AOL LLC v. iTech Ent, LLC c/o Joaquin Rams
Claim Number: FA0606000726227
PARTIES
Complainant is AOL LLC (“Complainant”), represented by James R. Davis, of Arent Fox PLLC, 1050 Connecticut Avenue, NW, Washington, DC 20036. Respondent is iTech Ent, LLC c/o Joaquin Rams (“Respondent”), represented by Jerome H. Gress, of Law Office of Jerome H. Gress, P.O. Box 66, Lovingston, VA 22949.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <theotheraol.com>
and <theotheraol.net>, registered with Register.Com, Inc.
PANEL
The undersigned certifies that he has acted independently and
impartially and to the best of his knowledge has no known conflict in serving
as Panelist in this proceeding.
James A. Carmody, Esq., as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on June 5, 2006; the National Arbitration Forum received a hard
copy of the Complaint on June 6, 2006.
On June 6, 2006, Register.Com, Inc. confirmed by e-mail to the National
Arbitration Forum that the <theotheraol.com>
and <theotheraol.net> domain names are registered with Register.Com,
Inc. and that the Respondent is the current registrant of the name. Register.Com, Inc. has verified that
Respondent is bound by the Register.Com, 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 June 13, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of July 3, 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@theotheraol.com and postmaster@theotheraol.net by
e-mail.
A timely Response was received and determined to be complete on July 3,
2006.
On July 11, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed James A. Carmody, Esq., as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following assertions:
1. Respondent’s <theotheraol.com> and <theotheraol.net> domain names are confusingly similar to Complainant’s AOL mark.
2. Respondent does not have any rights or legitimate interests in the <theotheraol.com> and <theotheraol.net> domain names.
3. Respondent registered and has used the domain names at issue in bad faith.
B. Respondent
Respondent defends on the grounds that the domain names at issue are
not identical or deceptively similar to Complainant’s AOL mark and,
accordingly, its use of the domain names is legitimate and not in bad faith.
FINDINGS
Complainant AOL LLC ("AOL") is the owner of numerous trademark registrations worldwide for the mark AOL, including U.S. trademark registration Nos. 1,977,731 and 1,984,337, which were registered on June 4, 1996, and July 2, 1996, respectively. AOL registered and uses its AOL mark in connection with, among other things:
“computer services, namely leasing access time to computer databases, computer bulletin boards, computer networks, and computerized research and reference materials, in the fields of business, finance, news, weather, sports, computing and computer software, games, music, theater, movies, travel, education, lifestyles, hobbies and topics of general interest; computerized dating services; computer consultation services; computerized shopping via telephone and computer terminals in the fields of computer goods and services and general consumer goods” and “telecommunications services, namely electronic transmission of data, images, and documents via computer terminals; electronic mail services; and facsimile transmission.”
Further, Complainant uses the mark AOL.COM in connection with the official AOL Internet Web site. AOL owns federal trademark registration Nos. 2,325,291 and 2,325,292 for the mark AOL.COM. As a result, consumers associate the mark AOL, when used in a domain name, with AOL's services.
Long prior to Respondent’s registration of <theotheraol.com> and <theotheraol.net>, and at least as early as 1989 for the mark AOL, and 1992 for the mark AOL.COM, AOL adopted and began using its marks in connection with computer online services and other Internet-related services. The distinctive AOL mark is used and promoted around the world in connection with providing a broad range of information and services over the Internet and at the proprietary AOL online system. AOL has used its famous and distinctive marks continuously and extensively in interstate and international commerce in connection with the advertising and sale of its Internet and computer-related services.
Respondent does not deny the bulk of Complainant’s allegations with respect to the AOL and AOL.COM marks but maintains that the domain names at issue are not confusingly similar but are in fact quite different from AOL’s domain names. The portion of the name before the extension contains 11 letters, of which only 3 are the same as the Complainant’s domain names. Respondent further states that anyone visiting the websites at the <theotheraol.com> or <theotheraol.net> domain names will encounter the following disclaimer:
This website has NO affiliation with America Online AOL LLC
In case there was any confusion with the statement above, we are NOT AOL, we are NOT affiliated with them, we are NOT the same company, we are NOT the same site, and we DON'T even market to the same people. If you have come to this site thinking we are America Online AOL LLC please leave because we are NOT America Online AOL LLC.
Respondent’s bad faith registration of the domain names “TheOtherAOL.com” and “TheOtherAOL.net” is evidenced by the fact that the domains were registered, respectively, on February 15, 2005, and December 19, 2005, many years after the AOL Marks had become famous and well-known to consumers. Moreover, Respondent uses an AOL e-mail address, which demonstrates that Respondent is an AOL subscriber with actual knowledge of AOL’s rights, marks and services. By choosing domain names that use the phrase “the other AOL,” and using a counterfeit image of the AOL RUNNING MAN logo, Respondent has demonstrated that it clearly had actual knowledge of the AOL mark and service when the domain names were registered. Respondent registered the domain names for the sole purpose of providing commercial pornographic online services under the AOL mark and profiting from the consumer confusion that would be created by this unauthorized use of the AOL mark. Such actions constitute a bad faith registration and use of the domain name.
There is no suggestion that Complainant has licensed its marks to Respondent or that Respondent is commonly known by either of the domain names at issue. Respondent is using the web sites associated with the domain name at issue to promote future content of an “adult” nature and the sites feature a distortion of Complainant’s AOL RUNNING MAN logo depicting a sex act.
The domain names at issue are nearly identical and are confusingly similar to the AOL and AOL.COM marks. Consumer confusion is particularly likely given that, by using the phrase “the other AOL,” the domain names falsely imply that the owner or its Web sites are affiliated with or endorsed by AOL. The domain names at issue are being used by Respondent in bad faith intent to capitalize on Complainant’s famous names and marks, and profit from the international and domestic goodwill AOL has created in its famous marks.
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.
Complainant’s
trademark registrations with the USPTO demonstrate its rights in the marks
pursuant to Policy ¶ 4(a)(i). See
Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006)
(“Complainant has established rights in the MICROSOFT mark through registration
of the mark with the USPTO.”); see also Intel Corp. v. Macare, FA 660685
(Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established
rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks
with the USPTO).
The
<theotheraol.com> and <theotheraol.net> domain names are confusingly
similar to Complainant’s AOL mark because the disputed domain names incorporate
the entire registered mark and merely add the terms “the” and “other.” The mere addition of common terms to
Complainant’s AOL mark does not sufficiently distinguish the domain names from
the mark and thus the <theotheraol.com>
and <theotheraol.net> domain names
are confusingly similar to Complainant’s AOL mark under Policy ¶ 4(a)(i). See 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); see also Am. Online, Inc. v.
Anytime Online Traffic Sch., FA 146930 (Nat. Arb. Forum Apr. 11, 2003)
(finding that the respondent’s domain names, which incorporated the
complainant’s entire mark and merely added the descriptive terms “traffic
school,” “defensive driving,” and “driver improvement” did not add any
distinctive features capable of overcoming a claim of confusing similarity).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
When a complainant makes a prima facie case that a respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), then the burden shifts to respondent to show it does have rights or legitimate interests. 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 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).”).
Respondent is not commonly known by
the <theotheraol.com> and <theotheraol.net> domain
names, because the WHOIS information lists the registrant of the domain names
as “iTech Ent, LLC,” and there is no other evidence in the record indicating
that Respondent is commonly known by the disputed domain names. Complainant has not authorized or licensed
Respondent to register or use domain names including any variation of its AOL
mark. Therefore, Respondent does not
have rights or legitimate interests in the domain names pursuant to Policy ¶
4(c)(ii). See Broadcom Corp. v. Intellifone Corp., FA
96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests
because the respondent is not commonly known by the disputed domain name or
using the domain name in connection with a legitimate or fair use); see also
Wells Fargo & Co. v. Onlyne Corp. Services11,
Inc., FA 198969 (Nat. Arb. Forum Nov. 17,
2003) (“Given the WHOIS contact information for the disputed domain [name], one
can infer that Respondent, Onlyne Corporate Services11, is not commonly known
by the name ‘welsfargo’ in any derivation.”).
The posting of a disclaimer does not grant Respondent
rights or legitimate interests in the <theotheraol.com> and <theotheraol.net>
domain names pursuant to Policy ¶ 4(a)(ii).
See AltaVista Co. v.
AltaVista, FA 95480 (Nat. Arb.
Forum Oct. 31, 2000) (finding that since a disclaimer does not, and could not,
accompany the domain name, then the “domain name attracts the consumer’s
initial interest and the consumer is misdirected long before he/she has the
opportunity to see the disclaimer”);
see also DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO
May 29, 2000) (finding that addition of a disclaimer, when the domain name
consists of the complainant’s well-known trademark, does not counter the
expectation of Internet users that the domain name is sponsored by the
complainant).
Accordingly, the Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
is diverting Internet users seeking Complainant’s computer online services
under the AOL mark to an adult-oriented website. Respondent is likely profiting from the goodwill associated with
the AOL mark. Therefore, Respondent is
taking advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and Complainant’s
AOL mark and such diversionary use for Respondent’s own commercial gain
suggests bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where the
respondent registered and used a domain name confusingly similar to the
complainant’s mark to attract users to a website sponsored by the respondent); see
also 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).
Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
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 <theotheraol.com>
and <theotheraol.net> domain names be TRANSFERRED from
Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: July 21, 2006
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