DECISION

America Online, Inc. v. USACOOP.COM a/k/a Bingo Giant

Claim Number: FA0203000105763

PARTIES

Complainant is America Online, Inc., Dulles, VA (“Complainant”) represented by James R. Davis, of Arent Fox.  Respondent is USACOOP.COM a/k/a Bingo Giant, Portsmouth, NH (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <aolmalls.com>, <aolmalls.net>, <aolmarketplace.com>, <aolmarketplace.net>, and <aolbingo.net>, registered with Tucows, Go Daddy Software.

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.

Hon. Ralph Yachnin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on March 6, 2002; the Forum received a hard copy of the Complaint on March 11, 2002.

On March 7, 2002, Tucows, Go Daddy Software confirmed by e-mail to the Forum that the domain names <aolmalls.com>, <aolmalls.net>, <aolmarketplace.com>, <aolmarketplace.net>, and <aolbingo.net> are registered with Tucows, Go Daddy Software and that Respondent is the current registrant of the names.  Tucows, Go Daddy Software has verified that Respondent is bound by the Tucows, Go Daddy Software 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 March 11, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 1, 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@aolmalls.com, postmaster@aolmalls.net, postmaster@aolmarketplace.com, postmaster@aolmarketplace.net, and postmaster@aolbingo.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 April 5, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Ralph Yachnin 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

The  <aolmalls.com>, <aolmalls.net>, <aolmarketplace.com>, <aolmarketplace.net>, and <aolbingo.net> domain names are confusingly similar to Complainant's AOL and AOL.COM marks.

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

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

B. Respondent

Respondent failed to submit a Response.

FINDINGS

Complainant is the owner of numerous trademark registrations worldwide for its AOL mark, including U.S. trademark registration Nos. 1,977,731 and 1,984,337.  Complainant uses its AOL mark in relation to computer services, computing and computer software, computer bulletin boards and reference materials in the fields of business, finance, news, weather, sports, computing and computer software, games, music, theater, movies, travel, education, lifestyles, hobbies and topics of general interest, computerized dating services, computerized shopping via telephone and computer terminals and telecommunication services including email, and facsimile transmission.

Complainant uses its AOL.COM mark as a domain name for its website.  Complainant’s mark is famous and it has used its mark extensively and continuously in interstate and international commerce in connection with the advertising and sale of its Internet and computer-related services.  Complainant has invested substantial sums of money in developing and marketing its services and marks.  As a result, Complainant’s mark distinguishes Complainant as one of the most readily recognized and famous companies on the Internet.  Complainant has over 30 million subscribers and operates one of the most widely used interactive online services in the world.

Respondent registered the disputed domain names on April 14, 2001.  Respondent is using the domain names in a way that can confuse Internet users.  Respondent makes references to “Americans On Line Bingo” and “Americans On Line Malls” on its commercial website located at the domain names.  Furthermore, the services offered at Respondent’s website have been offered by Complainant’s service for many years before Respondent began to operate 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

Complainant, through registration, and continuous use has established that it has rights in the AOL and AOL.COM marks.  Furthermore, Respondent’s domain names <aolmalls.com>, <aolmalls.net>, <aolmarketplace.com>, <aolmarketplace.net>, and <aolbingo.net> are confusingly similar to Complainant’s marks because they incorporate the entirety of Complainant’s marks and merely add generic terms to Complainant’s AOL and AOL.COM marks.  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 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” and thus Policy ¶ 4(a)(i) is satisfied).

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

Rights or Legitimate Interests

Respondent has failed to come forward with a Response and therefore it is presumed that Respondent has no 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).

Furthermore, when Respondent fails to submit a Response the Panel is permitted to make all inferences in favor of Complainant.  See Talk City, Inc. v. Robertson, D2000-0009, (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”).

Respondent is using confusingly similar domain names in order to offer services that are similar to Complainant’s services.  Respondent is also using slogans such as “Americans On Line Bingo” on its websites creating a likelihood of confusion as the source, sponsorship and affiliation of the disputed domain names.  This type of use is not considered to be a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(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 State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000) (finding that “unauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services”); 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).

Respondent, known to this Panel as USACOOP.COM a/k/a Bingo Giant, has not come forward with any evidence that it is commonly known as <aolmalls.com>, <aolmalls.net>, <aolmarketplace.com>, <aolmarketplace.net>, or <aolbingo.net> and therefore Respondent has not established that it has 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 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).

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

Registration and Use in Bad Faith

Respondent has engaged in a pattern of registering infringing domain names by registering <aolmalls.com>, <aolmalls.net>, <aolmarketplace.com>, <aolmarketplace.net>, and <aolbingo.net>.  Engaging in pattern of registering infringing domain names is evidence of bad faith pursuant to Policy ¶ 4(b)(ii).  See Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)); see also YAHOO! Inc. v. Syrynx, Inc. & Hamilton, D2000-1675 (WIPO Jan. 30, 2001) (finding a bad faith pattern pursuant to Policy ¶ 4(b)(ii) in Respondent's registration of two domain names incorporating Complainant's YAHOO! mark).

Based on the famous nature of Complainant’s AOL and AOL.COM marks it can be inferred that Respondent was on notice as to the existence of Complainant’s marks when it registered the infringing domain names.  Therefore, Respondent’s registration of the infringing domain names despite this notice is evidence of 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).

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 <aolmalls.com>, <aolmalls.net>, <aolmarketplace.com>, <aolmarketplace.net>, and <aolbingo.net> be transferred from Respondent to Complainant.

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

Dated: April 10, 2002

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2002/537.html