AOL LLC v. mcmanus, e.k.
Claim Number: FA0705000991925
Complainant is AOL LLC (“Complainant”), represented by James
R. Davis, of Arent Fox PLLC,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <aol-icq.net>, registered with Network Solutions, 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 22, 2007; the National Arbitration Forum received a hard copy of the Complaint on May 23, 2007.
On May 23, 2007, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <aol-icq.net> domain name is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 May 29, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 18, 2007 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-icq.net by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 21, 2007, 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.
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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <aol-icq.net> domain name is confusingly similar to Complainant’s AOL and ICQ marks.
2. Respondent does not have any rights or legitimate interests in the <aol-icq.net> domain name.
3. Respondent registered and used the <aol-icq.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, AOL LLC is one of the world’s largest interactive online service providers. Complainant has used the AOL mark since 1989 in connection with its various online services, and the ICQ mark since 1996 in connection with its instant messaging networks. Complainant holds trademark registrations with the United States Patent and Trademark Office (“USPTO”) for both the AOL mark (Reg. No. 2,180,283 issued August 11, 1998) and the ICQ mark (Reg. No. 2,411,657 issued December 12, 2000).
Respondent registered the <aol-icq.net> domain name on July 14, 2006. Respondent’s disputed domain name resolves to a website containing advertisements and links to various third-party websites, some of which are in direct competition with Complainant’s business, along with links to websites containing adult-oriented content. Respondent’s website also contains complaints about and criticisms of Complainant, along with a disclaimer asserting that the website is not affiliated with Complainant in any way.
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.
The Panel finds that Complainant’s registration with the USPTO sufficiently establishes its rights in the AOL and ICQ marks pursuant to Policy ¶ 4(a)(i). 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.”).
Respondent’s <aol-icq.net>
domain name is confusingly similar to Complainant’s AOL and ICQ marks. The disputed domain name simply combines the
two marks, separating them with a hyphen.
Previous panels have found that combining two marks in which the complainant
has rights does not negate the confusing similarity of a corresponding domain
name, and neither does the addition of a hyphen. Moreover, the addition of the generic
top-level domain (“gTLD”) “.net” to the disputed domain name is irrelevant to
the Policy ¶ 4(a)(i) analysis as a top-level domain is a required element of all
domain names. Therefore, the <aol-icq.net> domain name is
confusingly similar to Complainant’s AOL and ICQ marks pursuant to Policy ¶
4(a)(i). See Nintendo of Am. Inc. v.
Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding confusing
similarity where respondent combined the complainant’s POKEMON and PIKACHU
marks to form the <pokemonpikachu.com> domain name); see also Health
Devices Corp. v.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Under Policy ¶ 4(a)(ii), Complainant has the initial burden of proving that Respondent lacks rights or legitimate interests in the <aol-icq.net> domain name. Once Complainant has made a prima facie case, however, the burden shifts to Respondent to prove that it does have rights or legitimate interests in the disputed domain name. In this case, the Panel finds that Complainant has made a prima facie case 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 Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Respondent’s failure to respond to the Complaint raises the presumption that Respondent lacks rights or legitimate interests in the <aol-icq.net> domain name. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”). Nevertheless, the Panel will now examine the record to determine if Respondent has rights or legitimate interests under Policy ¶ 4(c).
Respondent’s WHOIS information does not indicate that Respondent is commonly known by the <aol-icq.net> domain name, nor is there anything else in the record to suggest that Respondent is commonly known by the disputed domain name. Additionally, Complainant asserts that Respondent is not authorized or licensed to use Complainant’s AOL or ICQ marks and that Respondent is not associated with Complainant in any way. Thus, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing 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).
In addition, Respondent’s disputed domain name resolves to a
website which displays Complainant’s AOL mark in connection with complaints
about Complainant’s business. While
Respondent has the right to post content critical of Complainant, previous
panels have found that respondents do not have the right to infringe on a
complainant’s mark in making those criticisms.
The Panel finds that Respondent is capitalizing on the consumer
recognition of Complainant’s AOL mark in criticizing Complainant, which
indicates that Respondent lacks rights or legitimate interests in the disputed
domain name under Policy ¶ 4(a)(ii). See Name.Space
Inc. v. Network Solutions, Inc., 202 F.3d 573, 585 (2d Cir. 2000)
(finding that although the content of the respondent’s site may be entitled to
First Amendment protection, the respondent’s use of the complainant’s trademark
in the domain name of its site is not protected.); see also E. & J. Gallo Winery v. Hanna Law Firm, D2000-0615
(WIPO Aug. 3, 2000) (finding that establishing a legitimate free
speech/complaint site does not give rights to use a famous mark in its
entirety).
Respondent is using the <aol-icq.net>
domain name to redirect Internet users to a website containing links to
various third-party websites, some of which are in direct competition with
Complainant’s business, and some of which contain adult-oriented content. The Panel finds that Respondent’s various
uses of the disputed domain name, presumably for commercial gain, does not
constitute a bona fide offering of
goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair
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 Dipaolo v. Genero,
FA 203168 (Nat. Arb. Forum Dec. 6, 2003) (“Diversion to pornography is not a
bona fide offering of goods or services or a legitimate noncommercial or fair
use of the domain name pursuant to Policy ¶¶ 4(c)(i) and (iii).”).
The Panel finds that Policy ¶
4(a)(ii) has been satisfied.
The Panel infers that Respondent has registered and is using
the <aol-icq.net> domain name
to earn click-through fees by diverting Internet users to websites in direct
competition with Complainant’s business, along with websites displaying
adult-oriented content. Respondent is
therefore taking advantage of the likelihood that users will confuse the source
and affiliation of the disputed domain name with Complainant’s AOL and ICQ
marks. Thus, the Panel finds that
Respondent registered and is using the disputed domain name in bad faith
pursuant to Policy ¶ 4(b)(iv). See Bank
of Am. Corp. v.
Additionally, Respondent is infringing on Complainant’s AOL and ICQ marks in the <aol-icq.net> domain name in order redirect users to a website containing criticism of Complainant. This is further evidence that Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Diners Club Int’l, Ltd. v. Infotechnics Ltd., FA 169085 (Nat. Arb. Forum Aug. 20, 2003) (“Respondent’s registration and use of a domain name nearly identical to Complainant’s mark to criticize Complainant’s business practices is evidence of registration and use of the <diners-club.net> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).”); see also TM Acquisition Corp. v. S.E.A. Domains, FA 156800 (Nat. Arb. Forum June 12, 2003) (finding the respondent's use of the complainant's mark to redirect Internet users to a website dedicated to criticizing the complainant was evidence that the respondent’s domain names were registered and used in bad faith).
Respondent also includes a disclaimer on the website that
resolves from the <aol-icq.net> domain
name, which asserts that the website is not affiliated with Complainant in any
way. However, as the disclaimer is not
displayed on the main page of the website and users will still initially
confuse the disputed domain name as being affiliated with Complainant, the
disclaimer is not enough to mitigate the fact that Respondent registered and is
using the disputed domain name in bad faith pursuant to Policy ¶
4(a)(iii). 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 AltaVista Co. v. AltaVista,
FA 95480 (Nat. Arb. Forum Oct. 31, 2000) (finding that since a disclaimer does
not, and could not, accompany the domain name, then the “domain name attracts
the consumer’s initial interest and the consumer is misdirected long before
he/she has the opportunity to see the disclaimer”).
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 <aol-icq.net> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: June 26, 2007
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