DECISION

America Online, Inc. v. Action Now Network

Claim Number: FA0201000104131

PARTIES

Complainant is America Online, Inc., Dulles, VA (“Complainant”) represented by James R. Davis, of Arent Fox Kintner Plotkin & Kahn.  Respondent is Action Now Network, Baton Rouge, LA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <aolracing.com>, and <aolracing.net>, registered with Network Solutions, Inc.

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 January 30, 2002; the Forum received a hard copy of the Complaint on February 4, 2002.

On February 1, 2002, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain names <aolracing.com> and <aolracing.net> are registered with Network Solutions, Inc. and that Respondent is the current registrant of the names.  Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 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 February 6, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 26, 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@aolracing.com and postmaster@aolracing.net 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 March 11, 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 the Respondent to the Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Respondent’s <aolracing.com> and <aolracing.net> domain names are confusingly similar to Complainant’s AOL trademark.

Respondent has no rights and legitimate interests in the disputed domain names.

Respondent has regsitered and used the disputed domain names in bad faith.

B. Respondent

No Response was submitted.

FINDINGS

Complainant owns numerous trademarks incorporating the AOL mark, including the U.S. trademark registration for AOL (Reg. No. 1,977,731) registered on June 4, 1996.  The mark AOL is used extensively at its <aol.com> website, which is a significant way to promote Complainant’s services.  Consequently, consumers associate the AOL mark, when used in a domain name, with Complainant’s services.

Complainant first began use of the AOL mark as early as 1989, and began using its AOL.COM mark in 1992 in connection with its computer and Internet-related online services.  As a result of its aggressive and costly advertising, Complainant currently services over thirty million subscribers. In addition to its own computer services, Complainant has used its name in association with NASCAR.  Respondent has registered the disputed domain names in connection with automobile racing sponsorships.

Respondent registered the disputed domain names on March 20, 2000, well after Complainant registered its AOL mark in 1996.  After Respondent registered the disputed domain names, it offered to enter a business deal with Complainant.  Complainant declined to enter the business deal and expressed its concern about Respondent’s unauthorized use of the names. 

Respondent then indicated that it would not transfer the disputed domain names without “consideration and compensation.”  After Complainant refused to pay, Respondent contacted Complainant again and offered to sell the disputed domain names for $15,000, while hinting that it had other interested parties that would purchase the domain names if Complainant did not oblige.  When Complainant refused, Respondent did not develop the disputed domain names, but idly held them for two years.    

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

Complainant has rights to the AOL mark due to its federal registration and use of the trademark in commerce since 1989.

Respondent’s <aolracing.com> and <aolracing.net> domain names are confusingly similar to Complainant’s AOL trademark because they incorporate Complainant’s AOL mark in its entirety and merely add a top-level domain name and the generic term “racing,” which, due to Complainant’s association with NASCAR, is likely to cause confusion.  See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word…nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY”); see also Blue Sky Software Corp. v. Digital Sierra Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the domain name ROBOHELP.COM is identical to complainant’s registered ROBOHELP trademark, and that the "addition of .com is not a distinguishing difference"); 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).

 

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

Rights or Legitimate Interests

Because Respondent has failed to answer this Complaint, it is presumed not to have any rights or legitimate interests in the disputed domain names.  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 attempt to sell the disputed domain names for $15,000 to Complainant is evidence that it is not making a bona fide offering of goods pursuant to Policy ¶ 4(c)(i).  See Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests where the Respondent registered the domain name with the intention of selling the domain name).

There is no evidence that Respondent, known as Action Now Network, is commonly known by AOL or the disputed domain names pursuant to Policy ¶ 4(c)(ii).  In fact, it can be inferred that Respondent is not commonly known by the AOL name, or confusingly similar names, because Complainant’s AOL mark is so well known.  See Victoria’s Secret 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); 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).

Respondent does not have rights or legitimate interests pursuant to Policy ¶ 4(c)(iii) because its use of the confusingly similar domain names to suggest a false affiliation and association with Complainant is not a legitimate or fair use.  See 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 the Complainant's mark CATERPILLAR).

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

Registration and Use in Bad Faith

Respondent’s attempt to sell the disputed domain names for an excessive profit is evidence of bad faith pursuant to Policy ¶ 4(b)(i).  See America Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where Respondent offered domain names for sale); see also Little Six, Inc v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding Respondent's offer to sell the domain name at issue to Complainant was evidence of bad faith); see also World Wrestling Fed’n Entmt., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000) (finding that Respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out of pocket costs).  Moreover, Respondent’s passive holding of the disputed domain names for two years after Complainant rejected its offer to sell them indicates Respondent’s bad faith.  See Educational Testing Serv. v. TOEFL, D2000-0044 (WIPO Mar. 16, 2000) (finding that a general offer of sale combined with no legitimate use of the domain name constitutes registration and use in 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 names <aolracing.com> and <aolracing.net> be transferred from Respondent to Complainant.

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

Dated: March 15, 2002

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