DECISION

 

AOL Media LLC v. Polyakov Andrey

Claim Number: FA2403002088052

 

PARTIES

Complainant is AOL Media LLC ("Complainant"), represented by Griffin Barnett of Perkins Coie LLP, District of Columbia, USA. Respondent is Polyakov Andrey ("Respondent"), Ukraine.

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <aolapphub.com>, <aol-computer.net>, <aol-desktop-app.com>, <aoldl.com>, <aol-free.net>, <aol-free.org> and <aol-pc.net>, registered with NameCheap, Inc.

 

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.

 

Paul M. DeCicco, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on March 12, 2024; Forum received payment on March 12, 2024.

 

On March 12, 2024, NameCheap, Inc. confirmed by e-mail to Forum that the <aolapphub.com>, <aol-computer.net>, <aol-desktop-app.com>, <aoldl.com>, <aol-free.net>, <aol-free.org> and <aol-pc.net> domain names are registered with NameCheap, Inc. and that Respondent is the current registrant of the names. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

 

On March 13, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 2, 2024 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@aolapphub.com, postmaster@aol-computer.net, postmaster@aol-desktop-app.com, postmaster@aoldl.com, postmaster@aol-free.net, postmaster@aol-free.org and postmaster@aol-pc.net. Also on March 13, 2024, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts.

 

Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.

 

On April 3, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Paul M. DeCicco as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant contends as follows:

 

Complainant is the current owner of the AOL trade and service mark. AOL, originally known as America Online, is a well-known brand in the United States and worldwide, due to its contribution to the rapid expansion of the Internet since 1989, providing Internet access and email services to households around the world before the advent of broadband cable internet.

 

AOL owns numerous United States and foreign registrations for the AOL mark in connection with such offerings dating back to as early as 1996.

 

Respondent's at-issue domain names are each confusingly similar to Complainant's AOL trademark. Each domain name contains the AOL mark and the inclusion of descriptive terms and a generic top-level domain, neither of which diminishes the domain names confusing similarity with a complainant's mark.

 

Respondent lacks rights and legitimate interests in respect of each of the at-issue domain names. Complainant has not authorized or licensed Respondent to use any of its trademarks in any way. Respondent is not commonly known by any at-issue domain name or any name containing Complainant's AOL mark. Respondent's actions are not a bona fide offering of goods or services, nor is Respondent engaged in a legitimate noncommercial or fair use of the domain names. Instead, Respondent uses the at-issue domain names to redirect users to websites passing themselves off as official websites associated with Complainant and purporting to provide downloads of Complainant's AOL software and other goods and services relating to Complainant's AOL brand. Complainant's strong trademark rights in AOL preclude Respondent from have rights or legitimate interests in the at-issue domain names.

 

Respondent registered and used the at-issue domain names in bad faith. Respondent was aware of Complainant and its trademark prior to registering the at-issue domain name. It is impossible to conceive of any potential legitimate use of the at-issue domain names as the Respondent is using a trademark in its domain names that has a strong reputation and is widely known. Respondent's registration of multiple domain names incorporating the AOL mark illustrates a pattern of bad faith registration and use under the Policy and further Respondent has lost more than 30 prior UDRP cases, including a prior case brought by Complainant. Respondent's failure to respond to Complainant's demand letter and use of a proxy service is further evidence of Respondent's bad faith registration and use of the domain names.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant has rights in the AOL trademark.

 

Respondent is not affiliated with Complainant and had not been authorized to use Complainant's trademark in any capacity.

 

Respondent registered the at‑issue domain names after Complainant acquired rights in the AOL trademark.

 

Respondent uses the at-issue domain names to address websites that pass themselves off as official websites associated with Complainant and purport to provide downloads of Complainant's AOL software and other goods and services relating to the AOL brand.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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 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.

 

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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) ("Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint.").

 

Identical and/or Confusingly Similar

The at-issue domain names are each confusingly similar to a trademark in which Complainant has rights.

 

Complainant demonstrates rights in the AOL mark pursuant to Policy ¶ 4(a)(i) through its registration of AOL with multiple trademark agencies around the world, including the USPTO. See Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sep. 4, 2018) ("Complainant has rights in the GMAIL mark based upon its registration of the mark with numerous trademark agencies around the world."); see also Bloomberg Finance L.P. v. Jimmy Yau, FA 1764034 (Forum Jan. 25, 2018) ("The Panel finds that complainant has rights in BLOOMBERG mark under Policy ¶ 4(a)(i) based upon its registration with multiple trademark agencies, including the USPTO.").

 

Respondent's at-issue domain names each contain Complainant's AOL trademark followed various generic terms some including a hyphen. The domain names conclude with the ".com," ".net" or the ".org" top-level. The differences between Respondent's domain names and Complainant's trademark are insufficient to distinguish any of the domain names from Complainant's AOL mark for the purposes of Policy ¶ 4(a)(i). Therefore, the Panel concludes that Respondent's at-issue domain names are each confusingly similar to Complainant's AOL trademark. See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) ("Where a relevant trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.").

 

Rights or Legitimate Interests

Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant's prima facie showing acts conclusively.

 

Respondent lacks both rights and legitimate interests in respect of each at-issue domain name. Respondent is not authorized to use Complainant's trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of any at‑issue domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) ("lack of evidence in the record to indicate a respondent is authorized to use [the] complainant's mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)").

 

The WHOIS information for the at-issue domain names ultimately identifies the domain names' registrant as "Polyakov Andrey" and the record before the Panel contains no evidence tending to prove that Respondent is commonly known by any of the domain names or by Complainant's trademark. The Panel therefore concludes that Respondent is not commonly known by the any of the at-issue domain names for the purposes of Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).

 

Respondent uses the confusingly similar domain names to address websites that purport to provide downloads of AOL software as well as offer other goods and services relating to the AOL trademark. Respondent's use of the confusingly similar domain names in this manner indicates neither a bona fide offering of goods or services under Policy ¶ 4 (c)(i), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) ("Respondent uses the [disputed] domain name to divert Internet users to Respondent's website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).").

 

Given the forgoing, Complainant satisfies its initial burden and demonstrates Respondent's lack of rights and lack of interests in respect of each at-issue domain names under Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

As discussed below without limitation, bad faith circumstances are present which lead the Panel to conclude that Respondent acted in bad faith regarding each of the at-issue domain names.

 

First, the Panel takes note that Respondent has suffered numerous adverse UDRP decisions as a respondent. Respondent's former UDRP involvement suggests Respondent's bad faith in the instant case under Policy ¶ 4(b)(ii). See Tommy John, Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1878688 (Forum Feb. 6, 2020) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants). Respondent's pattern of domain name abuse is further played out in the instant dispute by Respondent's multiple registrations of domain names containing Complainant's AOL trademark. See United States Postal Service v. Yongkun Wang, FA 1788170 (Forum July 11, 2018) ("Complainant contends that Respondent is a serial cybersquatter as evidenced by its registering four separate domain names all incorporating Complainant's USPS mark. Therefore, the Panel finds that the Respondent registered and is using the disputed domain names in bad faith under Policy ¶ 4(b)(ii).").

 

Next, Respondent uses of the at-issue domain names to attempt to pass itself off as Complainant and offer services related to Complainant, ostensibly for Respondent's gain. Respondent's use of the at-issue domain names in this manner shows Respondent's bad faith under Policy ¶ 4(b)(iv). See Yahoo Inc. v. Polyakov Andrey, FA 2063795 (Forum Oct. 20, 2023) ("The Panel finds that the disputed domain names resolve to websites, which purport to provide downloads of AOL software as well as other goods and services relating to Complainant's AOL offerings, including misdirecting users seeking genuine AOL software downloads to various other unauthorized third-party software download sites. The use of a disputed domain name to pass off as Complainant and to offer competing services and/or goods is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).").

 

Moreover, Respondent had actual knowledge of Complainant's rights in the AOL mark when it registered <aolapphub.com>, <aol-computer.net>, <aol-desktop-app.com>, <aoldl.com>, <aol-free.net>, <aol-free.org> and <aol-pc.net> as a domain names. Respondent's actual prior knowledge of Complainant's AOL trademark is evident from the notoriety of Complainant's mark and from Respondent's use of the domain names to pose as Complainant and offer services that relate to AOL. Respondent's registration and use of the confusingly similar domain names with knowledge of Complainant's rights in AOL further shows Respondent's bad faith registration and use of the at-issue domain names under the Policy. See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name); see also, Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).

 

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 <aolapphub.com>, <aol-computer.net>, <aol-desktop-app.com>, <aoldl.com>, <aol-free.net>, <aol-free.org> and <aol-pc.net> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

Paul M. DeCicco, Panelist

Dated: April 3, 2024