DECISION

America Online, Inc. v. Hershey Chitrik

Claim Number: FA0209000124854

PARTIES

Complainant is America Online, Inc., Dulles, VA (“Complainant”) represented by James R. Davis, II, of Arent Fox Kintner Plotkin & Kahn.  Respondent is Hershey Chitrik, Brooklyn, NY (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <aolserver.net> and <aol10.com>, registered with Go Daddy Software, Inc. and Dotster.com.

PANEL

On October 25, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James P. Buchele as Panelist.  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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on September 10, 2002; the Forum received a hard copy of the Complaint on September 9, 2002.

On September 10, 2002, Go Daddy Software, Inc. and Dotster.com confirmed by e-mail to the Forum that the domain names <aolserver.net> and <aol10.com> are registered with Go Daddy Software, Inc. and Dotster.com and that Respondent is the current registrant of the names.  Go Daddy Software, Inc. and Dotster.com have verified that Respondent is bound by the Go Daddy Software, Inc. and Dotster.com registration agreements 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 September 12, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 2, 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@aolserver.net and postmaster@aol10.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.

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 <aolserver.net> and <aol10.com> domain names are confusingly similar to Complainant’s AOL mark.

Respondent has no rights or legitimate interests in the <aolserver.net> and <aol10.com> domain names.

Respondent registered and used the <aolserver.net> and <aol10.com> domain names in bad faith.

B. Respondent

Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant is the owner of numerous worldwide trademark registrations for the AOL mark.  Complainant has secured its rights in the AOL mark with the United States Patent and Trademark Office (“USPTO”) as Reg. Nos. 1,977,731 and 1,984,337, which were registered on June 4, 1996 and July 2, 1996, respectively. 

Complainant has extensively used the AOL mark in connection with computer related services.  Some of the services Complainant uses the AOL mark for are as follows:  leasing access time to computer databases, computerized research for a variety of subject matters, computerized shopping, and telecommunications services, namely electronic mail and transmission of data/documents via computer terminals.  Complainant has invested a substantial amount of resources and money in developing and marketing all of its AOL services, including advertising the AOL mark in television, radio, and print.  As a result, Internet users readily associate the AOL mark with Complainant’s quality services.

Complainant operates on the Internet at <aol.com>, where Complainant provides access to all its aforementioned services, among others.  Complainant’s online services are used by a wide array of individuals, as Complainant has over thirty-four million subscribers.  The amount of exposure due to the widespread use of AOL related services and promotion of those services has bestowed upon the AOL mark a status of fame and notoriety unlike many other trademarks. 

Respondent registered the <aolserver.net> and <aol10.com> domain names on July 26, 2000.  Respondent uses the domain names to promote its commercial jewelry business by linking the domain names to a website that sells jewelry.  Complainant notes that its online AOL shopping services include the sale of jewelry. 

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 of the mark in connection with its computer related services.

Respondent’s <aolserver.net> and <aol10.com> domain names incorporate Complainant’s entire AOL mark.  The <aolserver.net> domain name merely adds the generic computer related term “server” to the AOL mark.  The word “server” is defined as “a computer that stores files and provides them to workstations connected to it.”  Hence, there is a relation between Complainant’s AOL services and the added word “server,” and the domain name fails to distinguish itself from the AOL mark.  Furthermore, the <aol10.com> domain name is confusingly similar to the AOL mark because the addition of numerals to a mark, especially a well-known mark such as AOL, does not defeat a confusingly similar claim.  Therefore, Respondent’s <aolserver.net> and <aol10.com> domain names are confusingly similar to Complainant’s AOL mark.  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. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that adding the suffixes "502" and "520" to the ICQ trademark does little to reduce the potential for confusion).

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

Rights or Legitimate Interests

Complainant has successfully alleged a prima facie Complaint, in which Complainant asserts that Respondent has no rights or legitimate interests in the <aolserver.net> and <aol10.com> domain names.  Complainant’s allegations and complete Complaint shift the burden onto Respondent to articulate its rights or legitimate interests in the domain names.  Respondent, however, has failed to even come forward in this dispute and therefore the Panel may presume that Respondent has no such rights or legitimate interests.  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).

In addition, Respondent’s failure to challenge the Complaint allows all reasonable inferences to be drawn in favor of Complainant, and the Panel will accept Complainant’s uncontested 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 Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence).

Respondent uses the <aolserver.net> and <aol10.com> domain names to resolve to its commercial jewelry website, where it solicits orders for a wide array of jewelry.  Hence, Respondent simply diverts Internet users to a website that has nothing to do with the content of the domain names, as Respondent’s jewelry store is apparently called “Aaron & Sons, Inc.”  Respondent’s use of the domain names to increase web-traffic to its own commercial website does not evidence rights or legitimate interests in the domain name under Policy ¶¶ 4(c)(i) or (iii).  See Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was diverting consumers to its own website by using Complainant’s trademarks); see also MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous MSNBC mark where Respondent attempted to profit using the Complainant’s mark by redirecting Internet traffic to its own website).

Respondent has no business connection with Complainant; the only evidence on the record shows that Respondent is in the jewelry business, unrelated to the computer services industry.  Respondent’s WHOIS information indicates Respondent’s name is “Hershey Chitrik.”  There simply is no evidence on the record that suggests Respondent is commonly known by the <aolserver.net> and <aol10.com> domain names, and it is reasonable to presume that Respondent could not be commonly known by the domain names because of the established fame of the AOL mark.  Therefore, Respondent has no rights or legitimate interests in the domain names 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 Respondent has no rights or legitimate interests in the <aolserver.net> and <aol10.com> domain names; thus, Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent uses the <aolserver.net> and <aol10.com> domain names in a manner that is not consistent with a legitimate use.  It is evident that Respondent merely registered and uses the domain names to increase traffic on its commercial jewelry website.  The domain names predominant appearance, the AOL mark, is wholly unrelated to Respondent’s jewelry sale.  Respondent’s actions of ensnaring Internet users who are searching for Complainant more than likely causes confusion as to Complainant’s association with Respondent’s jewelry website.  Therefore, Respondent’s actions constitute bad faith registration and use under Policy ¶ 4(b)(iv).  See State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where Respondent registered the domain name <bigtex.net> to infringe on Complainant’s goodwill and attract Internet users to Respondent’s website); see also 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).

Policy paragraph 4(b) presents a list of circumstances that represent bad faith, but the list is expressly non-exclusive.  Therefore, the Panel may find bad faith in regards to circumstances not contained within Policy paragraph 4(b).  The Panel is, thus, encouraged to look at the totality of circumstances when undertaking the bad faith issue.  See Educ. 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”); see also CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (“[T]he Policy expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith”).

Given the circumstances of the case, it is evident that Respondent registered the <aolserver.net> and <aol10.com> domain names in order to benefit off of the goodwill associated with Complainant’s AOL mark.  As previously mentioned, Respondent’s business has no connection with Complainant’s computer related AOL services, and the domain names predominantly display Complainant’s AOL mark.  Furthermore, the AOL mark is extremely well known and readily associated with Complainant’s services.  Hence, it is clear that Respondent knew that Complainant owned a valuable interest in the AOL mark and desired to capitalize on the value of the mark.  Registering a domain name with knowledge of another party’s interests in the content of the domain name amounts to bad faith registration.  See 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); see also Entrepreneur Media, Inc. v. Smith[2002] USCA9 115; , 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse").

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 <aolserver.net> and <aol10.com> be transferred from Respondent to Complainant.

James P. Buchele, Panelist

Dated:  November 4, 2002

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