AOL LLC v. Maher Osseiran d/b/a Arabian Virtual Village, LLC
Claim Number: FA0607000758794
PARTIES
Complainant is AOL LLC (“Complainant”), represented by James R. Davis, II, of Arent Fox PLLC, 1050 Connecticut Avenue, NW, Washington, DC 20036. Respondent is Maher Osseiran d/b/a Arabian Virtual Village, LLC. (“Respondent”), 92 Blanket Meadow Road, Monroe, CT 06468.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The domain names at issue are <theunaol.com>, <theunaol.net>, <theunaol.org>, <unaol.net> and <unaol.org>, registered with Names4Ever, http://www.names4ever.com.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
PROCEDURAL
HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 25, 2006; the National Arbitration Forum received a hard copy of the Complaint on July 27, 2006.
On July 27, 2006, Names4Ever, http://www.names4ever.com confirmed by e-mail to the National Arbitration Forum that the <theunaol.com>, <theunaol.net>, <theunaol.org>, <unaol.net> and <unaol.org> domain names are registered with Names4Ever, http://www.names4ever.com and that the Respondent is the current registrant of the names. Names4Ever, http://www.names4ever.com has verified that Respondent is bound by the Names4Ever, http://www.names4ever.com 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 31, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 21, 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@theunaol.com, postmaster@theunaol.net, postmaster@theunaol.org, postmaster@unaol.net and postmaster@unaol.org by e-mail.
A timely Response was received and determined to be complete on August 21, 2006.
On August 28, 2006, Complainant filed a timely Reply.
On August 28, 2006, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
RELIEF
SOUGHT
Complainant requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following assertions:
Respondent’s <theunaol.com>, <theunaol.net>, <theunaol.org>, <unaol.net> and <unaol.org> domain names are confusingly similar to Complainant’s AOL and AOL.COM marks. Respondent does not have any rights or legitimate interests in the disputed domain names. Respondent registered and used the disputed domain names in bad faith.
B. Respondent
Respondent argues that while Complainant does hold trademark registrations for the AOL and AOL.COM marks, those registrations do not encompass the lowercase versions of those marks, “aol” and “aol.com”. Respondent further contends that Complainant has exhibited a distinctive way of incorporating its mark into domain names, specifically it separates its mark from other term by periods, for example <my.aol.com>, <search.aol.com>, <news.aol.com> and <aol.musicnow.com>. Respondent argues that by combining “aol” directly with the terms “un” and “theun” it has created domain names that are distinct from Complainant’s marks. Respondent also offers evidence that the phrase “unaol” is commonly used on the Internet as both a verb, as in “to unaol a computer,” and an adjective, as in “an unaol site.” Respondent contends that such common usage makes its domain names distinct from Complainant’s marks. Respondent uses the terms “un” and “theun” to mean “the opposite of”.
Even if the Complainant has rights to “aol”, Respondent would still be able to use the disputed domain names as suggestive terms citing Coca-Cola v. Seven-Up Co., 497 F. 2d 1351 (C.C.P.A. 1974) pertaining to “the Uncola.”
Respondent asserts that it has at no time attempted to sell, rent or transfer the disputed domain names. Respondent further asserts that its registration of the disputed domain names in no way prevents Complainant from registering domain names including its mark. Respondent lists numerous domain names registered to Complainant, which include Complainant’s mark. Respondent also reiterates its argument that Complainant has a specific way of reflecting its mark in domain names, specifically between two periods, for example <my.aol.com>, and that Respondent’s domain names are distinct from Complainant’s pattern and would not be useful to Complainant.
Respondent does not promote services that are similar to Complainant’s. The Internet access services are not at the core of either “theunaol” domain names nor “thedemocracyworkshop” domain names. Internet access is limited to a specific segment of the population that agrees with certain political principals and views and is made available to them so that they could fully benefit from an Internet community that can only be described as a first amendment protected community. Internet access is not advertised or promoted to the general public.
At the present, the only domain name that is in use by Respondent is “theunaol”, with its various extensions, where the Respondent posts investigative articles and analysis he believes would never be found on media outlets such as CNN and AOL/Time Warner Company.
Respondent claims that its websites connected to the disputed domain names are a legitimate exercise of its First Amendment rights. Respondent claims its websites are subtle critiques of Complainant. For example, Respondent claims that it uses its websites to post investigative reporting and analysis that cannot be found through large media outlets, such as Complainant. Further, Respondent indicates that an article specifically about Complainant’s business practices is planned. Respondent also asserts that it added a disclaimer to its websites in order to ensure that Internet users would understand that it was not affiliated with Complainant.
Respondent argues that its use of the disputed domain names has not been in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent is not operating its websites for commercial gain. Respondent asserts that it is not advertising or promoting its ISP services to the general public, that they are instead intended as an extension of Respondent’s First Amendment rights, and they are not the primary purpose of the websites. Respondent also characterizes the donations solicited on its websites as no different from donations to political parties or causes. Other services are offered in case an individual prefers to support in a different way. Thus, Respondent claims it is not operating commercial websites and did not register, and is not using, the disputed domain names in bad faith.
The Internet access services provided by “thedemocracyworkshop” are an extension of a first amendment website and not the primary purpose of the website. Internet access is a mean to allow a segment of the population, who agrees with the description of the Internet community, easier and fuller access to that Internet community that has a specific political agenda.
The <theunaol.com>, <theunaol.net>, <theunaol.org>, <unaol.net> and <unaol.org> domain names are not domain names that fit within the way AOL uses its trademark and as such cannot be mistaken as an AOL website. Respondent contends that AOL LLC is a cybersquatter who registers potential first amendment domain names and allows them to fall into disuse.
C. Additional Submissions
In its Reply, Complainant contends that (1) AOL and aol are functionally equivalent, nearly identical and confusingly similar, (2) AOL is not a generic word, (3) distinguished the cited 1974 CCPA (Coca-Cola) case.
FINDINGS
Complainant owns the marks AOL, AOL.COM and numerous other marks that incorporate AOL. The marks are used in connection with, among other things, providing services and general interest information on the Internet. Long prior to Respondent’s registration of the disputed domain names, 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.
AOL has invested substantial sums of money in developing and marketing its services and marks. With tens of millions of subscribers, AOL operates the most widely-used interactive online service in the world and each year millions of AOL customers worldwide obtain services offered under the AOL and AOL.COM marks; millions more are exposed to said marks through advertising and promotion. Because of substantial advertising expenditures and sales, the distinctive AOL and AOL.COM marks have become very well-known and famous among members of the purchasing public.
Respondent is using the domain names with a website that solicits money from users, provides ISP services under the mark MyDemocracy.net, and otherwise provides information, articles and news concerning a variety of issues. Respondent also uses the AOL domain names to promote his own website, “TheDemocracyWorkshop.com.” Respondent uses the AOL mark in domain names that route consumers to a commercial website that provides services that compete with AOL’s. Respondent’s site makes no reference to AOL, and does not provide a parody, critique or other commentary on AOL or its services. Rather, Respondent uses the disputed domain names to route to a site that asks for monetary donations and requests visitors to “consider purchasing the services that have subsidized this website since day one.”
After settlement negotiations, Respondent ultimately just added a disclaimer at the top of
the website and claimed that would be sufficient to address AOL’s concerns.
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.
Although the National
Arbitration Forum received Respondent’s electronic submission in a timely
manner, Respondent failed to submit a hard copy of its Response by the
deadline. Therefore, the Panel has sole
discretion as to whether to accept the response as well as the amount of weight
given to the response. See Telstra Corp. v. Chu, D2000-0423 (WIPO
June 21, 2000). In Shedrick v.
Princeton, FA 236575 (Nat. Arb. Forum Apr. 2, 2004), the panel found that
since the respondent’s failure to send its electronic submission in a timely
manner had an insignificant impact on the proceeding, the panel accepted the
respondent’s response. See also Gaiam, Inc. v. Nielsen, FA 112469
(Nat. Arb. Forum July 2, 2002) (the panel held that, “in the interest of having
claims decided on the merits and not by default and because Complainant has not
been prejudiced in the presentation of its case by the late submission,
Respondent’s opposition documents are accepted as timely.”). The Panel finds that Respondent’s late
submission of the hard copy of its Response did not impact the proceedings in
any significant way. The Panel will
consider Respondent’s submission.
Complainant has established rights through registration with the United States Patent and Trademark Office (“USPTO”) of the AOL (Reg. No. 1,977,731 issued June 4, 1996; Reg. No. 1984,337 issued July 2, 1996) and AOL.COM (Reg. No. 2,325,291 issued March 7, 2000; Reg. No. 2,325,292 issued March 7, 2000) marks. Previous panels have found consistently that registration of a mark with the USPTO establishes the complainant’s rights in that mark pursuant to Policy ¶ 4(a)(i). For example, in Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004), the panel found that, “registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.” Similarly, in Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) the panel held that, “complainant's federal trademark registrations establish complainant's rights in the BLIZZARD mark.” Complainant’s rights in the AOL and AOL.COM marks were established well before Respondent registered the disputed domain names on June 27, 2003. Thus, the Panel finds that Complainant has established rights in the AOL and AOL.COM marks as required by Policy ¶ 4(a)(i).
Respondent’s <theunaol.com>,
<theunaol.net>, <theunaol.org>, <unaol.net>
and <unaol.org> domain names are confusingly similar to
Complainant’s AOL and AOL.COM marks.
All of the disputed domain names include Complainant’s AOL mark in its
entirety, and the <theunaol.com> domain name includes
Complainant’s AOL.COM mark in its entirety.
In Nikon, Inc. v. Technilab, Inc., D2000-1774 (WIPO Feb. 26, 2001), the panel found
confusing similarity based on the inclusion of the complainant’s mark in the
domain name and found that the Policy did not require that a domain name meet
the likelihood of confusion test under U.S. trademark law. The panel in Oki Data Ams., Inc. v. ASD,
Inc., D2001-0903 (WIPO Nov. 6, 2001), explicitly stated that, “[T]he fact
that a domain name wholly incorporates a Complainant’s registered mark is
sufficient to establish identity [sic] or confusing similarity for purposes of
the Policy despite the addition of other words to such marks.” Thus, the Panel finds that the disputed
domain names are confusingly similar to Complainant’s marks based upon the
inclusion of Complainant’s marks alone.
However, Complainant adds that Respondent has affixed the terms “theun”
and “un” to Complainant’s marks, as well as adding various top-level domains,
such as “.net” and “.org.” Such minor
alterations do not overcome the confusing similarity between the disputed
domain names and Complainant’s marks.
In Koninklijke Philips Elecs. v. Kang, D2001-0163 (WIPO Mar. 27,
2001), the panel evaluated the confusing similarity of the
<antiphilips.com> domain name to the complainant’s PHILIPS mark and found
that, “the addition of the ‘anti’ does nothing to deflect the impact on the
viewer of the mark… the addition of the prefix ‘anti’ is a crude attempt to
tarnish the mark.” Similarly, in Broadcom
Corp. v. Lee, FA98071 (Nat. Arb. Forum Aug. 21, 2001), the panel held that
“respondent cannot escape a finding of confusing similarity by adding the
generic ‘anti’ prefix to complainant’s mark.”
While Respondent chose to use the “un” and “theun” prefixes instead of
the “anti” prefix, the Panel finds that the meaning of the prefixes is similar,
and thus Respondent cannot overcome the confusing similarity between its domain
names and Complainant’s mark through the addition of such negative
prefixes. Further, previous panels have
consistently held that the addition of generic terms or top-level domains to
the complainant’s mark does not overcome the confusing similarity between the
disputed domain name and the complainant’s mark. 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 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). Thus, the Panel finds that Respondent’s
domain names are confusingly similar to Complainant’s marks pursuant to Policy
¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent lacks rights or legitimate interests in the disputed domain names. The Panel finds that Complainant has established a prima facie case, shifting the burden to Respondent to demonstrate that it does have rights or legitimate interests 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 is using the disputed domain names to redirect Internet users to Respondent’s websites. Respondent is using its websites to solicit donations, to post advertisements, to provide news and information services and to offer ISP services as well as to promote Respondent’s other website located at the <thedemocracyworkshop.com> domain name. Respondent is profiting from its diversionary use of the disputed domain names by collection donations and advertising revenue. In Amer. Online, Inc. v. Apocalypse Studios, FA 101828 (Nat. Arb. Forum Dec. 26, 2001), the panel evaluated a similar situation in which the respondent used the disputed domain name to run a website soliciting ‘donations’ from visitors, though there was no evidence that the respondent was in any way involved with a charitable organization. The panel in America Online found that “respondent’s declared use of the domain name to detract users from complainant’s site in order to profit from users’ ‘donations’ is not a legitimate use under the Policy.” In Bank of Am. Corp. v. Out Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003), the panel declined to find rights or legitimate interests where the respondent used the disputed domain name to divert Internet users to the respondent’s website featuring advertisements, which presumably generated revenue for the respondent. Since Respondent’s usage of the disputed domain names is similar to that in America Online and Bank of Am. Corp., the Panel finds that Respondents is engaged in neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
Respondent’s
addition of a disclaimer to its website does not endow Respondent with rights
or legitimate interests in the disputed domain names. Previous panels have found that disclaimers do not create
legitimate rights or interests in a disputed domain name, as disclaimers are
not available to Internet users until they have already been redirected to the
respondent’s website. See
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); see
also Las Vegas Sands, Inc. v. Red Group, D2001-1057 (WIPO Dec. 6, 2001)
(justifying the conclusion that the respondent wishes to trade on the fame of
the complainant’s trademark, regardless of the presence of a small-print
disclaimer that is unavailable to Internet users until they have already
entered the gambling site, because the disclaimer fails to remedy initial
confusion). Thus, the Panel considers
Respondent’s disclaimer as further evidence that Respondent lacks rights or
legitimate interests in the disputed domain names.
Respondent is not commonly known by the disputed domain names as contemplated by Policy ¶ 4(c)(ii). Respondent’s WHOIS information identifies Respondent as “Maher Osseiran,” a name unrelated to the disputed domain names. Respondent is not licensed or sponsored by Complainant and has no authorization from Complainant to use Complainant’s mark in a domain name. Respondent lacks rights or legitimate interests pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating Anothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest 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).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(ii) because Respondent has exhibited a pattern of behavior by registering five domain names including Complainant’s marks. In Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000), the panel found that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii). Similarly, in EPA European Pressphoto Agency B.V. v. Wilson, D2004-1012 (WIPO Feb. 9, 2005), the panel found that the respondent’s registration of the <epa-photo.com>, <epaphoto.com> and <epaphotos.com> domain names was sufficient to constitute a pattern pursuant to Policy ¶ 4(b)(ii). In those cases, the panels determined that it was sufficient for the respondent to register multiple domain names containing the mark of one complainant to find evidence of bad faith registration and use. Thus, the Panel finds that Respondent’s registration of five domain names containing Complainant’s mark is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(ii).
Respondent is using the disputed domain names to redirect Internet users to Respondent’s websites for Respondent’s financial benefit. Once Internet users are redirected to Respondent’s websites, Internet users may be confused as to the source or affiliation of the website, perhaps mistakenly believing that Complainant sponsors Respondent’s website. Respondent is benefiting financially from this confusion by collecting advertising revenue from banner advertisements as well as funds from soliciting ‘donations.’ In State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000), the panel found that respondent had registered and was using the disputed domain name in bad faith because the confusingly similar domain name infringed on the good will of the complainant and attracted Internet users to the respondent’s website. Thus, even though Respondent is not using the disputed domain names to redirect Internet users to a strictly commercial website, the Panel finds evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv) based on Respondent’s use of confusingly similar domain names to attract Internet users to websites which generate revenue and solicit ‘donations.’
Respondent had constructive knowledge in Complainant’s AOL and AOL.COM marks because Complainant’s well-known and famous marks were registered with the USPTO years before Respondent registered the disputed domain names. In Victoria’s Cyber Secret Ltd. v. V Secret Catalogue, Inc., 161 F.Supp.2d 1339, 1349 (S.D.Fla. 2001), the court held that “a Principal Register registration [of a trademark or service mark] is constructive notice of a claim of ownership so as to eliminate any defense of good faith adoption.” The Panel finds that Respondent’s registration and use of the confusingly similar disputed domain names despite knowledge of Complainant’s rights in the marks is evidence of bad faith registration and use. See Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO, a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof.”); see also Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.”).
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 <theunaol.com>, <theunaol.net>, <theunaol.org>, <unaol.net> and <unaol.org> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: September 11, 2006
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