AOL LLC v. Promex International
Claim Number: FA0606000738146
Complainant is AOL LLC (“Complainant”), represented by James R. Davis of Arent Fox PLLC, 1050 Connecticut Avenue, NW, Washington, DC, 20036. Respondent is Promex International (“Respondent”), PO Box 83-000, Johnsonville, Wellington 6004, NZ.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <aol-gay.com>, registered with Moniker Online Services, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically June 23, 2006; the National Arbitration Forum received a hard copy of the Complaint June 26, 2006.
On June 27, 2006, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <aol-gay.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. verified that Respondent is bound by the Moniker Online Services, Inc. registration agreement and thereby has 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 28, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 18, 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@aol-gay.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 25, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain name that Respondent registered, <aol-gay.com>, is confusingly similar to Complainant’s AOL.COM mark.
2. Respondent has no rights to or legitimate interests in the <aol-gay.com> domain name.
3. Respondent registered and used the <aol-gay.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, AOL, LLC, is a well-known provider of Internet-related services throughout the world. Complainant has used its numerous marks continuously and extensively in connection with the advertising and sale of its computer-related services. Complainant operates a website at <aol.com> and holds a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the AOL.COM mark (Reg. No. 2,325,291 issued March 7, 2000).
Respondent registered the <aol-gay.com> domain name April 30, 2006. This disputed domain name resolves to a website that displays commercial adult-oriented material that is available for purchase.
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 will draw such inferences as the Panel 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 Complainant to 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 federal trademark
registration with the USPTO sufficiently establishes Complainant’s rights in
the AOL.COM mark. 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 disputed domain name that Respondent registered, <aol-gay.com>, is confusingly similar to Complainant’s AOL.COM mark pursuant to Policy ¶ 4(a)(i) as it contains Complainant’s entire mark with the addition of a hyphen and the term “gay.” The Panel finds that such additions fail to negate the confusing similarity between Complainant’s mark and Respondent’s disputed domain name. See Sports Auth. Mich. Inc. v. Batu 5, FA 176541 (Nat. Arb. Forum Sept. 23, 2003) (“The addition of a hyphen to Complainant's mark does not create a distinct characteristic capable of overcoming a Policy ¶ 4(a)(i) confusingly similar analysis.”); see also 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).
The Panel finds that Complainant satisfied Policy ¶
4(a)(i).
Complainant established by extrinsic proof in this proceeding that Complainant has rights to and legitimate interests in the mark contained in its entirety within the disputed domain name. Complainant alleged that Respondent has no such rights and legitimate interests in the <aol-gay.com> domain name. Complainant must first make a prima facie case in support of its allegations, and the burden then shifts to Respondent to show it does have rights or legitimate interests in the <aol-gay.com> domain name 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 Woolworths plc. v. Anderson, D2000-1113 (WIPO Oct. 10, 2000) (finding that, absent evidence of preparation to use the domain name for a legitimate purpose, the burden of proof lies with the respondent to demonstrate that it has rights or legitimate interests).
Respondent’s failure to answer the Complaint raises the presumption that Respondent has no rights or legitimate interests in the <aol-gay.com> domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint.”). However, the Panel examines the record to determine if Respondent has any rights or legitimate interests under Policy ¶ 4(c).
Respondent’s WHOIS information shows that Respondent is not
commonly known by the disputed domain name and no evidence in the record
suggests that Respondent is or has ever been known by the disputed domain. In Compagnie
de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000), the
panel found no rights or legitimate interests 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.
See 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 Panel thus finds that Respondent
is not commonly known by the disputed domain name under Policy ¶ 4(a)(ii).
Furthermore, Respondent is using
the <aol-gay.com> domain name, which contains Complainant’s
entire mark, to operate a website featuring adult-orientated material. In Target Brands, Inc. v. Bealo Group
S.A., FA 128684 (Nat. Arb. Forum Dec. 17, 2002), the panel found that the
use of the <targetstore.net> domain
name to redirect Internet users to a pornographic website did not equate to a bona
fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use of a domain name under Policy ¶ 4(c)(iii). See Am. Online, Inc. v. Bates, FA 192595 (Nat. Arb. Forum Oct. 7, 2003) (“Attempts to
commercially benefit from a domain name that is confusingly similar to
another's mark by linking the domain name to an adult-oriented website [is]
evidence that the registrant lacks rights or legitimate interests in the domain
name.”). Accordingly, the Panel finds
that Respondent’s use of the disputed domain name to redirect Internet users to
adult-oriented material is neither a bona fide offering of goods and
services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use
under Policy ¶ 4(c)(iii).
The Panel finds that Complainant
satisfied Policy ¶ 4(a)(ii).
Complainant alleged that Respondent acted in bad faith in registering and using a domain name that includes Complainant’s protected mark without Complainant’s permission. The Panel finds that Respondent registered and is using the <aol-gay.com> domain name in bad faith because the disputed domain name resolves to adult-oriented content. See Wells Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (finding that the respondent’s tarnishing use of the disputed domain names to redirect Internet users to adult-oriented websites was evidence that the domain names were being used in bad faith); see also Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that absent contrary evidence, linking the domain names in question to graphic, adult-oriented websites is evidence of bad faith).
The Panel further finds that Respondent is operating the website that resolves from the disputed domain name for its own commercial gain, as the disputed domain name advertises the viewing of adult-oriented material that is available upon the purchase of a membership. Additionally, a likelihood of confusion is created by the use of the Complainant’s entire AOL.COM mark in the <aol-gay.com> domain name. In Youtv, Inc. v. Alemdar, FA 94243 (Nat. Arb. Forum Apr. 25, 2000), the panel found bad faith where the respondent attracted users to his website for commercial gain and linked his website to pornographic websites. See Nat’l Ass’n of Stock Car Auto Racing, Inc. v. RMG Inc – BUY or LEASE by E-MAIL, D2001-1387 (WIPO Jan. 23, 2002) (“[I]t is now well known that pornographers rely on misleading domain names to attract users by confusion, in order to generate revenue from click-through advertising, mouse-trapping, and other pernicious online marketing techniques.”). The Panel thus finds that Respondent’s use of the disputed domain name is evidence of bad faith registration and use under Policy ¶ 4(b)(iv).
The Panel finds that Complainant 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 <aol-gay.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: August 4, 2006.
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