AOL LLC v. 4Media
Claim Number: FA0610000828947
PARTIES
Complainant is AOL LLC (“Complainant”), represented by James R. Davis, of Arent Fox PLLC, 1050 Connecticut Avenue, NW, Washington, DC 20036. Respondent is 4Media (“Respondent”), 17715 Breconwood Road, Wayzata, MN 55391.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <aoltones.com>,
registered with Go Daddy Software, Inc.
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.
David E. Sorkin as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on October 27, 2006; the National Arbitration Forum received a
hard copy of the Complaint on October 30, 2006.
On October 27, 2006, Go Daddy Software, Inc. confirmed by e-mail to the
National Arbitration Forum that the <aoltones.com>
domain name is registered with Go Daddy Software, Inc. and that the Respondent
is the current registrant of the name. Go
Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy
Software, 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 November 1, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of November 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@aoltones.com by e-mail.
A timely Response was received and determined to be complete on November
21, 2006.
On November 28, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed David E. Sorkin as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant is the owner of various trademarks consisting of or
incorporating the letters AOL, and contends that the disputed domain name <aoltones.com> is confusingly
similar to these marks. Complainant
further alleges that Respondent has no rights or legitimate interests in the
disputed domain name and that the domain name was registered and is being used
in bad faith. Complainant alleges that
the disputed domain name was registered long after Complainant’s marks became
famous, that Respondent registered the domain name to profit from consumer
confusion, that Respondent has used the domain name to link to a website that
sells cellular telephone ringtones in competition with Complainant, and that
Respondent has also registered other domain names that combine other well-known
trademarks with the word “tone” or variations thereof.
B. Respondent
Respondent does not dispute Complainant’s allegations as to trademark
rights, confusing similarity, or rights or legitimate interests. With regard to bad faith, Respondent submits
that it registered the domain name thinking that it “might be usable in the
future in conjunction with Respondent[’]s business.” Respondent states that it “has no use for the domain name” and
has attempted to transfer it to Complainant.
FINDINGS
The Panel finds that the disputed domain name
is confusingly similar to Complainant’s trademarks, that Respondent lacks
rights or legitimate interests in respect of the disputed domain name, and that
the disputed domain name was 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.
The only element on which Respondent has submitted any argument or
statement is the third one, bad faith (and, in particular, bad faith
registration). The Panel therefore
treats the first two elements as stipulated and addresses only the third.
Complainant contends that the disputed domain
name was registered and is being used in bad faith, and offers substantial
evidence in support of these contentions.
As to bad faith registration, Respondent’s claim that it thought the
domain name “might be usable in the future” is insufficient to rebut the strong
inference of bad faith that arises from the overwhelming circumstantial
evidence of Respondent’s intentions at the time it registered the domain name. As to bad faith use, the substantial and
unrebutted evidence offered by Complainant supports a finding of bad faith use
under ¶ 4(b)(iv) of the Policy.
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 <aoltones.com>
domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: December 8, 2006
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