate
interests where the respondent alleged that it intended to use the domain name
<attweb.com> for a company called “At the Web” but failed to provide any
evidence as to the existence of the company); see also LFP, Inc. v. B &
J Props., FA 109697 (Nat. Arb. Forum May 30, 2002) (recognizing that in
certain instances excusable delays will inevitably arise, but noting that those
delays must be quantifiable and limited; they cannot extend indefinitely). Under the
circumstances, the Panel concludes that no such plans ever existed and that the
domain name was registered as part of a cybersquatting scheme. Respondent
has not met its burden pursuant to Policy ¶ 4(a)(ii).
The uncontroverted evidence of record shows that, at least as early as 1993, Respondent was an AOL subscriber and used the e-mail address wwwAnil@aol.com. As an AOL subscriber, Respondent must have had actual knowledge of Complainant’s rights and services, including the online video services, at the time the domain name was registered. Respondent’s registration of the confusingly similar domain name with actual knowledge of Complainant’s rights in the mark is evidence of bad faith registration 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 Respondent reasonably should have been aware of 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 Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant’s mark and the content advertised on the respondent’s website was obvious, the respondent “must have known about the Complainant’s mark when it registered the subject domain name”).
Nor is there any
doubt on the question of whether Respondent used the domain name in bad
faith. The evidence shows both that Respondent used <aolvideo.com>
in connection with a commercial web site to divert traffic from AOL and, to a
lesser degree, that Respondent sought to sell the domain name for profit.
The evidence shows that Respondent used the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith use 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 Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”). Because internet users may become confused as to Complainant’s sponsorship of or affiliation of Respondent’s website, the Panel finds that such evidence lends further support to a finding of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”); see also Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the 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 the complainant is the source of or is sponsoring the services offered at the site). Considering the undisputed credible evidence, the Panel finds that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
If believed,
Complainant’s evidence of Registrant’s intent
to sell the disputed domain name may serve as additional proof of bad faith
registration and use pursuant to Policy ¶ 4(b)(i). See Bank of Am. Corp. v.
Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003)
(“Respondent's general offer of the disputed domain name registration for sale
establishes that the domain name was registered in bad faith under Policy ¶
4(b)(i).”); see also Am. Online, Inc. v.
Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16,
2000) (finding bad faith where the respondent offered domain names for sale); see also Marrow v. iceT.com, D2000-1234
(WIPO Nov. 22, 2000) (stating that a panel should not “put much weight on the
fact that it was the Complainant who contacted Respondent to see if it was
interested in selling the domain name”).
Because the Panel already concludes the Complainant has met its
burden of proving bad faith registration and use, we need not resolve the
question of whether Respondent’s willingness to sell the domain name proves bad
faith.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED. Accordingly, it is Ordered that the <aolvideo.com>
domain name be TRANSFERRED from
Respondent to Complainant.
Hon. Nelson A.
Diaz (Ret.), Hon. James A. Carmody
(Ret.) and David Sorkin , Panelists
Dated: March 22, 2006
Click Here to return
to the main Domain Decisions Page.
Click
Here to return to our Home Page
National
Arbitration Forum