AOL LLC v. Web Master
Claim Number: FA0607000747966
Complainant is AOL LLC (“Complainant”), represented by James R. Davis, II of Arent Fox PLLC, 1050 Connecticut Avenue, NW, Washington, DC 20036. Respondent is Web Master (“Respondent”), 4132 S. Rainbow Blvd, #494, Las Vegas, NV 89103.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <aoldialer.com> and <aimphone.com>, registered with Enom, Inc.
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.
Honorable Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 12, 2006; the National Arbitration Forum received a hard copy of the Complaint on July 13, 2006.
On July 17, 2006, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <aoldialer.com> and <aimphone.com> domain names are registered with Enom, Inc. and that Respondent is the current registrant of the names. 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 ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On July 20, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 9, 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@aoldialer.com and postmaster@aimphone.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 14, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) as Panelist.
Respondent filed a request that it be allowed additional time to respond to the Complaint. The request did not meet the requirements of NAF Supp Rule 6 for an extension and the request was denied by the Panel by an Order dated August 21, 2006.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <aoldialer.com> and <aimphone.com> domain names are confusingly similar to Complainant’s AOL or AIM marks.
2. Respondent does not have any rights or legitimate interests in the <aoldialer.com> and <aimphone.com> domain names.
3. Respondent registered and used the <aoldialer.com> and <aimphone.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, AOL LLC, a global leader in the computer, entertainment and online services industry, holds numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”), including the AOL (Reg. No. 1,977,731 issued June 6, 1996) and the AIM (Reg. No. 2,423,368 issued January 23, 2001) marks.
Respondent registered the <aoldialer.com> domain name on May 16, 2002 and the <aimphone.com> domain name on May 19 2002. The disputed domain names resolve to websites that display hyperlinks and advertisements to various third-party companies.
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 draw such inferences it 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 that 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 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.
Complainant has successfully established rights in the AOL
and AIM marks through registration of the marks with the USPTO. See Men’s Wearhouse, Inc. v. Wick, FA
117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered
marks hold a presumption that they are inherently distinctive [or] have
acquired secondary meaning.”); see also 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.”).
Complainant alleges that the <aoldialer.com>
and <aimphone.com> domain names are confusingly similar to its
registered marks. For the purposes of
Policy ¶ 4(a)(i), the Panel finds that domain names that contain a registered
mark in its entirety and add a generic term, such as “dialer” or “phone,” are
confusingly similar to the mark contained therein. Accordingly, the Panel finds that the <aoldialer.com>
domain name is confusingly similar to Complainant’s AOL mark and the <aimphone.com>
domain name is confusingly similar to Complainant’s AIM 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 Am.
Online, Inc. v. Oxford Univ., FA 114654 (Nat. Arb. Forum Aug. 21, 2002)
(the panel concluded that the addition of generic or descriptive terms, such as
“prime,” did not create distinct marks for the purposes of Policy ¶ 4(a)(i)).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Pursuant to Policy ¶ 4(a)(ii), the Complainant holds the initial burden to establish a prima facie case that Respondent does not have rights or legitimate interests in the disputed domain names. If Complainant successfully establishes such a case, the burden shifts to Respondent to show that it does have rights or legitimate interest in the disputed domain names. 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 once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”).
Respondent did not submit a Response in this dispute. Such a failure to Respond to the Complaint may be construed as an admission that Respondent lacks rights and legitimate interests in the disputed domain names. See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that the respondent has no rights or legitimate interests in the domain name because the respondent never submitted a response or provided the panel with evidence to suggest otherwise). The Panel, however, chooses to evaluate the record to determine if Respondent has rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c).
The only evidence in the record dealing with the identity of
Respondent is from the WHOIS database.
The detailed records from the WHOIS database show that the registrant of
the disputed domain names is listed as “Web Master” with a contact address of
“domains@polymaster.com.” Because there
is no evidence in the record to suggest otherwise, the Panel must rule that
Respondent is not commonly known by either of the disputed domain names. See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan.
23, 2001) (finding that the respondent does not have rights in a domain name
when the respondent is not known by the mark); see also 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).
Furthermore, the disputed domain
names resolve to websites that display hyperlinks and advertisements to
various third-party companies. The
Panel finds Respondent’s use of disputed domain names that are confusingly
similar to Complainant’s marks for the purpose of diverting Internet users to
an array of advertisements for various third-party companies does not qualify
as a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a
legitimate noncommercial use under Policy ¶ 4(c)(iii). 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 Tercent Inc. v. Lee Yi, FA
139720 (Nat. Arb. Forum Feb. 10, 2003) (holding that the respondent’s use of
the disputed domain name to host a series of hyperlinks and a banner
advertisement was neither a bona fide offering of goods or services nor
a legitimate noncommercial or fair use of the domain name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent registered and used the disputed domain names in bad faith. Due to the fact that Respondent’s use of the domain names was to direct Internet users to an array of advertisements, the Panel may reasonably infer that Respondent is receiving commercial benefits for doing so. Further, due to the confusingly similar nature of the disputed domain names to Complainant’s marks, the Panel finds that it is likely that there will be consumer confusion as to Complainant’s sponsorship of or affiliation with the resulting websites. In accordance with the precedent findings, the Panel rules that Respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iv). See Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that the respondent’s registration of an infringing domain name to redirect Internet users to banner advertisements constituted bad faith use of the domain name); see also State Fair of Tex. v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where the respondent registered the domain name <bigtex.net> to infringe on the complainant’s goodwill and attract Internet users to the respondent’s website).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <aoldialer.com> and <aimphone.com> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: August 21, 2006
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