DECISION

 

America Online, Inc. v. Enas Ragland d/b/a ABBN

Claim Number: FA0602000639002

 

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 Enas Ragland d/b/a ABBN (“Respondent”), 2220 Bell Avenue, Huntsville, AL 35816.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <baol.us>, registered with Enom, Inc.

 

PANEL

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.

 

Mark McCormick as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on February 3, 2006; the Forum received a hard copy of the Complaint on February 6, 2006.

 

On February 3, 2006, Enom, Inc. confirmed by e-mail to the Forum that the domain name <baol.us> is registered with Enom, Inc. and that the 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 the U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).

 

On February 9, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 1, 2006 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).

 

A timely Response was received and determined to be complete on March 1, 2006.

 

On March 8, 2006, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Mark McCormick as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

Complainant alleges it has established rights in the AOL mark through federal trademark registrations as well as use.  Complainant contends that Respondent’s <baol.us> domain name is confusingly similar to Complaint’s registered mark.  It contends that the addition of the letter “b” plus the “.us” does not change the fact that the <baol.us> domain name is confusingly similar to the Complainant’s mark. 

 

Complainant contends that Respondent’s domain name is not being used either for a bona fide offering of goods or services or for a legitimate non-commercial or fair use.  Complainant alleges Respondent is using the domain name to take advantage of AOL’s mark by diverting internet users to Respondent’s commercial site.  Complainant also contends that Respondent is commonly known by the <baol.us> domain name for purposes of Policy ¶ 4(c)(ii). 

 

Complainant contends Respondent is using the domain name in bad faith in an effort to provide users with internet services in competition with Complainant’s services and causes confusion among internet users that may lead them to believe Complainant is associated with Respondent’s website.

 

B. Respondent

Respondent does not dispute the similarity of his domain name and Complainant’s mark. 

 

Respondent contends that it is making legitimate use of its <baol.us> domain name because it reflects the name of its business, Blackamerica Online, Inc.  Respondent asserts that it is making a bona fide offering of goods and services and asserts it has been developing this business since 1993.  Respondent contends he is commonly known by the disputed domain name. 

 

Respondent contends because he has rights and interests in his domain name Complainant cannot establish bad faith.  Respondent also contends that he seeks the patronage of a niche market promoting black history, culture and heritage and is not doing so in bad faith. 

 

C. Additional Submissions

None.

 

FINDINGS

Complainant has established rights in the AOL mark through registration with the United States Patent and Trademark Office.  Respondent acknowledges there is a similarity between Complainant’s mark and Respondent’s domain name, and the Panel finds there is a similarity. 

 

Complainant owns the marks America Online, AOL, AOL.com and numerous other marks that incorporate AOL, including AOL Black Voices, AOL Live!, Love at AOL, AOL Banking Center, AOL Games, AOL Rewards and AOL Insider.  The marks are used in connection with providing services and information on the internet.  Complainant also owns trademark registration for the marks America Online and Buddy List.  Respondent is using the <baol.us> domain name to operate a website that offers services similar to those of Complainant except that they are devoted mainly to black entertainment, history or culture.  Respondent adopted the domain name many years after Complainant’s registrations in order to take advantage of the similarity of names in order to direct internet users to its website.  Respondent is not commonly known by the disputed domain name nor is Respondent licensed to register domain names using the AOL mark. 

 

Respondent’s use of the disputed domain name may cause confusion among internet users as to Complainant’s sponsorship of or affiliation with Respondent’s website and business.  It seems clear that Respondent adopted the domain name in order to take advantage of the similarity in names to cause a user to believe that the Complainant is the source of or is sponsoring the services offered at Respondent’s website. 

 

DISCUSSION

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.”

 

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 or is being used in bad faith.

 

Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.

 

Identical and/or Confusingly Similar

Respondent’s domain name <baol.us> is confusingly similar to Complainant’s AOL mark.  The addition of the letter “b” and the use of “.us” are not sufficient to distinguish Respondent’s domain name from Complainant’s mark pursuant to Policy ¶ 4(a)(i).  See Am. Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000).

 

Rights or Legitimate Interests

Respondent has failed to meet his burden of proof to show that he has rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  Respondent’s purpose is to take advantage of the confusing similarity of the domain name to Complainant’s mark in order to divert internet users to his competing commercial website.  This is not a bona fide offer of goods or services.  See Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002).  Moreover, Respondent is not commonly known by the <baol.us> for purposes of Policy paragraph 4(c)(ii).  See Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003). 

 

Registration and Use in Bad Faith

No doubt exists that Respondent’s use of the disputed domain name may cause confusion among internet users as to Complainant’s sponsorship of or affiliation with Respondent’s website and business.  This is evidence 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).  Respondent has even used Complainant’s mark Buddy List which is identical to another of Complainant’s registered marks.  The bottom line is that Complainant has established that Respondent’s purpose in registering the disputed domain name is to mislead internet users into thinking that AOL had some connection with the services offered on Respondent’s website.  See Am. Online, Inc. v. Viper¸ WIPO Case D2000-1198. 

 

DECISION

It is ordered that Respondent’s <baol.us> domain name registration be transferred to Complainant. 

 

Mark McCormick, Panelist
Dated:  March 21, 2006