DECISION

America Online, Inc. v. Peter Carrington d/b/a Party Night, Inc.

Claim Number: FA0208000118314

PARTIES

Complainant is America Online, Inc., Dulles, VA, USA (“Complainant”) represented by James R. Davis, of Arent Fox Kintner Plotkin & Kahn.  Respondent is Peter Carrington d/b/a Party Night, Inc., Amsterdam, THE NETHERLANDS (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <aolmial.com> and <aolanwhere.com>, registered with Key-Systems GmbH.

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.

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on August 16, 2002; the Forum received a hard copy of the Complaint on August 21, 2002.

On August 19, 2002, Key-Systems GmbH confirmed by e-mail to the Forum that the domain names <aolmial.com> and <aolanwhere.com> are registered with Key-Systems GmbH and that Respondent is the current registrant of the names.  Key-Systems GmbH has verified that Respondent is bound by the Key-Systems GmbH 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 21, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 10, 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@aolmial.com and postmaster@aolanwhere.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 September 30, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 names be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

The <aolmial.com> and <aolanwhere.com> domain names are confusingly similar to Complainant’s AOL family of marks, including Complainant’s AOL ANYWHERE mark.

Respondent has no rights or legitimate interests in the <aolmial.com> and <aolanwhere.com> domain names.

Respondent registered and used the <aolmial.com> and <aolanwhere.com> domain names in bad faith.

B. Respondent

Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant holds numerous worldwide trademarks for the AOL mark and marks that incorporate AOL.  Complainant holds the following United States Patent and Trademark Office (“USPTO”) registrations:  Reg. No. 1,977,731 and 1,984,337, for AOL; and Reg. No. 2,474,065 and 2,464,280, for AOL ANYWHERE. 

Complainant uses its AOL family of marks in connection with, inter alia, computer services, namely leasing access time to computer databases, computer bulletin boards, computer networks, and computerized research and reference materials.  Complainant also uses its AOL marks in association with telecommunication services, namely electronic transmission of data, images, and documents via computers terminals; electronic mail services; and facsimile transmission.

Complainant extensively uses its AOL family of marks at its <aol.com> and <aolanywhere.com> websites to promote its business and AOL related services.  Since 1989, Complainant has used the AOL marks for its computer online services and other Internet-related services.  In an effort to establish the AOL marks and related services, Complainant has spent a substantial amount of money for development and marketing.  As a result of Complainant’s promotional efforts, Complainant’s customer base has grown to over thirty-four million subscribers.  Because of Complainant’s substantial advertising expenditures and customer base, the distinctive AOL family of marks have become very well-known and famous among the general public. 

Respondent registered the <aolmial.com> and <aolanwhere.com> domain names on April 14, 2002 and July 5, 2002, respectively.  Respondent uses the domain names to divert Internet traffic to pornographic and gambling websites.  Complainant has discovered that Respondent is a well-known cybersquatter who has been an infringing party in multiple domain name disputes. 

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 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.

Identical and/or Confusingly Similar

Complainant has established its rights in the AOL and AOL ANYWHERE marks by providing proof of valid trademark registrations with the USPTO and continuous use since 1989. 

Respondent’s <aolanwhere.com> domain name consists of a misspelled version of Complainant’s AOL ANYWHERE mark.  Simply deleting a letter from Complainant’s mark does not create a distinguishable domain name.  Rather, Respondent’s behavior evidences an intent to confuse and entrap Internet users.  Therefore, Respondent’s domain name is confusingly similar to Complainant’s AOL ANYWHERE mark.  See State Farm Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730 (Nat. Arb. Forum June 15, 2000) (finding that the domain name <statfarm.com> is confusingly similar to the Complainant’s STATE FARM mark); see also Compaq Info. Techs. Group, L.P. v. Seocho , FA 103879 (Nat. Arb. Forum Feb. 25, 2002) (finding that the domain name <compq.com> is confusingly similar to Complainant’s COMPAQ mark because the omission of the letter “a” in the domain name does not significantly change the overall impression of the mark); see also Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive).

Respondent’s <aolmial.com> domain name contains Complainant’s entire famous AOL mark with the addition of “mial,” seemingly a misspelling of the word mail.  Respondent’s AOL mark has a substantial relation to the word mail since Complainant’s electronic mail service is one of Complainant’s most used services.  The misspelling of the word “mail” is a common tactic used by cybersquatters, such as Respondent, to entrap Internet users when they mistype a domain name address.  Respondent’s transposition of the “a” and “i” in the word mail does not result in a domain name that sets itself apart from Complainant’s famous AOL mark.  Hence, Respondent’s domain name is confusingly similar to Complainant’s AOL mark.  See Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where Respondent’s domain name combines Complainant’s mark with a generic term that has an obvious relationship to Complainant’s business); see also Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding <googel.com> to be confusingly similar to Complainant’s GOOGLE mark and noting that “[t]he transposition of two letters does not create a distinct mark capable of overcoming a claim of confusing similarity, as the result reflects a very probable typographical error”); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that the domain name <geociites.com> is confusingly similar to Complainant’s GEOCITIES mark).

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Respondent has failed to come forward in this case to challenge Complainant’s allegations, and Complainant has successfully alleged a prima facie case by providing relevant, credible and reliable evidence.  Specifically, Complainant effectively shifts the burden of establishing rights or legitimate interests in the domain names to Respondent by asserting that Respondent has no such rights or legitimate interests.  Since Respondent failed to answer the Complaint, the Panel presumes that Respondent has no rights or legitimate interests in the <aolmial.com> and <aolanwhere.com> domain names.  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests in respect of the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also 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).

Respondent uses the <aolmial.com> and <aolanwhere.com> domain names to direct unsuspecting Internet traffic searching for Complainant’s services to pornographic and gambling websites.  Since Respondent’s domain names are essentially misspellings of Complainant’s AOL related marks, Respondent is opportunistically trading on Complainant’s goodwill by entrapping Internet users and diverting them to pornographic and gambling websites.  It may be reasonably inferred that Respondent commercially benefits by such diversionary tactics.  Furthermore, Respondent has engaged in similar activity in the past, which further evidences Respondent’s intent to profit off of Complainant’s AOL family of marks.  Respondent’s use of the domain names does not represent a use in connection with a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i), nor does it constitute a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that infringing on another's well-known mark to provide a link to a pornographic site is not a legitimate or fair use); 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 to tarnish the Complainant’s mark); see also Société des Bains de Mer v. Int’l Lotteries, D2000-1326 (WIPO Jan. 8, 2001) (finding no rights or legitimate interests where Respondent used the <casinomontecarlo.com> and <montecarlocasinos.com> domain names in connection with an online gambling website).

Respondent has no legitimate business connection with Complainant that would suggest Respondent was known by the <aolmial.com> and <aolanwhere.com> domain names.  Furthermore, the domain names are misspellings and therefore it is highly unlikely that Respondent would be commonly known by the <aolmial.com> and <aolanwhere.com> domain names.  In fact, Respondent is known as Peter Carrington a/ka/ Party Night, Inc. and is a familiar party to domain name complaints.  Therefore, Respondent has no rights or legitimate interests in the domain names pursuant to Policy ¶ 4(c)(ii).  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 Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).

Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the <aolmial.com> and <aolanwhere.com> domain names; thus, Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Policy paragraph 4(b) represents a list of circumstances that evidence bad faith, but the paragraph explicitly states that the list of bad faith circumstances is without limitation.  Therefore, the Panel is permitted to look at the totality of circumstances in order to determine whether Respondent acted in bad faith.  See 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); see also Educational Testing Serv. v. TOEFL, D2000-0044 (WIPO Mar. 16, 2000) (finding that the Policy “[I]ndicates that its listing of bad faith factors is without limitation”).

Viewing the totality of circumstances, it is clear that Respondent had knowledge of Complainant’s interests in the AOL family of marks.  First, the AOL family of marks have become famous due to Complainant’s extensive use and business success associated with the AOL marks.  Second, Respondent’s domain names are misspelled versions of Complainant’s marks and Complainant’s mark plus a misspelled word that has an obvious relation to Complainant’s business.  Third, Respondent’s use of the domain names have no association or logical connection to the content of the second-level domains (“aolanwhere” and “aolmial”).  Finally, Respondent is a well-known cybersquatter who opportunistically trades off of famous marks, such as the AOL mark.  It is therefore clear that Respondent registered the domain names with knowledge of Complainant’s valuable interests in the AOL family of marks, and subsequently used the domain names to profit from the confusing similarity between the names and Complainant’s AOL marks.  Hence, Respondent registered and used the <aolmial.com> and <aolanwhere.com> domain names in bad faith under Policy ¶ 4(a)(iii).  See Nintendo of Am. Inc v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding that Respondent, at the time of registration, had notice of Complainant’s famous POKÉMON and PIKACHU trademarks given their extreme popularity); see also Chanel, Inc. AG v. Designer Exposure, D2000-1832 (WIPO Feb. 15, 2001) (finding that Respondent's registration and use of the famous CHANEL mark suggests opportunistic bad faith); see also L.L. Bean, Inc. v. Cupcake Patrol, FA 96504 (Nat. Arb. Forum Mar. 12, 2001) (finding that Respondent acted in bad faith by establishing a pattern of registering misspellings of famous trademarks and names).

Furthermore, Respondent’s use of the <aolmial.com> and <aolanwhere.com> domain names to divert Internet traffic to pornographic and gambling websites, presumably for profit, represents bad faith use of the domain names.  The attempt to trade off of another entity’s mark by linking the domain names to a pornographic website is a use that has been consistently held to amount to bad faith.  Also, Respondent’s diversionary tactics have the capability of confusing Internet users as to Complainant’s affiliation or sponsorship of the attached websites.  Therefore, Respondent’s behavior represents bad faith pursuant to Policy ¶ 4(b)(iv).  See Youtv, Inc. v. Alemdar, FA 94243 (Nat. Arb. Forum Apr. 25, 2000) (finding bad faith where Respondent attracted users to his website for commercial gain and linked his website to pornographic websites); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where Respondent directed Internet users seeking Complainant’s site to its own website for commercial gain).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

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

Accordingly, it is Ordered that the domain names <aolmial.com> and <aolanwhere.com> be transferred from Respondent to Complainant.

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated: October 4, 2002

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