DECISION

America Online, Inc. v. Mortal Creations, Inc.

Claim Number: FA0206000114713

PARTIES

Complainant is America Online, Inc., Dulles, VA (“Complainant”) represented by James Davis, of Arent Fox Kintner Plotkin & Kahn.  Respondent is Mortal Creations Inc., Holmes Beach, FL (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <adultaol.com>, registered with Verisign.

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.

Hon. Ralph Yachnin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on June 26, 2002; the Forum received a hard copy of the Complaint on June 26, 2002.

On June 27, 2002, Verisign confirmed by e-mail to the Forum that the domain name <adultaol.com> is registered with Verisign and that Respondent is the current registrant of the name.  Verisign has verified that Respondent is bound by the Verisign 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 June 28, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 18, 2002 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@adultaol.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On July 25, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Ralph Yachnin as Panelist.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the 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 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 name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

1. Respondent’s <adultaol.com> domain name is confusingly similar to Complainant’s registered AOL mark.

2. Respondent does not have any rights or legitimate interests in the <adultaol.com> domain name.

3. Respondent registered and used the <adultaol.com> domain name in bad faith.

B. Respondent did not submit a Response in this proceeding.

FINDINGS

Complainant is the owner of numerous trademark registrations worldwide for the AOL mark, including U.S. trademark Reg. Nos. 1,977,731 and 1,984,337, which were registered on June 4, 1996 and July 2, 1996, respectively. Complainant registered and uses its AOL mark in connection with, inter alia, providing a broad range of information and services over the Internet and at the proprietary AOL online system. Complainant adopted and began using its AOL mark as early as 1989 in connection with computer online services and other Internet-related services.

Complainant has invested substantial sums of money in developing and marketing its AOL marks and corresponding services. With over thirty-four million subscribers, Complainant operates the most widely used interactive online service in the world. Sales of services under the AOL and AOL.COM marks have amounted to many billions of dollars.

As a result of the aforementioned circumstances and information, the AOL brand is one of the most readily recognized and famous marks used on the Internet. The general public has come to associate Complainant’s marks with services of high and uniform quality.

Respondent registered the <adultaol.com> domain name on February 10, 2000. Complainant’s Submission reveals that Respondent’s domain name resolves to a commercial pornographic website. Complainant’s investigation also reveals that Respondent attempts to justify its use of the AOL moniker by stating that it is an acronym that represents “Adult Amateurs Online.”

DISCUSSION

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 the 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.

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; and

(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.

Identical and/or Confusingly Similar

Complainant has established rights in the AOL mark through registration with the USPTO and other worldwide authorities, and continuous use of the mark in commerce since 1989.

Respondent’s <adultaol.com> domain name is confusingly similar to Complainant’s AOL mark. Respondent’s domain name incorporates Complainant’s established mark in its entirety, with the addition of the generic word “adult.” The addition of a generic word to a famous mark does not detract from the dominating presence of Complainant’s AOL mark, and fails to create a distinct and separate domain name. See Am. Online, Inc. v. iDomainNames.com, FA 93766 (Nat. Arb. Forum Mar. 24, 2000) (finding that Respondent’s domain name <go2AOL.com> was confusingly similar to Complainant’s AOL mark); see also Am. Online Inc. v. Neticq.com Ltd., D2000-1606 (WIPO Feb. 12, 2001) (finding that the addition of the generic word “Net” to Complainant’s ICQ mark, makes the <neticq.com> domain name confusingly similar to Complainant’s mark); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word…nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied).

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Respondent has failed to submit a Response in this proceeding. Therefore, it is presumed that Respondent lacks rights and legitimate interests in the <adultaol.com> domain name. See Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the Panel and Respondent did not come forward to suggest any right or interest it may have possessed).

Furthermore, because Respondent failed to submit a Response in this proceeding, the Panel is permitted to make all reasonable inferences in favor of Complainant. See 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”).

Respondent opportunistically registered the disputed domain name in order to divert Internet users searching for Complainant to its commercial website. Furthermore, Respondent’s domain name resolves to a pornographic website that tarnishes the goodwill associated with Complainant’s AOL mark. Respondent’s actions fail to demonstrate rights or legitimate interests in <adultaol.com> pursuant to Policy ¶¶ 4(c)(i) and (ii). See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name); see also MatchNet plc v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that it is not a bona fide offering of goods or services to use a domain name for commercial gain by attracting Internet users to third party sites offering sexually explicit and pornographic material, where such use is calculated to mislead consumers and tarnish the Complainant’s mark).

In communications with Complainant, Respondent justified its use of the AOL mark by making reference to its alleged acronym, “Adult Amateurs Online.” However, Respondent has failed to produce any evidence refuting Complainant’s allegations that Respondent’s justification for use of the AOL mark is merely coincidental and fabricated. In the absence of a credible explanation, it can be inferred that Respondent’s purpose is to mislead Internet users into believing that Complainant is affiliated with Respondent’s website and connected activities. Due to the fame associated with Complainant’s AOL mark and its listing on the Principal Register of the USPTO, a presumption is created that Respondent cannot establish rights and legitimate interests in a domain name that incorporates Complainant’s mark in its entirety. See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one “would be hard pressed to find a person who may show a right or legitimate interest” in a domain name containing Complainant's distinct and famous NIKE trademark).

Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

The criterion specified in ¶ 4(b) of the Policy does not represent an exhaustive list of bad faith evidence. The Panel must take into consideration the totality of circumstances in order to determine if Respondent registered or used the domain name in bad faith. See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the “totality of circumstances”); see also Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence).

Because Complainant is an international corporation that enjoys significant publicity through advertisements and promotions and its AOL mark is listed on the Principal Register of the USPTO, Respondent had constructive notice of Complainant’s rights in the AOL mark prior to registering the infringing domain name. Respondent’s subsequent registration of the domain name, despite knowledge of Complainant’s preexisting rights, represents bad faith registration under Policy ¶ 4(a)(iii). See Net2phone Inc. v. Netcall SAGL, D2000-0666 (WIPO Sept. 26, 2000) (finding constructive notice as a result of Complainant’s widespread promotional efforts coupled with diversion from Complainant’s site to Respondents for competing commercial gain is sufficient evidence of bad faith registration and use); see also Victoria’s Cyber Secret Ltd. P’ship v. V Secret Catalogue, Inc., 161 F.Supp.2d 1339, 1349 (S.D.Fla. 2001) (noting that “a Principal Register registration [of a trademark or service mark] is constructive notice of a claim of ownership so as to eliminate any defense of good faith adoption” pursuant to 15 U.S.C. § 1072); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration).

Respondent’s bad faith use of the <adultaol.com> domain name is demonstrated by the commercial and pornographic site promoted at the website attached to the domain name. Circumstances indicate that Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion among Internet users as to the source of the website. Respondent’s commercial use of the infringing domain name evidences bad faith pursuant to Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent registered and used an infringing domain name to attract users to a website sponsored by Respondent); see also Land O' Lakes Inc. v. Offbeat Media Inc., FA 96451 (Nat. Arb. Forum Feb. 23, 2001) (finding bad faith under Policy ¶ 4(b)(iv) where Respondent utilized a domain name confusingly similar to the Complainant’s mark and used a confusingly similar pornographic depiction of the Complainant’s registered trademark on its web site to cause confusion as to the source or affiliation of the site); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that ICQ mark is so obviously connected with Complainant and its products that the use of the domain names by Respondent, who has no connection with Complainant, suggests opportunistic bad faith).

Further evidence of Respondent’s bad faith is shown by Respondent’s use of the infringing domain name to resolve to a pornographic website. Regardless of the commercial nature of the website, Respondent suggests a false association between Complainant and the images presented on its website, thereby tarnishing the goodwill associated with Complainant’s AOL mark. See Rittenhouse Dev. Co. v. Domains For Sale, Inc., FA 105211 (Nat. Arb. Forum Apr. 8, 2002) (finding that “when a party registers and uses a domain name that incorporates a well-known mark and connects the domain name with a website that depicts offensive images,” the party has registered and used the disputed domain name in bad faith); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (use of another's well-known mark to provide a link to a pornographic site is evidence of bad faith registration and use).

Accordingly, the Panel determines that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be hereby GRANTED.

Accordingly, it is Ordered that the <adultaol.com> domain name be TRANSFERRED from Respondent to Complainant.

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

Dated: July 29, 2002

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