DECISION

America Online Inc v. Kenny Anderson

Claim Number: FA0112000103365

PARTIES

Complainant is America Online, Inc., Dulles, VA (“Complainant”), of America Online, Inc..  Respondent is Kenny Anderson, West Babylon, NY (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <aolcollections.com>, registered with NamesDirect.com.

PANEL

On February 4, 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 December 21, 2001; the Forum received a hard copy of the Complaint on December 26, 2001.

On January 3, 2002, NamesDirect.com confirmed by e-mail to the Forum that the domain name <aolcollections.com> is registered with NamesDirect.com and that Respondent is the current registrant of the name.  NamesDirect.com has verified that Respondent is bound by the NamesDirect.com 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 January 4, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 24, 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@aolcollections.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 name be transferred from the Respondent to the Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Respondent’s domain name <aolcollections.com> is confusingly similar to Complainant’s very famous and distinctive AOL and AOL.COM marks.

Respondent has no rights or legitimate interest in <aolcollections.com>.

Based upon the fame of Complainant’s federally registered marks in connection with online services, Respondent’s prominent use of the marks in  <aolcollections.com> and in its corresponding website which references that Respondent is “a child of the computer age,” Respondent has acted in bad faith.

B. Respondent

No Response was received from Respondent.

FINDINGS

Complainant is the owner of numerous trademark registrations worldwide for the mark, AOL, including Registration Numbers 1,977,731 and 1,984,337, which were registered on June 4, 1996 and July 2, 1996, respectively.  Complainant also owns a registration on its mark AOL.COM , Registration Numbers 2,325,291 and 2,325,292, registered on March 7, 2000.

Complainant uses its marks in connection with a wide variety of computer and Internet services which includes the fields of business and finance.

Through extensive advertising and continuous use, AOL is the one of the most recognizable and famous marks used on the Internet.  Complainant has over thirty million subscribers to its interactive on-line service and each year attracts millions of new customers.

Respondent operates a collection agency, Anderson, O’Brien & Levy, Inc.  Respondent registered <aolcollections.com> on July 28, 2000.  On its website in connection with the disputed domain name, Respondent has AOL highlighted and isolated above “Collections.”  Further, the heading “AOL Collections” dwarfs “Anderson, O’Brien & Levy” and boasts that <aolcollections.com> is “a child of the computer age.”

Complainant has sent several “cease and desist” letters to Respondent.  During a conversation on April 3, 2001, Respondent informed Complainant that Anderson, O’Brien & Levy, Inc. had been in existence for several years, but that the use of the acronym AOL was a new development.  However, despite subsequent conversations between Respondent and Complainant, Respondent has not supported its use of <aolcollections.com> in connection with its website.

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

The domain name <aolcollections.com> is confusingly similar to Complainant’s marks AOL and AOL.COM.

The addition of the generic term “collections” with the Complainant’s famous marks does not diminish the confusing similarity between <aolcollections.com> and AOL and AOL.COM.  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 the Complainant combined with a generic word or term); see also America Online Inc v. Rao Tella dba Arbor Online Box, FA 101820 (Nat. Arb. Forum Nov. 13, 2001) (finding that it is possible for a consumer to be confused by <aolbox.com> and therefore, any “Internet user may be led into thinking that the <aolbox.com> website is provided or endorsed by the Complainant, AOL”); see also America Online Inc v. Pablo Barrutia, FA 94265 (Nat. Arb. Forum March 9, 2000) (finding <aolmoviefone.com> nearly identical and confusingly similar to Complainant’s established AOL mark).

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

Rights or Legitimate Interests

Complainant has established its rights in the AOL and AOL.COM marks.  Respondent has failed to file a Response in the matter.  As a result, the Panel will presume that Respondent has no rights or legitimate interests in the disputed domain name.  See 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’s use of Complainant’s famous trademarks to divert users to its own website for commercial purposes is not a bona fide offering of goods and services.  Therefore, Respondent fails to satisfy Policy ¶ 4(c)(i).  See 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); see also 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 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).

 

Although Respondent may have been known as Anderson, O’Brien & Levy, Inc., there is no evidence presented that it has been commonly known as the acronym AOL or by <aolcollections.com>.  Therefore, the Panel concludes that Respondent has failed to satisfy 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 domain name when Respondent is not known by the mark);  see also Victoria’s Secret et al v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (finding sufficient proof that Respondent was not commonly known by a domain name confusingly similar to Complainant’s VICTORIA’S SECRET mark because of Complainant’s well established use of the mark).

By using <aolcollections.com>, which incorporates Complainant’s marks, Respondent has not made a legitimate noncommercial or fair use of the domain name and fails to satisfy Policy ¶ 4 (c)(iii).  See America Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that use of Complainant’s mark “as a portal to suck surfers into a site sponsored by Respondent hardly seems legitimate”).

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

Registration and Use in Bad Faith

When Respondent registered <aolcollections.com> Respondent was aware or should have been aware that both AOL and AOL.COM were registered famous marks connected with a wide range of Internet services.  Respondent has used the domain name for its collection services and its website highlights AOL and mentions that it is “a child of the computer age.”  Therefore, Respondent’s registration and use of <aolcollections.com> is evidence that Respondent has intentionally attempted to attract for commercial gain, Internet users to its website by creating a likelihood of confusion with complainant’s marks as to the source and sponsorship of Respondent’s website and violates Policy ¶ 4(b)(iv).  See Reuters Ltd. v. Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000) (finding that the Respondent demonstrated bad faith where the Respondent was aware of the Complainant’s famous mark when registering the domain name as well as aware of the deception and confusion that would inevitably follow if he used the domain names); see also State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where the Respondent registered the domain name <bigtex.net> to infringe on the Complainant’s good will and attract Internet users to the Respondent’s website).

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 be hereby granted.

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

James P. Buchele, Panelist

  Dated: February 7, 2002

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