DECISION

America Online, Inc. v. Oxford University

Claim Number: FA0201000104132

PARTIES

Complainant is America Online, Inc., Dulles, VA (“Complainant”) represented by James R. Davis, II, of Arent, Fox, Kintner, Plotkin & Kahn.  Respondent is Oxford University, Piggabeen, AUSTRALIA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <aol7.net>, <aol7.org>, <aol-7.net>, <aol-7.org>, <aol-seven.com> and <aolseven.com>, registered with I Holdings.com dba Dotregistrar.com.

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits 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 4, 2002, I Holdings.com dba Dotregistrar.com confirmed by e-mail to the Forum that the domain names <aol7.net>, <aol7.org>, <aol-7.net>, <aol-7.org>, <aol-seven.com> and <aolseven.com> are registered with I Holdings.com dba Dotregistrar.com and that Respondent is the current registrant of the names.  I Holdings.com dba Dotregistrar.com has verified that Respondent is bound by the I Holdings.com dba Dotregistrar.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 February 4, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 25, 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@aol7.net, postmaster@aol7.org, postmaster@aol-7.net, postmaster@aol-7.org, postmaster@aol-seven.com, and postmaster@aolseven.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 March 5, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson 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 Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant makes the following allegations:

Complainant has rights to the America Online and AOL marks. Respondent’s <aol7.net>, <aol7.org>, <aol-7.net>, <aol-7.org>, <aol-seven.com> and <aolseven.com> domain names are confusingly similar to Complainant’s AOL mark.

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

Respondent registered and used the disputed domain names in bad faith.

B. Respondent did not file a formal Response in this proceeding.

FINDINGS

Complainant has numerous registrations of the AOL mark with the United States Patent and Trademark Office including Registration Numbers 1,977,731 and 1,984,337, approved July 4, 1996 and July 2, 1996, respectively.  Moreover, it has two Australian trademarks (Reg. Nos. 655,189 and 662,466) for AOL, registered on March 8, 1995 and May 29, 1995 respectively. 

Complainant relies heavily on its <aol.com> domain name to advertise and promote its products and services.  With more than thirty million subscribers, AOL operates a very popular online service site.  As a result, consumers associate the use of AOL in a domain name with Complainant’s services. 

As early as 1989 Complainant began using its mark in connection with computer on-line services and other Internet-related services.  As Complainant updates its software products, it numbers them sequentially; for example, AOL version 5 is followed by AOL version 6.  Complainant is currently distributing AOL version 7.

Respondent registered the <aol7.net>, <aol7.org>, <aol-7.net>, <aol-7.org>, <aol-seven.com>, and <aolseven.com> domain names on December 10, 2001.  According to the Whois records, Respondent used the name “Domains for Sale” as its registrant name.  Respondent subsequently offered to sell the disputed domain names to Complainant and used the domain names to link to a site called <domain-man.com> which invites visitors to “purchase or franchise this domain.”  Finally, Respondent has a history of registering infringing domain names.  According to Complainant, Respondent was labeled a “cybersquatter” for registering the following infringing domain names: <harveynorman.net>, <texas-instruments.com>, and <university-of-oxford.com>. 

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 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 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 to and/or Confusingly Similar

Complainant has established rights in its AOL mark through its continuous use of the AOL mark as well as its numerous registrations of the AOL mark with the United States Patent and Trademark Office.  The disputed domain names are confusingly similar to Complainant’s AOL mark because they all incorporate Complainant’s mark in its entirety, merely adding a generic top-level domain name, the generic word “seven” or “7”, and a hyphen in three of the disputed domains.  The addition of the top-level domain name, the hyphen and the generic word “seven” or “7” do not create a domain name that is distinguishable from 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 the Complainant combined with a generic word or term); see also Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Chernow Communications Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark").

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

Rights to or Legitimate Interests

Complainant has established in this proceeding that it has rights to and interests in the mark and disputed domain names that contain Complainant’s mark.  Because Respondent did not submit a formal Response, the Panel may find that Respondent does not have 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 use of the confusingly similar disputed domain names to siphon Internet users into a website sponsored by Respondent is not a bona fide offering of goods pursuant to Policy ¶ 4(c)(i).  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”).

Moreover, Respondent, calling itself “Oxford University” and “Domain for Sale,” is not commonly known as AOL or <aol7.net>, <aol7.org>, <aol-7.net>, <aol-7.org>, <aol-seven.com> and <aolseven.com>.  As a result, Respondent has no rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c)(ii).  See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name); 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).

Finally, Respondent’s use of Complainant’s AOL mark to divert Internet users to Respondent’s unconnected website indicates that Respondent is not using the disputed domain names for a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See AltaVista v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding that use of the domain name to direct users to other unconnected websites does not constitute a legitimate interest in the domain name); 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).

 

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

Registration and Use in Bad Faith

Complainant alleges that Respondent registered and used the disputed domain names in bad faith.  Respondent has used the domain names to advertise and promote its own domain name services by luring Internet users into falsely believing that Respondent’s website is affiliated with Complainant’s famous AOL mark. This permits the finding of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See 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 goodwill and attract Internet users to the Respondent’s website).

Moreover, because Complainant’s AOL mark is known worldwide, Respondent’s registration and use of such a famous mark cannot be considered in good faith.  See Northwest Airlines, Inc. v. Koch, FA 95688 (Nat. Arb. Forum Oct. 27, 2000) (“the selection of a domain name [northwest-airlines.com] which entirely incorporates the name of the world’s fourth largest airline could not have been done in good faith”); see also Singapore Airlines Ltd v. P & P Servicios de Communicacion S.L., D2000-0643 (WIPO Aug. 29, 2000) (“The domain name ‘singaporeairlines.com’ is so obviously connected with a well-known airline that its very registration and use by someone with no connection to the airline suggests opportunistic bad faith.  Indeed, it is hard to imagine a more blatant exercise in ‘cybersquatting.’”).

Respondent’s use of the name “Domains for Sale” as its registrant name and Respondent’s offer to sell the domain name to Complainant, permit the inference that Respondent registered the disputed domain names primarily for the purpose of selling them. This indicates bad faith under Policy ¶ 4(b)(i).  See 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 Euromarket Designs, Inc. v. Domain For Sale VMI, D2000-1195 (WIPO Oct. 26, 2000) (finding “the manner in which the Respondent chose to identify itself and its administrative and billing contacts both conceals its identity and unmistakably conveys its intention, from the date of the registration, to sell rather than make any use of the disputed domain name”).

Finally, Respondent’s history of registering and using infringing domain names indicates that the registration of the multiple domain names incorporating Complainant’s trademark in this case is evidence of bad faith pursuant to Policy ¶ 4(b)(ii).  See Armstrong Holdings, Inc. v. JAZ Assoc., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the Respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names which infringe upon others’ famous and registered trademarks); see also Nabisco Brands Co. v. Patron Group, D2000-0032 (WIPO Feb. 23, 2000) (holding that registration of numerous domain names is one factor in determining 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 <aol7.net>, <aol7.org>, <aol-7.net>, <aol-7.org>, <aol-seven.com> and <aolseven.com> domain names be transferred from Respondent to Complainant.

Hon. Carolyn Marks Johnson, Panelist

Dated: March 19, 2002.

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