AOL LLC v. Todd Charske
Claim Number: FA0609000808063
Complainant is AOL LLC (“Complainant”), represented by James R. Davis, of Arent Fox PLLC, 1050 Connecticut Avenue, NW, Washington, DC 20036. Respondent is Todd Charske (“Respondent”), 2760 Corlington Drive, Kettering, OH 45440.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The domain names at issue are <aolrealestate.net> and <aol-realestate.net>, registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.
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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 28, 2006; the National Arbitration Forum received a hard copy of the Complaint on September 29, 2006.
On October 2, 2006, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the <aolrealestate.net> and <aol-realestate.net> domain names are registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that Respondent is the current registrant of the names. 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 October 2, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 23, 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@aolrealestate.net and postmaster@aol-realestate.net by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 27, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) as Panelist.
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 <aolrealestate.net> and <aol-realestate.net> domain names are confusingly similar to Complainant’s AOL mark.
2. Respondent does not have any rights or legitimate interests in the <aolrealestate.net> and <aol-realestate.net> domain names.
3. Respondent registered and used the <aolrealestate.net> and <aol-realestate.net> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, AOL LLC, is one of the world’s largest Internet service providers and operates the most widely-used interactive online service in the world. Since as early as 1989, Complainant has continuously used the AOL mark in connection with a wide variety of computer services, including computer bulletin boards, computer networks and computerized research and reference materials. Complainant also provides online real estate services at the <realestate.aol.com> domain name.
Complainant has registered the AOL mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,977,731 issued June 4, 1996; Reg. No. 1,984,337 issued July 2, 1996).
Respondent’s domain names, which were registered on September 29, 2005, each resolve to Respondent’s commercial real estate website. When Complainant contacted Respondent about the disputed domain names, Respondent asked Complainant to provide it with free Internet services or advertising space in exchange for the transfer of the disputed domain name registrations.
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’s trademark registration for the AOL mark with the USPTO is sufficient for Complainant to establish rights in the mark 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 Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world).
Respondent’s <aolrealestate.net>
and <aol-realestate.net>
domain names contain Complainant’s entire registered AOL mark and merely add
the term “real estate,” a service Complainant provides. The <aol-realestate.net>
domain name also adds a hyphen. These
alterations do not sufficiently distinguish the disputed domain names from
Complainant’s mark. Therefore, the
Panel finds the <aolrealestate.net>
and <aol-realestate.net>
domain names to be confusingly similar to the AOL mark pursuant to Policy ¶
4(a)(i). See Disney v. McSherry, FA 154589 (Nat. Arb. Forum June 17, 2003)
(finding the <disneyvacationvillas.com> domain name to be confusingly
similar to Complainant’s DISNEY mark because it incorporated Complainant’s
entire famous mark and merely added two terms to it); see also Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095
(WIPO May 7, 2002) (finding that several domain names incorporating the
complainant’s entire EXPERIAN mark and merely adding the term “credit” were
confusingly similar to the complainant’s mark).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant has alleged that Respondent lacks rights and legitimate interests in the disputed domain names. Complainant has the initial burden of proof in establishing that Respondent lacks rights or legitimate interests in the domain names. Once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights to or legitimate interests in the disputed
domain names. See Geocities v. Geocities.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); see
also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's
failure to respond not only results in its failure to meet its burden, but also
will be viewed as evidence itself that Respondent lacks rights and legitimate
interests in the disputed domain name.”). However, the Panel will now examine the
record to determine if Respondent has rights or legitimate interests under
Policy ¶ 4(c).
Respondent has registered the <aolrealestate.net > and <aol-realestate.net>
domain names as “Todd Charske,” and there is no other evidence in the record
suggesting that Respondent is commonly known by the disputed domain name. Consequently, Respondent has not established
rights or legitimate interests in the disputed domain name pursuant to Policy ¶
4(c)(ii). 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 M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335
(Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly
known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii)
based on the WHOIS information and other evidence in the record).
Furthermore, Respondent’s domain names, which are confusingly similar to Complainant’s AOL mark, each resolve to Respondent’s real estate website. In Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003), the respondent registered <seiko.net>, which was identical to the complainant’s SEIKO mark, and was redirecting Internet users to a third-party website unrelated to the mark. The panel stated that “[d]iverting 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).” Therefore, Respondent’s use of the disputed domain name to intentionally divert Internet users seeking Complainant’s products and services under the AOL mark to its own website for commercial gain does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the domain name pursuant to 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).”).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
In correspondence with Complainant, Respondent indicated
that it would transfer the disputed domain names to Complainant if Complainant
provided Respondent with premium Internet services. The Panel finds that Respondent’s request for non-monetary
consideration in exchange for the <aolrealestate.net>
and <aol-realestate.net>
domain names constitutes bad faith under Policy ¶ 4(b)(i). See
Gutterbolt, Inc. v. NYI Bldg. Prods. Inc., FA 96076 (Nat. Arb. Forum Dec.
29, 2000) (finding that the consideration demanded in exchange for a domain
name registration does not have to be monetary in nature to run afoul of Policy
¶ 4(b)(i), but can be anything of value that exceeds the amount spent in
registering and maintaining the domain name);
see also Metallica v. Schnieder, FA 95636 (Nat. Arb. Forum Oct. 18, 2000)
(finding bad faith pursuant to Policy ¶ 4(b)(i) where the respondent offered to
transfer the disputed domain name registration in return for non-monetary
consideration such as a face to face meeting with the complainant, phone calls
from the complainant to two of the respondent’s friends, and an interview).
Moreover, Respondent has
registered and used the domain name for the primary purpose of disrupting
Complainant’s business, because the contested domain names each resolve to
Respondent’s real estate website.
Complainant also provides real estate services under its AOL mark. As a result, the Panel finds that Respondent
has registered and is using the disputed domain names in bad faith under Policy
¶ 4(b)(iii). See Lubbock Radio
Paging v. Venture Tele-Messaging, FA 96102 (Nat. Arb. Forum Dec. 23, 2000)
(concluding that domain names were registered and used in bad faith where the
respondent and the complainant were in the same line of business in the same
market area); see also Classic Metal
Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1,
2006) (finding that the respondent
registered and used the <classicmetalroofing.com> domain name in bad
faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the
respondent’s competing website).
In addition, Respondent is using the disputed domain names, which include Complainant’s AOL mark, to redirect Internet users seeking Complainant’s real estate services to its own commercial real estate website. In Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000), the panel found that the respondent’s use of the <identagene.com> domain name, which was confusingly similar to the complainant’s IDENTIGENE mark, to operate a website offering Internet users similar services as Complainant constituted bad faith registration and use because it was likely to cause consumer confusion as to the source or sponsorship of the services offered at the domain name. Likewise, Respondent is taking advantage of consumer confusion as to the source, affiliation, sponsorship or endorsement of the disputed domain names and profiting from the goodwill associated with the AOL mark. The Panel finds that Respondent’s registration and use of the <aolrealestate.net> and <aol-realestate.net> domain names constitutes bad faith pursuant to Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
The Panel concludes that Complainant has 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 <aolrealestate.net> and <aol-realestate.net> domain names be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: November 10, 2006
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