AOL LLC v. Craig Butler
Claim Number: FA0606000733440
PARTIES
Complainant is AOL LLC (“Complainant”), represented by James R. Davis, of Arent Fox PLLC, 1050 Connecticut Avenue, NW, Washington, DC 20036. Respondent is Craig Butler (“Respondent”), 16004 Mariners Dr., Huntington Beach, CA 92649.
The domain names at issue are <aolanswers.com>, <aolanswer.com>
and <answersaol.com>, registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.
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.
Hugues G. Richard as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on June 16, 2006; the National Arbitration Forum received a hard
copy of the Complaint on June 19, 2006.
On June 18, 2006, Melbourne It, Ltd. d/b/a Internet Names Worldwide
confirmed by e-mail to the National Arbitration Forum that the <aolanswers.com>, <aolanswer.com>
and <answersaol.com> domain names are registered with Melbourne
It, Ltd. d/b/a Internet Names Worldwide and that the Respondent is the current
registrant of the name. Melbourne It,
Ltd. d/b/a Internet Names Worldwide has verified that Respondent is bound by
the Melbourne It, Ltd. d/b/a Internet Names Worldwide 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 19, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of July 10, 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@aolanswers.com, postmaster@aolanswer.com and postmaster@answersaol.com by
e-mail.
A Response was received on July 10, 2006; however, the Panel considers
this Response to be deficient pursuant to ICANN Rule #5 (a), as the Response
was not received in electronic format by the Response deadline. However, despite this deficiency, the Panel
has decided to accept this Response and to take it into consideration.
On June 16, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Hugues G. Richard as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant is the owner of numerous trademark registrations for the mark AOL, including U.S. trademark registrations Nos. 1,977,731 and 1,984, 337. Complainant also owns federal trademark registration Nos. 2,325,291 and 2,325,292 for the mark AOL.COM.
Complainant uses its mark AOL.COM in connection with the official AOL Internet Web site. The mark AOL is used extensively at this Web site, which is a significant method of promoting AOL's service. As a result, consumers associate the mark AOL, when used in a domain name, with AOL's services.
Complainant submits that many years
after AOL's adoption and first use of its mark, Respondent registered the
domain names “AOLanswers.com” “AOLanswer.com”
“AnswersAOL.com” with a bad faith intent to profit from the registration
and use of the domains.
According
to Complainant, Respondent’s actions are a clear and blatant violation of AOL’s
intellectual property rights.
Respondent’s bad faith actions demonstrate an utter disregard and
contempt for Complainant’s legal rights and ICANN’s Uniform Domain Name Dispute
Resolution Policy.
Complainant contends that the domain names “AOLanswers.com” “AOLanswer.com” “AnswersAOL.com” are nearly identical and confusingly similar to the AOL and AOL.COM marks.
According to Complainant, consumer confusion is particularly likely given that the domain names use the AOL mark in connection with the generic word “answer(s)” to provide a service whereby users pay a fee to get an answer to a question.
According to Complainant, the AOL component of the domain names serves as the sole distinctive element of the domain names, and consumers that see the domain names are likely to be misled into believing the underlying services are endorsed by or affiliated with AOL.
By using the famous AOL mark in this manner, Respondent clearly is attempting to profit from the AOL name and mark and confuse and mislead consumers.
According to Complainant, Respondent has no rights or legitimate interests in the infringing domain. Respondent (Craig Butler) is not named or commonly known as AOL, nor is he licensed or authorized to use the AOL mark.
Complainant further contends that Respondent registered and uses the infringing domains with a bad faith intent to capitalize on AOL’s famous names and marks, and profit from the international and domestic goodwill AOL has created in its famous marks.
The following evidence was provided by Complainant to evidence of Respondent’s bad faith registration and use of the domains:
(a) Respondent’s bad faith registration of “AOLanswer.com” “AOLanswers.com” and “AnswersAOL.com” is evidenced by the fact that the domains were registered during a two-day period in December 2005, many years after the AOL Marks had become famous and well-known to consumers. See Annex E for Whois Records and compare to dates of first use and registration set forth in Exhibits B and C. The AOL mark had been registered for many years before the subject domain name was registered, and Respondent is deemed to have at least had constructive knowledge of AOL’s rights as set forth in those registrations. Respondent registered the domain names solely for the purposes of selling them and profiting from the consumer confusion caused by the unauthorized commercial use of the AOL mark. Such actions constitute a bad faith registration and use of the domain names.
(b) Respondent’s bad faith use of the domains is demonstrated by the commercial
services and content provided at the subject Web sites. See Annex G. Respondent’s use of the AOL mark in domain names that route unassuming consumers to a commercial Web sites violates Policy ¶ 4(b)(iv) and constitutes a bad faith use of the domains.
(c) Respondent’s bad faith intent and use of the domains is shown by the fact that
Respondent has offered to sell the domain names for $54,000. See Annex F. By attempting to sell the infringing domain name for an amount that far exceeds the actual registration costs, Respondent has violated Policy ¶ 4(b)(i).
(d) AOL attempted to settle this matter amicably by contacting the registrant and seeking a transfer of the domain names. See Annex H. Respondent, however, refused to cooperate or cease using the AOL mark.
(e) Respondent’s bad faith registration and use of the domains is shown by numerous prior UDRP decisions stating that the use of the AOL mark in this manner is a violation of ICANN’s rules. See, e.g., Am. Online, Inc. v. Cucamonga Elec. Corp., FA 103364 (Nat. Arb. Forum Feb. 26, 2002) (“in this age it is not a coincidence when a firm uses the acronym AOL in any new setting. In the absence of a credible explanation, I will infer that its purpose is to mislead Internet users into thinking that whatever activities are carried on on the site, AOL Inc. has some connection with them.”); see also Am. Online, Inc. v. Viper, D2000-1198 (WIPO Nov. 28, 2000) (“it is well past the day when Internet users would not make the assumption that use of AOL as part of a domain name links that site in the mind of the user to Complainant.”). Respondent similarly is using the famous AOL mark to promote and operate a commercial Web site solely so that Respondent can benefit from the international goodwill and fame AOL has created in its AOL mark. See Am. Online, Inc. v. USACOOP.COM, FA 105763 (Nat. Arb. Forum Apr. 10, 2002) (bad faith registration and use of “aolmalls.com” despite claim that AOL is an acronym for Americans On Line Malls); see also Am. Online, Inc. v. Grandtotal Finances8Ltd., FA 250749 (Nat. Arb. Forum May 25, 2004) (“xxxaol.com” transferred); see also Am. Online, Inc., v. Yeteck Commc’n, Inc., D2001-0055 (Nat. Arb. Forum Apr. 23 2001) (respondent held to have acted in bad faith despite claims that “aolcasino.com” was an acronym for “Adults On Line Casino”); see also Am. Online, Inc. v. E. Coast Exotics, D2001-0661 (WIPO July 10, 2001) (bad faith registration and use despite respondent’s claim that AOL is an acronym for “Amateurs On Line”).
(f) Respondent’s bad faith intent is further demonstrated by the fact that Respondent owns and/or owned numerous similar domain names that infringe upon famous marks, including Google and Yahoo. See Annex I. This pattern of cybersquatting violates Policy ¶ 4(b)(ii).
(g) Based upon (1) the fame of the AOL marks; (2) AOL’s trademark registrations;
(3) Respondent’s use of the domain names to route to commercial Web sites; (4)
Respondent’s attempts to sell the domain names; and (5) Respondent’s bad faith pattern of infringing upon famous marks; Respondent cannot in good faith claim that he had no knowledge of AOL’s rights in its very famous AOL marks. Furthermore, Respondent cannot claim in good faith that he made a legitimate noncommercial or fair use of the subject domains, or that he is commonly known as AOL. 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 (evidence of trademark registrations is included under Annex B). 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” (emphasis added) and “telecommunications services, namely electronic transmission of data, images, and documents via computer terminals; electronic mail services; and facsimile transmission.”
B. Respondent
Respondent submits that <aolanswers.com>, <aolanswer.com> and <answersaol.com> was
purchased by him.
Respondent contends that because he owns the site that his domain names
refer to, he can do as he chooses.
According to Respondent, Complainant has had many years to purchase
these sites and has only become interested now that the ‘answers business’ is
getting a lot of press and profit. According to Respondent, the fact that
Complainant was not paying attention to trends, is its fault alone.
Respondent contends that he has disclaimers listed on the front page of
his site.
Respondent asserts that the sell price that he set of $54,000 was fair
as the sites disputed are a source of income.
Respondent reached this number by multiplying the income from answering
questions which is, to date, two hundred (200) a month and adds forty (40),
which is what he receives from Google for advertisements by twelve (12) months
to have the yearly total. Respondent then multiplies the yearly total by thirty
(30) because, according to Respondent, he is presently forty six years old and
will likely be working for another thirty years.
Respondent believes that $54,000 thousand is not an exorbitant amount.
Respondent contends AOL does not own a small Brazilian web site <aol.com.bz> as they lost that case. Additionally, AOL also lost the case with <Nudescape.com> where AOL claimed it was infringing on its Netscape Trademark.
Finally, Respondent admits that he is profiting from the international
and domestic goodwill Complainant has created in its famous marks but contends
that profit is the ultimate goal in business and therefore his acts are not
illegal.
FINDINGS
After consideration of the foregoing, the
undersigned panelist finds as follows:
1)
The domain
names registered by Respondent are confusingly similar to the trademark in
which Complainant has rights.
2)
Respondent has
no right or legitimate interests in respect of the domain name.
3)
The domain name
has been registered and is being used in bad faith.
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.
To satisfy this element, Complainant must
prove that it has rights in the trademark and that the domain name is identical
or confusingly similar to the trademark.
Complainant submits extrinsic evidence to support that it has establised
rights in the AOL mark through registrations with the United States Patent and
Trademark Office (“USPTO”) (Reg. No. 1,977,731 and 1,984,337 which were both
registered in 1996). See 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); see also Planetary
Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the
effective date of Complainant’s trademark rights date back to the application’s
filing date). For these reasons, the Panel concluded that Complainant has established rights in the AOL
mark through its trademark registrations with the USPTO.
Complainant’s rights in the mark predate the registration of Respondent’s registration of the <aolanswers.com>, <aolanswer.com> and <answersaol.com> domain names on December 14, 2005.
The Panel finds that Respondent’s domain names <aolanswers.com>, <aolanswer.com> and <answersaol.com> are confusingly
similar to the AOL mark because the disputed domain names contain Complainant’s
AOL mark in its entirety, adds a common term, either “answer” or “answers,” and
adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that the addition of a generic term, such as
“answer” or “answers,” and a gTLD is insufficient to differentiate the disputed
domain names from Complainant’s mark.
Accordingly, the Panel finds
that the disputed domain names are confusingly similar to Complainant’s AOL
mark for the purposes of Policy ¶ 4(a)(i). In Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum
Oct. 24, 2003), the domain name <novelsolutions.com> was found to be
confusingly similar to the NOVELL mark despite the addition of the descriptive
term “solutions”. In this proceeding, even though the word “solutions” is
descriptive when used for software, Respondent had used this word paired with
the complainant’s trademark NOVELL. Also, in Oki Data Ams., Inc. v. ASD
Inc., D2001-0903 (WIPO Nov. 6, 2001), it was decided that “the fact that a
domain name wholly incorporates a Complainant’s registered mark is sufficient
to establish identity or confusing similarity for purposes of the Policy
despite the addition of other words to such marks.” For these reasons, the Panel finds that Respondent’s domain name
does not incorporate a distinguishing term to Complainant’s AOL mark that would
differentiate it from the Complainant’s.
Consequently and due to the fact that the
famous and distinctive mark AOL 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, the Panel is satisfied that
Complainant has, for the purposes of Policy ¶ 4(a)(i) established trademark
rights in the trademark AOL and that the domain names <aolanswers.com>, <aolanswer.com> and <answersaol.com> are confusingly similar to Complainant’s
trademark. Therefore, the Complainant meets the requirement of Policy ¶
4(a)(i).
As for the
second element of Policy ¶ 4(a),
Complainant must first make a prima
facie case that Respondent lacks rights and legitimate interest in the
disputed domain names under Policy ¶ 4(a)(ii) before the burden shifts to
Respondent to show that it does have rights or legitimate interests. See 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).”); see
also 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”).
Policy ¶ 4(c) states that any of the following
circumstances, in particular but without limitation, if found by the Panel to
be proved based on its evaluation of all evidence presented, shall demonstrate
Respondent’s rights or legitimate interests to the domain name for purposes of
Policy ¶ 4(a)(ii):
(i) before any notice to you of the dispute, your use
of, or demonstrable preparations to use, the domain name or a name
corresponding to the domain name in connection with a bona fide offering of
goods or services; or
(ii) you (as an individual, business, or other
organization) have been commonly known by the domain name, even if you have
acquired no trademark or service mark rights; or
(iii)
you are making a legitimate non commercial or fair use of the domain name, without intent for commercial gain to
misleadingly divert consumers or to tarnish the trademark or service mark at
issue.
Complainant alleges that Respondent is not commonly known by the disputed domain names, because the registrant listed in the WHOIS database for the disputed domain names is “Craig Butler,” and there is no other evidence in the record to show that Respondent is commonly known by the disputed domain names.
Subsequently, the
Panel finds that Respondent is not commonly known by the disputed domain names
and lacks rights and legitimate interests in the disputed domain names pursuant
to 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
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.”).
Complainant
contends that Respondent was using the disputed domain names to direct Internet
users to a website where they could request research and answers to submitted
questions for a nominal fee. The Panel finds that such a use of the disputed
domain names is neither a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial use pursuant to
Policy ¶ 4(c)(iii) because they contain Complainant’s mark in its entirety and
divert Internet users to Respondent’s commercial website, which is unrelated to
Complainant’s website. See 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 ¶ 4(a)(ii).”); see also Seiko Kabushiki Kaisha v. CS into Tech,
FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking
for products relating to the famous SEIKO mark, to a website unrelated to the
mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i),
nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Complainant asserts and provides extrinsic evidence that Respondent offered to sell the disputed domain names to Complainant for $54,000. The Panel finds that Respondent’s offer to sell the disputed domain names demonstrates Respondent’s lack of rights and legitimate interests in the disputed domain names. See Drown Corp. v. Premier Wine & Spirits, FA 616805 (Nat. Arb. Forum Feb. 13, 2006) (finding that the respondent’s offer to sell the domain name for $100,000 was evidence that respondent lacked rights and legitimate interests pursuant to Policy ¶ 4(a)(ii)); see also Am. Int’l Group, Inc. v. Dobson, FA 146568 (Nat. Arb. Forum Apr. 8, 2003) (finding evidence that the respondent lacked rights or legitimate interests in the disputed domain name after it sent several correspondences offering to sell its rights in the domain name in exchange for 1,500 shares of the complainant’s stock to the complainant).
In conclusion, the Panel finds that Complainant has satisfactorily met
its burden as to the second element of Policy ¶ 4(a), and finds that Respondent has no rights or
legitimate interests in the domain names in dispute.
Policy ¶ 4(b) states that the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that
you have registered or you have acquired the domain name primarily for the
purpose of selling, renting, or otherwise transferring the domain name
registration to the complainant who is the owner of the trademark or service
mark or to a competitor of that complainant, for valuable consideration in
excess of your documented out-of-pocket costs directly related to the domain
name; or
(ii) you have registered the domain
name in order to prevent the owner of the trademark or service mark from
reflecting the mark in a corresponding domain name, provided that you have
engaged in a pattern of such conduct; or
(iii) you have registered the domain
name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you
have intentionally attempted to attract, for commercial gain, Internet users to
your web site or other on-line location, by creating a likelihood of confusion
with the complainant's mark as to the source, sponsorship, affiliation, or
endorsement of your web site or location or of a product or service on your web
site or location.
Complainant has provided extrinsic evidence that Respondent offered to
sell the disputed domain names to Complainant for a sum of $54,000. Respondent asserts that the offer to sell
the domain names fairly reflects the profit he will earn over the next 30
years. The Panel finds that Respondent
acted in bad faith as defined in Policy ¶ 4(b)(i) by offering to sell the
confusingly similar domain names for an amount in excess of documented
out-of-pocket expenses. See Neiman Marcus Group, Inc. v. AchievementTec, Inc., FA 192316 (Nat. Arb. Forum Oct. 15, 2003) (finding the
respondent’s offer to sell the domain name for $2,000 sufficient evidence of
bad faith registration and use under Policy ¶ 4(b)(i)); see also Kabushiki
Kaisha Hitachi Seisakusho (Japan Corp.) v. Fortune Int’l Dev. Ent. Co.,
D2000-0412 (WIPO July 2, 2000) (finding the respondent’s offer to sell the
domain name for $100,000 constitutes bad faith).
Complainant asserts that Respondent registered
and is using the disputed domain names to provide a service that competes with
Complainant’s computer services.
Complainant’s AOL mark is registered for use in connection with computer
services, including “computerized research and reference materials.” The Panel finds that Respondent’s use of the
confusingly similar domain names to redirect Internet users to its own
competing business website constitutes disruption and evidences bad faith
pursuant to Policy ¶ 4(b)(iii). See EthnicGrocer.com, Inc. v. Latingrocer.com,
FA 94384 (Nat. Arb. Forum July 7, 2000) (finding bad faith where the
respondent’s sites pass users through to the respondent’s competing business); see
also Puckett, Individually v. Miller,
D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted
business from the complainant to a competitor’s website in violation of Policy
¶ 4(b)(iii)).
Complainant contends that Respondent is using the
confusingly similar domain names to attract Internet users to its website for
commercial gain. Complainant also
contends the confusingly similar nature of the disputed domain names will cause
a likelihood of confusion as to Complainant’s sponsorship of or affiliation
with the resulting website.
Accordingly, the panel finds that Respondent’s registration and use of
the disputed domain names constitutes bad faith under Policy ¶ 4(b)(iv). See Gardens Alive, Inc. v. D&S Linx,
FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (“Respondent registered and used the
<my-seasons.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii)
and (iv) because Respondent is using a domain name that is confusingly similar
to the MYSEASONS mark for commercial benefit by diverting Internet users to the
<thumbgreen.com> website, which sells competing goods and services.”); see
also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002)
(finding that if the respondent profits from its diversionary use of the
complainant's mark when the domain name resolves to commercial websites and the
respondent fails to contest the complaint, it may be concluded that the
respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).
Accordingly, the Panel finds that the third
element of Policy ¶ 4(a) 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 <aolanswers.com>, <aolanswer.com>
and <answersaol.com> domain names be TRANSFERRED from
Respondent to Complainant.
Hugues G. Richard, Panelist
Dated: July 25, 2006
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