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Generic Top Level Domain Name (gTLD) Decisions |
America Online, Inc. v. Tom Howes d/b/a
Magic Palace Casino
Claim Number: FA0210000128145
PARTIES
Complainant
is America Online, Inc., Dulles, VA
(“Complainant”) represented by James R.
Davis, of Arent Fox Kintner Plotkin
& Kahn. Respondent is Tom Howes d/b/a Magic Palace Casino,
Potomac, MD (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <america-online-casino.com>,
registered with Enom.
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 October 15, 2002; the Forum received
a hard copy of the
Complaint on October 17, 2002.
On
October 16, 2002, Enom confirmed by e-mail to the Forum that the domain name <america-online-casino.com> is
registered with Enom and that Respondent is the current registrant of the name.
Enom has verified that Respondent is bound by
the Enom 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
October 17, 2002, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”),
setting a deadline
of November 6, 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@america-online-casino.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
December 4, 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 name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following
assertions:
Respondent’s
<america-online-casino.com> domain name is confusingly similar to
Complainant’s registered AMERICA ONLINE family of marks.
Respondent does not have any rights or legitimate
interests in the <america-online-casino.com> domain
name.
Respondent registered and used the <america-online-casino.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
FINDINGS
Complainant, America Online, Inc., owns numerous trademark
registrations for its AMERICA ONLINE mark, including U.S. Reg. Nos. 1,618,148
and 2,248,427, registered on the Principal Register of the United States Patent
and Trademark Office (“USPTO”) on October 16, 1990
and June 1, 1999,
respectively. Complainant also holds
trademark registrations for its famous TRIANGLE LOGO, incorporating its AMERICA
ONLINE mark, as well as other
variations of its AMERICA ONLINE mark.
Complainant has used its AMERICA ONLINE and TRIANGLE LOGO
family of marks extensively in connection with computer and Internet-related
goods and services, and has done so since 1989. Complainant also operates a
website at <americaonline.com> in conjunction with
its Internet service,
where its mark is prominently displayed and used to promote Complainant’s
services.
Under its AMERICA ONLINE family of marks, Complainant
operates the most widely-used interactive online service in the world. Complainant
has spent millions of dollars advertising and promoting its services under the
AMERICA ONLINE family of marks, resulting in over
thirty-five million
subscribers worldwide and billions of dollars in sales.
On June 12, 2002, Respondent registered
the <america-online-casino.com>
domain name. Respondent is not licensed
or otherwise authorized to use the AMERICA ONLINE family of marks in this
manner. Respondent’s actual website
uses Complainant’s AMERICA ONLINE and
distinctive TRIANGLE LOGO in connection with its online gambling services.
Respondent’s website
also routes Internet users to another website that uses
other marks owned by Complainant. Respondent’s contact information indicates
that Respondent is using an e-mail account provided by Complainant
(tomwhowes@aol.com), indicating that Respondent is aware of Complainant’s
services.
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 rights in its
AMERICA ONLINE family of marks through registration on the Principal Register
of the USPTO,
as well as via continuous and widespread use of the mark
worldwide.
Respondent’s <america-online-casino.com> domain name is confusingly
similar to Complainant’s AMERICA ONLINE mark.
The only difference between Respondent’s domain name and the registered
mark of Complainant is the addition of the top-level domain
“.com” after the
mark, the placement of a hyphen between the words AMERICA and ONLINE, and the
addition of the word “casino.” As
top-level domains are a required feature for each domain name, the “.com” in
the disputed domain name does not prevent a finding
of confusing
similarity. See Busy Body, Inc. v. Fitness Outlet Inc.,
D2000-0127 (WIPO Apr. 22, 2000) (finding that "the addition of the generic
top-level domain (gTLD) name ‘.com’ is . . . without
legal significance since
use of a gTLD is required of domain name registrants"); see also Visit Am., Inc. v. Visit Am., FA 95093
(Nat. Arb. Forum Aug. 14, 2000) (finding that the “.com” is part of the
Internet address and does not add source identity
significance).
Respondent’s use of a hyphen between the
words AMERICA and ONLINE in the disputed domain name is irrelevant when
determining confusing
similarity between that domain name and mark in which a
complainant has rights. See Nintendo Of Am. Inc. v. This Domain Is For
Sale, D2000-1197 (WIPO Nov. 1, 2000) (finding <game-boy.com>
identical and confusingly similar the Complainant’s GAME BOY mark,
even though
the domain name is a combination of two descriptive words divided by a hyphen);
see also Columbia Sportswear Co.
v. Keeler, D2000-0206 (WIPO May 16, 2000) (finding “[t]he use of hyphens
‘columbia-sports-wear-company’ in one of the Respondent's domain names
in issue
is insufficient to render it different to the trade mark COLUMBIA SPORTSWEAR
COMPANY”).
The addition of the word “casino” to
Complainant’s registered AMERICA ONLINE mark fails to sufficiently
differentiate the disputed
domain name from Complainant’s mark. The dominant feature of the disputed domain name
remains Complainant’s AMERICA ONLINE mark. See Pfizer, Inc. v. Papol Suger,
D2002-0187 (WIPO Apr. 24, 2002) (finding that because the subject domain name
incorporates the VIAGRA mark in its entirety, and
deviates only by the addition
of the word “bomb,” the domain name is rendered confusingly similar to
Complainant’s mark); see also 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 the
Complainant combined with a generic
word or term).
Accordingly, the Panel finds that the <america-online-casino.com> domain
name is confusingly similar to Complainant’s registered and distinctive AMERICA
ONLINE family of marks under Policy ¶ 4(a)(i).
Rights or Legitimate Interests
The burden of proving a lack of rights or
legitimate interests in a domain name rests initially upon a complainant. Under Policy ¶¶ 4(c)(i)-(iii), a respondent
can rely on a “bona fide offering of goods or services” connected with the
disputed domain
name, the fact that it has been “commonly known by the domain
name,” or that it is making a “legitimate noncommercial or fair use
of the
domain name” to demonstrate a right or legitimate interest in a domain name. If a complainant rebuts each of these
elements, it has satisfied its burden by successfully addressing any of the
specified claims
a respondent could make under Policy ¶¶ 4(c)(i)-(iii), thereby
shifting the burden to the respondent. See
G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002)
(holding where a Complainant has asserted that Respondent has no rights or
legitimate interests
in respect of the domain name it is incumbent on
Respondent to come forward with concrete evidence rebutting this assertion
because
this information is “uniquely within the knowledge and control of the
respondent”); see also 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).
Respondent’s
failure to respond to the Complaint is evidence of a lack of legitimate rights
and interests in the <america-online-casino.com> domain
name. See Clerical Med. Inv.
Group Ltd. v. Clericalmedical.com,
D2000-1228 (WIPO Nov. 28, 2000) (finding that under certain circumstances the
mere assertion by Complainant that Respondent has
no right or legitimate
interest is sufficient to shift the burden of proof to Respondent to
demonstrate that such a right or legitimate
interest does exist); 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).
Respondent uses the infringing domain
name to operate an online casino.
Respondent’s home page includes Complainant’s distinctive script
lettering and TRIANGLE LOGO mark in connection with its gambling
services. In registering an infringing domain name
that is confusingly similar with Complainant’s mark in order to operate a
casino purporting
to be linked with Complainant, to earn a profit, Respondent
is not making a bona fide offering of goods or services, or legitimate
noncommercial or fair use of the domain name under Policy ¶¶ 4(c)(i) and
(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 Caterpillar Inc. v. Quin, D2000-0314
(WIPO June 12, 2000) (finding that Respondent does not have a legitimate
interest in using the domain names <caterpillarparts.com>
and
<caterpillarspares.com> to suggest a connection or relationship, which
does not exist, with Complainant's mark CATERPILLAR);
see also Kosmea Pty Ltd. v. Krpan, D2000-0948
(WIPO Oct. 3, 2000) (finding no rights in the domain name where Respondent has
an intention to divert consumers of Complainant’s
products to Respondent’s site
by using Complainant’s mark).
Complainant has not authorized Respondent
to use its AMERICA ONLINE family of marks and Respondent’s contact information
implies that
it is “commonly known by” the name “magic place casino” and not
the name AMERICA-ONLINE-CASINO or <america-online-casino.com>.
In light of Respondent’s failure to offer any evidence that it has ever
been commonly known by the disputed domain name, the Panel
concludes that
Respondent has no rights or legitimate interests in the disputed domain name
under Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949
(Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require
a showing that one has been commonly known
by the domain name prior to
registration of the domain name to prevail").
Accordingly, the Panel finds that
Respondent does not have any rights or legitimate interests in the <america-online-casino.com> domain
name under Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Registering and using an infringing
domain name to “intentionally attempt to attract, for commercial gain, Internet
users…by creating
a likelihood of confusion…as to the source, sponsorship,
affiliation, or endorsement of…a product of service on your website,”
exemplifies
bad faith under Policy ¶ 4(b)(iv). In the present dispute,
Respondent’s <america-online-casino.com> domain name, used to operate an online
casino, fits sqaurely within this provision of the Policy. By registering a domain name that infringed
on Complainant’s mark, and using that domain name to gain commercial profit via
online
gambling, Respondent both registered and used its domain name in bad
faith. Respondent’s bad faith use is further evidenced by the
use of
Complainant’s TRIANGLE LOGO mark in conjunction with the disputed domain
name. An Internet user is exposed to
Complainant’s registered mark upon arriving at Respondent’s website, creating
the liklihood of confusion
as to sponsorship of the website by Complainant. See
Perot Sys. Corp. v. Perot.net,
FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain
name in question is obviously connected with the Complainant’s
well-known
marks, thus creating a likelihood of confusion strictly for commercial gain); see
also Drs. Foster & Smith, Inc. v.
Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where
the Respondent directed Internet users seeking the Complainant’s
site to its
own website for commercial gain); see also Encyclopaedia Britannica Inc. v. Shedon.com, D2000-0753 (WIPO Sept.
6, 2000) (finding that the Respondent violated Policy ¶ 4(b)(iv) by using the
domain name <britannnica.com>
to hyperlink to a gambling site).
Furthermore, registration of an infringing domain name
when Respondent had constructive or actual notice of Complainant’s mark prior
to registration
is also evidence of bad faith registration. In this dispute,
Respondent’s contact information included an e-mail address provided
by
Complainant. In applying for and
receiving an email address supplied by Complainant, Respondent cannot deny
knowledge of Complainant’s famous marks.
Due to this fact, the Panel infers that Respondent had full knowledge of
Complainant’s rights in its AMERICA ONLINE mark when Respondent
registered the
subject domain name. Respondent’s
registration of <america-online-casino.com>
was committed with actual knowledge
of Complaiant’s mark, and was therefore done in bad faith. See 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"); 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).
Accordingly, the Panel finds that
Respondent registered and used the <america-online-casino.com>
domain name in bad faith, and Policy ¶ 4(a)(iii) is satisfied.
DECISION
Having established all three elements
under ICANN Policy, the Panel concludes that relief shall be hereby GRANTED.
Accordingly, it is Ordered that the <america-online-casino.com> domain
name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated: December 9, 2002
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