DECISION

America Online, Inc. v. 4freeaol.com

Claim Number: FA0208000122204

PARTIES

Complainant is America Online, Inc., Dulles, VA, USA (“Complainant”) represented by James R. Davis, of Arent Fox Kintner Plotin & Kahn.  Respondent is 4freeaol.com, Manchester, ENGLAND (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <4freeaol.com>, registered with Intercosmos Media Group.

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.

Judge Harold Kalina (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on August 21, 2002; the Forum received a hard copy of the Complaint on August 26, 2002.

On August 22, 2002, Intercosmos Media Group confirmed by e-mail to the Forum that the domain name <4freeaol.com> is registered with Intercosmos Media Group and that Respondent is the current registrant of the name.  Intercosmos Media Group has verified that Respondent is bound by the Intercosmos Media Group 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 27, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 16, 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@4freeaol.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 October 2, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Harold Kalina (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 name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

The <4freeaol.com> domain name is confusingly similar to Complainant’s AOL mark.

Respondent has no rights or legitimate interests in the <4freeaol.com> domain name.

Respondent registered and used the <4freeaol.com> domain name in bad faith.

B. Respondent

Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant owns numerous worldwide trademark registrations for the AOL mark.  Complainant’s AOL mark is registered with the United States Patent and Trademark Office (“USPTO”) as Reg. Nos. 1,977,731 and 1,984,337.  In addition, Respondent has the AOL.COM mark registered with the USPTO as Reg. Nos. 2,325,291 and 2,325,292.

Complainant uses its marks in connection with computer services and telecommunication services.  Specifically, some of the services offered under the auspices of the AOL mark include electronic mail services, electronic transmission of data and computerized research and reference materials. 

Complainant has invested a substantial amount of money in developing and promoting the AOL mark and related services since 1989.  Complainant’s business efforts have paid off as it has over thirty-four (34) million subscribers, making Complainant’s online service the most widely used in the world.  As a result, the AOL mark is one of the most readily recognized and famous marks used on the Internet.

In addition, Complainant has promoted its services to potential subscribers by offering a limited-time free trial use of AOL services.  In connection with these promotions, Complainant makes prominent use of the word “free” alongside the AOL mark.

Respondent registered the <4freeaol.com> domain name on July 19, 2002.  Respondent uses the domain name to link to a commercial pornographic website.  Complainant sent a cease and desist notice to Respondent and Respondent replied stating that it would lose a lot of money if it were to transfer the domain name to Complainant.  Respondent also notified Complainant that if Respondent were to give up interests in the domain name registration, Complainant would have to “make up” some of Respondent’s alleged loss in income. 

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 mark through proof of registration with the USPTO and substantial use in international commerce since 1989.

Respondent’s <4freeaol.com> domain name contains Complainant’s famous AOL mark with the addition of the prefix “4free.”  Respondent’s mere addition of “4free” to the AOL mark does not create a distinct mark capable of overcoming a confusingly similar analysis.  Complainant heavily promotes its AOL related services to the consuming public and as a part of those efforts Complainant offers free trial periods.  Thus, Respondent’s use of the “4free” prefix has a high probability of creating consumer confusion, as it is merely suggestive of Complainant’s AOL services.  See Arthur Guinness Son & Co. (Dublin) Ltd.  v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of Complainant combined with a generic word or term); see also 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).

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

Rights or Legitimate Interests

As part of Complainant’s prima facie Complaint, Complainant has alleged that Respondent has no rights or legitimate interests in the <4freeaol.com> domain name.  The burden of production therefore shifted to Respondent to affirmatively articulate its rights or legitimate interests in the domain name.  Respondent, however, has failed to answer the Complaint and, thus, it may be presumed that Respondent has no rights or legitimate interests in the domain name.  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 Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).

Furthermore, because Respondent failed to come forward and submit a Response, the Panel may draw all reasonable inferences in favor of Complainant and accept all allegations as true.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of Complainant 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”).

Respondent uses the <4freeaol.com> domain name to link Internet traffic to a commercial, pornographic website.  This use has no relevant connection to the substance of the second level domain.  Thus, it appears that Respondent only uses the domain name as a means to profit from the resulting traffic influx, which is created by individuals searching for AOL products, being diverted to the pornographic website.  Such use by Respondent does not constitute a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i), nor does it represent 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 Complainant’s mark).

Respondent provides the name “4freeaol.com” as its Registrant name on its WHOIS information page.  The Administrative Contact name provided on the same WHOIS information page is James Robert.  Complainant had correspondence with James Robert and at no time did this individual intimate that Respondent is commonly known by the <4freeaol.com> domain name, and there is no information on record to suggest the same.  Therefore, Respondent has no rights or legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii).  See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use); see also 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).

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

Registration and Use in Bad Faith

Respondent uses the <4freeaol.com> domain name to divert unsuspecting Internet users who are searching for Complainant’s AOL related products to a pornographic website.  In correspondence with Complainant, Respondent indicated that if it were to give up the domain name it would “lose a lot of traffic and money.”  It is therefore apparent that Respondent commercially benefits from the infringing use of Complainant’s AOL mark.  There is also a high likelihood of Internet user confusion as to Complainant’s affiliation with the pornographic material, because the AOL mark is the predominant feature in Respondent’s domain name.  Therefore, Respondent’s use of the domain name constitutes bad faith registration and use under Policy ¶ 4(b)(iv).  See Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding bad faith where Respondent linked the domain name in question to websites displaying banner advertisements and pornographic material); 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); see also MatchNet plc. v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that the association of a confusingly similar domain name with a pornographic website can constitute bad faith).

Furthermore, Complainant has provided evidence that allows a reasonable inference to be drawn that the <4freeaol.com> domain name was registered primarily with the intent to sell it.  Respondent stated that if it were to transfer the domain name, Complainant would have to “make up” some of Respondent’s alleged loss in income.  The income is derived from the diversionary use of the domain name and Respondent appears to be willing to sell the domain name registration so long as the price outweighs the loss of its infringing profits.  Therefore, Respondent’s conduct and statements make it clear that the domain name registration is for sale, representing bad faith registration and use under Policy ¶ 4(b)(i).  See Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002) ("[w]hat makes an offer to sell a domain [name] bad faith is some accompanying evidence that the domain name was registered because of its value that is in some way dependent on the trademark of another, and then an offer to sell it to the trademark owner or a competitor of the trademark owner"); see also Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”).

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 name <4freeaol.com> be transferred from Respondent to Complainant.

                                                                                                 Judge Harold Kalina (Ret.), Panelist

                                                                                                            Dated:  October 9, 2002

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