National Arbitration Forum

 

DECISION

 

AOL LLC v. Jordan Gerberg

Claim Number: FA0608000780200

 

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 Jordan Gerberg (“Respondent”), PO Box 907, Laguna Beach, CA 92652.

 

 

REGISTRAR AND DISPUTED DOMAIN NAMES

 

The domain names at issue are <lotteryaol.com> and <lottoaol.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.

 

Kendall C. Reed as Panelist.

 

PROCEDURAL HISTORY

 

Complainant submitted a Complaint to the National Arbitration Forum electronically on August 17, 2006; the National Arbitration Forum received a hard copy of the Complaint on August 18, 2006.

 

On August 17, 2006, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <lotteryaol.com> and <lottoaol.com> domain names are 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 August 18, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 7, 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@lotteryaol.com and postmaster@lottoaol.com by e-mail.

 

 

A timely Response was received and determined to be complete on September 5, 2006.

 

On September 11, 2006, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Kendall C. Reed as Panelist.

 

RELIEF SOUGHT   

 

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

 

PARTIES’ CONTENTIONS

 

A.     Complainant

 

Complainant is the owner of numerous trademark registrations worldwide for the mark “AOL,” including United States registrations 1,984,337 and 1,977,731, and numerous trademark registrations worldwide for the mark “AOL.COM,” including United States registrations 2,325,291 and 2,325,292 (collectively “Complainant’s Marks).  These specific trademarks were registered before Respondent’s registration of its domain names that are the subject of this administrative action, which registrations are “lotteryaol.com” and “lottoaol.com” (collectively “Respondent’s Domain Names”).

 

Complainant’s trademark “AOL” is registered and used by it in connection with, among other things:

“Computer services, namely leasing access time to computer databases, computer bulletin boards, computer networks, and computerized research and reference materials, in the fields of business, finance, news, weather, sports, computing and computer software, games, music, theater, movies, travel, education, lifestyles, hobbies, and topic of general interest; computerized dating services; computer consultation services; computerized shopping via telephone and computer terminals in the fields of computer goods and services and general consumer goods” and

 

“Telecommunications services, namely electronic transmission of data, images, and documents via computer terminals; electronic mail services; and facsimile transmission.”

 

Complainant’s trademark “AOL.COM” is registered and used by it in connection with AOL Internet Web site, which is a significant method of promoting AOL’s service. 

 

Complainant’s Marks are famous to the general public as a result of Complainant’s expenditure of considerable efforts and funds in developing and marketing its services and marks; further, many millions of people have knowledge of Claimant’s Mark’s by virtue of having AOL accounts.

 

Respondent’s Domain Names are nearly identical and are confusingly similar to Complainant’s Marks because Respondent’s Domain Names include the “AOL” mark in combination with the merely generic words “lottery” and “lotto” and because the “AOL” aspect of Respondent’s Domain Names constitutes the sole distinctive element thereof. 

 

Consumers who see Respondent’s Domain Names are likely to be confused into believing that Respondent’s offers of service are endorsed or affiliated with Complainant.

 

Respondent registered and uses Respondent’s Domain Names with a bad faith intent to capitalize on Complainant’s famous names and marks, and profit from the international and domestic goodwill Complainant has created in its famous marks. 

 

Respondent has no legitimate interest in Respondent’s Domain Names because Respondent is not named or commonly known as “AOL,” nor is Respondent authorized to use Complainant’s Marks. 

 

The following is evidence of Respondent’s bad faith:

 

Each of Respondent’s Domain Names was registered on the same day, which was many years after Complainant’s Marks had become well known and famous.  Respondent had at least constructive notice of Complainant’s Marks at the time it registered Respondent’s Domain Names.

 

Respondent offers commercial services and content at the website to which Respondent’s Domain Names refer, being “worldwidelottery.com.”

 

Respondent used Respondent’s Domain Names as leverage to seek a business relationship with Complainant. 

 

Complainant attempted to settle this matter amicably by contacting Respondent, but Respondent refused to cooperate, forcing Complainant to file this UDRP administrative proceeding.

 

Many prior UDRP decisions state that use of Complainant’s Marks in a domain name violates ICANN’s rules.

 

Respondent owns other domain names that infringe other famous trademarks: “lottogoogle.com,” Lotterygoogle.com,” “googlelotto.net,” and “lottoyahoo.com.”

 

B. Respondent

           

Respondent’s Domain Names are not confusingly similar to Complainant’s Marks.

 

Respondent’s Domain Names concern and relate to Internet lottery services.  Complainant is not in this business and is not likely to ever be in this business.

 

Complainant cannot claim exclusive rights to the letters “a,” “o,” and “l” in any and every domain name and in any and every context, but rather only with respect to Complainant’s actual activities, on line lottery not being one of them.

 

In order to show confusing similarity a Complainant must show that, at the least, a reasonable person could be confused.  Here, there can be no possibility of customer confusion because Respondent and Complainant are not acting in the same commercial arena with respect to the Internet; Respondent’s operations concern on line lotteries and Complainant’s operations do not concern on line lotteries.   

 

Further, there can be no confusion on the part of the public or bad faith conduct on the part of Respondent because immediately after being initially contacted by Complainant about the issue of Respondent’s Domain Names, Respondent parked Respondent’s Domain Names.  They are not available to the public and they are not being used in any way or fashion.

 

Respondent has not engaged in bad faith conduct with respect to negotiations with Complainant with respect to Respondent’s Domain Names.  Complainant baited Respondent with an offer to amicably discuss or compromise.  Respondent’s actions in this regard were nothing more than good faith efforts to resolve the situation, and such cannot be considered as evidence of bad faith.

 

Respondent has rights or legitimate interest in respect of Respondent’s Domain Names. 

 

Respondent has long been active in promoting the concept of a world-wide lottery, and in furtherance of this legitimate business goal Respondent has invested time and money in registering domain names and trademarks in the United States and elsewhere, including Respondent’s Domain Names. 

 

Respondent has not acted in bad faith.

 

There is no factual basis to claim bad faith in this arbitration.  Complainant’s exhibits do not support the asserted opinions nor demonstrate any bad faith by Respondent.  In fact, Complainant has fabricated baseless assertions throughout its complaint. 

 

The business negations between the parties cannot be construed as being evidence of bad faith.

 

The National Arbitration Forum provides guidance for arbitrators for deciding whether a respondent’s conduct has been in bad faith, and the allegations produced by Complainant do not satisfy and of these factors.  These factors are:

 

Sales:  There are no factual grounds that demonstrate that Respondent has registered or has acquired the domain names primarily for the purpose of selling, renting or otherwise transferring the domain names to the complainant or to a competitor of that complainant.  Respondent has not offered to sell or transfer Respondent’s Domain Names.

 

Mark Blocking:  Respondent did not register Respondent’s Domain Names with the intent to block Complainant.  Complainant is not in the lottery business, and as such, it cannot use Complainant’s Marks in this arena, and as such, it cannot be blocked with respect to this arena.

 

Pattern of Conduct:  Respondent has not engaged in any pattern of conduct with respect to other similar domain names of concern to Complainant.  Complainant has made the allegation, but has provided no proof of such. 

 

Disrupting a Competitor:  Respondent has not registered Respondent’s Domain Names primarily for the purpose of disrupting the business of a competitor.  Complainant is not in the lottery business, and therefore not a competitor to Respondent.  Respondent’s primary business is the management of his own intellectual property and registered domain names, and the registration of Respondent’s Domain Names was in furtherance of these legitimate goals. 

 

Likelihood of Confusion:  Respondent for a short period of time forwarded Respondent’s Domain Names to its “worldwidelottery.com” website, this brief conduct cannot create confusion.  Respondents only intent in providing this link was to demonstrate ownership, an ownership very distinct and apart from Complainant, especially in light of the fact that Complainant is not in the lottery business. 

 

FINDINGS

 

Complainant is the owner of numerous trademark registrations worldwide for the mark “AOL,” including United States registrations 1,984,337 and 1,977,731, and numerous trademark registrations worldwide for the mark “AOL.COM,” including United States registrations 2,325,291 and 2,325,292. 

 

Complainant’s trademark “AOL” is registered and used by it in connection with, among other things:

“Computer services, namely leasing access time to computer databases, computer bulletin boards, computer networks, and computerized research and reference materials, in the fields of business, finance, news, weather, sports, computing and computer software, games, music, theater, movies, travel, education, lifestyles, hobbies, and topic of general interest; computerized dating services; computer consultation services; computerized shopping via telephone and computer terminals in the fields of computer goods and services and general consumer goods” and

 

“Telecommunications services, namely electronic transmission of data, images, and documents via computer terminals; electronic mail services; and facsimile transmission.”

 

Complainant’s trademark “AOL.COM” is registered and used by it in connection with AOL Internet Web site, which is a significant method of promoting AOLs service. 

 

Complainant’s Marks were registered before Respondent registered  Respondent’s Domain Names.

 

Complainant’s Marks are well known to the general public.

 

Complainant’s Marks are registered for and are used in connection with games, and Complainant Marks are not registered for or used in connection with lotteries. 

 

Complainant contacted Respondent before filing the instant complaint and expressed a wish that the situation be resolved amicably.

 

Respondent registered and is the owner of the following domain names: “lotteryaol.com,” “lottoaol.com,” “lottogoogle.com,” Lotterygoogle.com,” “googlelotto.net,” and “lottoyahoo.com.”

 

Respondent is not generally known by Respondent’s Domain Names.

 

Respondent has long been active in promoting the concept of a world-wide lottery.  Respondent has invested time and money in registering domain names and trademarks in the United States and elsewhere, including Respondent’s Domain Names.  The registration of these domain names was in furtherance of this business goal.

 

Respondent took Complainant’s expression of its wish that the situation be resolved amicably as an invitation to engage in settlement discussions, and Respondent suggested a business relationship as a possible amicable resolution.

 

Respondent for a short period of time forwarded Respondent’s Domain Names to its “worldwidelottery.com.”  Respondent parked Respondent’s Domain Names after it was contacted by Complainant and informed that Complainant challenged Respondent’s Domain Names.

 

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 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.

 

In conducting an analysis under the Policy, the administrative panel does not sit as a general domain name court.  See The Thread.com, LLC v. Poploff D2000-1470 (WIPO Jan 5, 2001) and does not sit as a summary trademark court.  Rather, an administrative panel sits to decide on an expedited basis the limited issues defined by the Policy.  The purpose of the policy is to provide a means and mechanism to quickly address the unique issues that lie at the intersection of trademark law and domain name rights, namely the problem of abusive cybersquatting.  See The Thread.com, supra. (“This Panel is not a general domain name court, and the Policy is not designed to adjudicate all disputes of any kind that relate in any way to domain names. Rather, the Policy is narrowly crafted to apply to a particular type of abusive cybersquatting.”).

 

Identical and/or Confusingly Similar

 

The issue under the Policy ¶ 4(a)(i) of the Policy is not one of likelihood of confusion.  To the extent that this trademark law doctrine is involved in an analysis under the Policy, it is appropriate to the analysis of bad faith under Policy ¶ 4(b)(iv).  Rather, Policy ¶ 4(a)(i) presents a threshold question that is narrow and tailored to the environment of the Internet in which users enter alpha/numeric symbols in order to connect with web sites.  The relevant inquiry is whether the subject domain name is either identical or confusingly similar to the subject trademark in a simple side by side comparison of the alpha/numeric symbols. 

 

For purposes of making this side by side comparison, extraneous content is removed, and this typically relates to the “.com” portion of the subject domain name.  See Nev. State Bank v. Modern Limited – Cayman Web Development A/K/A/ Administrator Domain, FA 204063 (Nat. Arb. Forum December 29, 2003)(“It has been established that the additional of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”).  Additionally, merely descriptive content is viewed with diminished importance.  See America On Line, Inc. v. Bongwoo Chun, FA 104974 (Nat. Arb. Forum March 22, 2002) (“The mere addition of a generic term to a famous mark as in the instant case does not create a distinct mark capable of overcoming Complainant’s claim of identical or confusing similarity.”). 

 

In the present matter, the subject domain names are: “lotteryaol.com” and “lottoaol.com” (as noted, collectively “Respondent’s Domain Names”).  The subject trademarks are “AOL” and “AOL.COM” (as noted, Complainant’s Marks”).  Removing the “.com” elements from Respondent’s Domain Names yields: “lotteryaol” and “lottoaol.”  Then, the words “lottery” and “lotto,” while not being removed, are allowed only marginal significance.  Respondent’s Domain Names thusly rendered are then compared side by side with Complainant’s Marks:

 

                lotteryAOL vs. AOL

                lottoAOL   vs. AOL

 

            and

 

            lotteryAOL vs. AOL.COM

                lottoAOL   vs. AOL.COM

 

After making the requisite comparison, this Panel finds that Respondent’s Domain Names are not identical to Complainant’ Marks, and this is because of the presence of the words “lottery” and “lotto.” However, this Panel also finds that Respondent’s Domain Names are sufficiently similar to Complainant’s Marks to rise to the level of being confusingly similar, and this is because the words “lottery” and “lotto,” when allowed only marginal significance, do not create a meaningful distinction. 

 

Rights or Legitimate Interests

 

Policy ¶ 4(c) describes potential safe harbors for domain name holders.  Three specific examples are given in this section, which are not exclusive or exhaustive.  If an administrative Panel finds that a domain name holder has rights or legitimate business interests in a domain name, the Panel can allow the domain name holder to retain the domain name.

 

Complainant must make a prima facia 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 interest in the subject domain names.  See G.D. Searly v. Martin Mktg., FA 118277 (Nat. Arb. Forum, October 1, 2002) (holding that where the complainant has asserted that the respondent does not have 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 or the respondent.”).

 

Here Complainant has alleged that Respondent does not have rights or legitimate interest in Respondent’s Domain Name.  Complainant argues that Respondent is not generally known by Respondent’s Domain Name and is not using Respondent’s Domain Names to further a legitimate business interest.  To the contrary, Respondent is attempting to trade on Complainant’s good will.  This satisfies Complainant’s burden.

 

Respondent fails in its burden to show that it does have rights or legitimate interests in Respondent’s Domain Names.

     

Respondent does not demonstrate that it has been generally known by Respondent’s Domain Names.

 

Respondent does allege that it is using Respondent’s Domain Names in connection with a bona fide offering of services, namely registration of domain names.  However, such a business is not necessarily acceptable, e.g. bone fide, under the Policy because the same can be said of domain name holders who do cybersquat in violation of the Policy.  As such, this is a conclusion to be reached after the analysis is finished and is not a supportive argument useful during the course of the analysis.  See Am. Online, Inc., v. Yeteck Commc’n, Inc., D2001-0055 (WIPO April 30, 2001) (“This administrative Panel finds that Respondent’s use of the disputed domain names conflicted with Complaints trademarks in the same fields and was not bona fide.”).

 

Respondent does allege that it used Respondent’s Domain Names to further its effort to promote a worldwide on line lottery, at least while Respondent’s Domain Names were active[1],which this Panel takes as an argument of “fair use” under Policy ¶ 4(c)(iii).  Respondent alleges that it works to promote a worldwide on line lottery, and Respondent’s Domain Names, when active, directed to its website “worldwidelotery.com,” which contains content with respect to this subject.  However, under Policy ¶ 4(c)(iii), Respondent must be “…without intent for commercial gain…”, and this Panel believes that Respondent’s ultimate goal is commercial gain.  As such, Respondent can not claim the benefit of this safe harbor. 

 

Respondent has not presented other arguments or evidence that persuades this Panel that for any other reasons its use of Respondent’s Domain Names should be protected. 

 

Registration and Use in Bad Faith

 

Policy ¶ 4(b) provides guidance to administrative panels about what types of conduct, without limitation, shall be evidence of “bad faith” under Policy ¶ 4(a).  These enumerated types of conduct are:

 

(i)                  circumstances indication that you have registered or you have    acquired the domain name primarily for the purpose of selling,        renting, or otherwise transferring the domain name registration to    the complainant who is the owner of the trademark or service mark       or to a competitor of the complainant for valuable consideration in        excess of your documented out-of-pocket costs directly related to the domain names; or

(ii)                   you have registered the domain name in order to prevent the owner       of the trademark or service mark form reflecting the mark in a          corresponding   domain name, provided that you have engaged in a         patter of such conduct; or

(iii)                  you have registered the domain name primarily for the purpose of          disrupting the business of a competitor or

(iv)                 by using the domain names, you have intentionally attempted to attract, or commercial gain, Internet users to your web site or other on-line location , by creating a likelihood of confusion with the        complainant’s mark as to the source, sponsorship, affiliation, or             endorsement of you web site or location or of a product or service   on you website or location. 

 

This panel does not believe that Respondent registered or acquired Respondent’s Domain Names for the purpose of selling or otherwise transferring the domain name to Complaint for purposes of Policy ¶ 4(b)(i).  Complainant argues that Respondent attempted to extort a business relationship between the parties, and this is evidence of bad faith.  This Panel believes that negations did occur between the parties, and Respondent did suggest as a potential solution that the parties enter into business relationship; however, this does not constitute the type of conduct against which this subsection is directed.  Informal efforts at settlement and resolution are generally taken as a productive and positive activity in most dispute resolution systems.  Such discussions are to be encouraged and not discouraged.  If respondents necessarily put themselves in peril of creating evidence of bad faith against themselves by merely entering into settlement discussions in which they make suggestions for resolution other than full capitulation, this would have the practical effect of discouraging settlement discussions. 

 

This Panel does not believe that Respondent attempted to block Complainant under Policy ¶ 4(b)(ii).  Complainant already has numerous functioning domain names that reflect Complainant’s Marks. 

 

This Panel does not believe that Respondent attempted to disrupt Complainant’s business.  Complainant already has numerous functioning domain names and commercial activities, including games, but not lottery related activities.  Even if an Internet user wanted to participate in lottery activities with Complaint, and such Internet users were wrongfully misdirected to Respondent’s web site by virtue of Respondent’s Domain Names, there could be no disruption of Complainant’s business because it is not in the lottery business. 

 

      This Panel does believe that Respondent intentionally attempted to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusions with Complainant’s Marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or location. 

 

Likelihood of confusion is a trademark law concept, and one must refer to trademark law for guidance.  The standard test for likelihood of confusion is set forth in the case of E.I. Dupont DeNemours & Co., 177 U.S.P. Q 563 (CCPA 1973), which sets forth a nine point test, and these factors are:

1)         The similarity or dissimilarity of the marks in their entireties as to             appearance, sound, connotation, and commercial impression;

2)         The similarity or dissimilarity and nature of the goods or services            as described in an application or registration or in connection with which as prior mark is in use:

3)         The similarity or dissimilarity of established likely-to-continue     trade channels;

4)         The conditions under which, and buyers to whom, sales are made,         that is, “impulsive” verses careful, sophisticated purchasing;

5)         The fame of the prior mark (sales, advertising, length of use);

6)         The number and nature of similar marks in use on similar goods;

7)         The nature and extent of any actual confusion;

8)         The length of time, during, and the conditions under which, there            has been concurrent use without evidence of actual confusion; and

9)         The variety of goods on which a mark is or is not used (house    mark, “family mark, product mark).

 

Applying this test to the present situation, this Panel finds that Respondent’s Domain Names create a likelihood of confusion with respect to Complainant’s Marks. 

 

Respondent’s Domain Names are similar to Complainant’s Marks, as noted above, and the degree of similarity is high.    

 

The field of use of Respondent’s Domain Names is similar to that of Complainant’s Marks.  The field of use of Complainant’s Marks includes games on the Internet.  Respondent is correct to point out that the concept of “games” is not identical to “lotteries,” but this it too high as standard.  It is not necessary that the two fields of use be identical.  It is sufficient that they are similar such that a consumer could be confused about the existence of a connection between two entities operation in the different fields.  This Panel finds that lottery activities on the Internet are similar to gaming activities on the Internet.

 

The channels of trade for both are the same, the Internet, and this will not change.

 

The conditions under which buyers operate are such as they are not likely to be careful.  Internet users are generally broad and imprecise in their approach to domain names.

 

Complainant’s Marks are famous, having been the subject of extensive marketing efforts and many people having accounts with Complainant.

 

No evidence or argument has been presented by either party with respect to factors 6, 7 and 8.

 

The last Dupont factor, the variety of goods or services on which Complainant’s Marks are used, also must be found in Complainant’s favor.  Complainant’s Marks cover a wide range of services connected to the Internet, as described in the trademark registration certificates attached to the complaint herein (identified above).  As such, Complainant’s Marks are to be given a wide scope of protection, at least in so far as the Internet is concerned. 

 

Respondent has acted for commercial gain.  That Respondent has not yet generated a profit is not relevant.  There is no indication that Respondents motives are charitable or not-for-profit.

 

The last factor under Policy ¶ 4(b)(iv) relates to Respondent’s motives.  Respondent professes that it does not intend to cause confusion with Complainant’s Marks with respect to source, sponsorship, affiliation, or endorsement.  Respondent argues that its motives are purely for its own ends.  However, this Panel believes that Respondent knew about Complainant’s Marks when Respondent registered Respondent’s Domain Names.  If Respondent’s intent was other than to cause confusion, it could have easily avoided Complainant’s Marks through the use of some other domain name or names that did not invoke Complainant’s Marks.  Further, Respondent is the owner of other domain names that shed light on its motives.  These other domain names are: “lottogoogle.com,” lottoyahoo.com,” “lotterygoogle.com,” and “googlelotto.net.”  Whatever the innocent motive might have been behind the selection of the letters “a,” “o,” and “l” with respect to Respondent’s Domain Names, the same cannot be said for these other domain names.  These other domain names, in combination with Respondent’s Domain Names, shows a pattern of intentionally including and invoking the trademarks of others. 

 

As such, this Panel finds that Respondent did act in bad faith when it registered Respondent’s Domain Names, and Respondent continues to act in bad faith by maintaining ownership of them.

 

 

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 <lotteryaol.com> and <lottoaol.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

 

Kendall C. Reed, Panelist
Dated: September 25, 2006

 

 

 

 

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