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Generic Top Level Domain Name (gTLD) Decisions |
America Online, Inc. v. TouchTone
Pictures, LLC
Claim Number: FA0203000105776
PARTIES
Complainant
is America Online, Inc., Dulles, VA
(“Complainant”) represented by James R.
Davis, of Arent Fox Kintner Plotkin
& Kahn. Respondent is TouchTone Pictures, LLC, Wilmington,
DE (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <aolparty.net>,
registered with Tucows.
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.
James
A. Carmody, Esq., as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on March 11, 2002; the Forum received
a hard copy of the
Complaint on March 11, 2002.
On
March 11, 2002, Tucows confirmed by e-mail to the Forum that the domain name <aolparty.net> is registered with
Tucows and that Respondent is the current registrant of the name. Tucows has verified that Respondent is bound
by the Tucows 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 12, 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@aolparty.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 8, 2002, pursuant to Complainant’s request to have the dispute decided by
a single-member Panel, the Forum appointed James
A. Carmody, Esq., 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
1. Since the disputed domain name uses
Complainant’s famous mark in its entirety and merely adds the generic term
“party,” the disputed
domain name is nearly identical and confusingly similar
to Complainant’s famous AOL mark.
2.
Respondent is not commonly known as <aolparty.net> and is not licensed to use the famous AOL
mark and Respondent has no rights or legitimate interests in the disputed
domain name.
3. The fame attained by the AOL mark prior to
Respondent’s registration of <aolparty.net> creates a
reasonable inference that Respondent had knowledge of Complainant’s famous mark
and, thus, Respondent has registered the
disputed domain name in bad
faith. Based on the adult goods and
services Respondent provides on the website connected with the disputed domain
name and on the fact that
Respondent has answered to Complainant’s cease and
desist requests, Respondent is determined to have used the disputed domain name
in bad faith.
B.
Respondent
No
Response was submitted
FINDINGS
Complainant is the owner of numerous
trademark registrations worldwide incorporating the AOL mark, including: AOL,
registered on June
4, 1996, Registration No. 1,977,731; and AOL.COM, registered
on March 7, 2000, Registration No. 2,325,291.
Complainant uses its AOL family of marks in connection with computer
services, such as leasing access time to computer databases,
computer bulletin
boards, computer networks, and computerized research and reference materials,
in the field 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; computer consultation services; computerized shopping via telephone
and
computer terminals in the field of computer goods and services.
Complainant has invested substantially in
advertising and promoting its mark throughout the United States and the world,
and as a
result, Complainant’s sales have risen into the billions of dollars
while the AOL mark has become famous and distinctive.
Respondent registered <aolparty.net> on February 1, 2001 and has used the
domain name in connection with a website that offers pornographic goods and
services. Respondent’s website makes
prominent use of Complainant’s AOL mark.
The first page of the site welcomes the Internet user to an
“AOL/Internet Party!”
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 established its rights in
the AOL mark through trademark registration and continuous use. The disputed domain name is confusingly
similar to Complainant’s mark. The only
difference between the disputed domain name <aolparty.net> and Complainant’s mark is the addition of “party.” A domain name that incorporates a famous
mark and adds a generic term does not distinguish the disputed domain name from
the famous
mark. Therefore, the Panel
finds that <aolparty.net> is confusingly similar to AOL. 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 Am. Online, Inc. v.
iDomainNames.com, FA 93766 (Nat. Arb. Forum Mar. 24, 2000) (finding that
Respondent’s domain name <go2AOL.com> was confusingly similar to
Complainant’s
AOL mark).
The Panel finds that Policy ¶ 4(a)(i) has
been satisfied.
Rights or Legitimate Interests
Respondent has not filed a Response in
this matter. Therefore, the Panel can
conclude that Respondent has no rights or legitimate interests in <aolparty.net>. 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).
Therefore, the Panel may assume that all of the allegations made in the
Complaint are true. 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”); see also Desotec N.V. v. Jacobi Carbons AB,
D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a
presumption that Complainant’s allegations are true unless
clearly contradicted
by the evidence).
Respondent uses a domain name that is
confusingly similar to Complainant’s famous mark in connection with a website
that offers pornographic
goods and services.
Such activity does not demonstrate a use in connection with a bona fide
offering of goods and services as pursuant to Policy ¶ 4(c)(i). See MatchNet plc v. MAC Trading, D2000-0205 (WIPO May 11, 2000)
(finding that it is not a bona fide offering of goods or services to use a
domain name for commercial
gain by attracting Internet users to third party
sites offering sexually explicit and pornographic material, where such use is
calculated
to mislead consumers and tarnish the Complainant’s mark).
Given the fame attained by Complainant’s
AOL mark, the Panel holds that it would be difficult to imagine anyone, other
than Complainant,
commonly known as <aolparty.net>. Therefore, Respondent has failed to satisfy
Policy ¶ 4(c)(ii). 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 Nike, Inc. v. B. B. de Boer, D2000-1397
(WIPO Dec. 21, 2000) (finding that no person besides Complainant could claim a
right or a legitimate interest with respect
to the domain name
<nike-shoes.com>).
Because of the confusingly similar nature
of <aolparty.net>, the Panel may presume that Respondent’s
intention is to divert users of Complainant’s services to its own commercial
website. Because this is not evidence
of a legitimate, noncommercial, or fair use, Respondent has failed to satisfy
Policy ¶ 4(c)(iii). See 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
Because Complainant’s AOL mark was
already considered famous before Respondent registered the disputed domain
name, the Panel can
infer that Respondent knew that the disputed domain name
was confusingly similar to Complainant’s famous mark. Therefore, Respondent has registered the disputed domain name in
bad faith. See Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000)
(finding that Respondent had actual and constructive knowledge of Complainant’s
EXXON mark given
the world-wide prominence of the mark and thus Respondent
registered the domain name in bad faith); see also Victoria's Secret v. Hardin, FA 96694
(Nat Arb. Forum Mar. 31, 2001) (finding that, in light of the notoriety of
Complainants' famous marks, Respondent had actual
or constructive knowledge of
the BODY BY VICTORIA marks at the time she registered the disputed domain name
and such knowledge constituted
bad faith).
Respondent has used the disputed domain
name to route users to a commercial website which welcomes the Internet user to
an “AOL/Internet
Party!” and offers pornographic goods and services. Such use is evidence that Respondent has
used the disputed domain name in bad faith as pursuant to Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum
Mar. 21, 2000) (finding bad faith where Respondent registered and used an
infringing domain name to attract
users to a website sponsored by Respondent); see
also Land O' Lakes Inc. v. Offbeat Media Inc., FA 96451 (Nat. Arb. Forum Feb. 23, 2001) (finding bad faith under
Policy ¶ 4(b)(iv) where Respondent utilized a domain name confusingly
similar
to the Complainant’s mark and used a confusingly similar pornographic depiction
of the Complainant’s registered trademark
on its web site to cause confusion as
to the source or affiliation of the site)
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 <aolparty.net> be transferred from Respondent to
Complainant.
James A. Carmody, Esq., Panelist
Dated: April 11, 2002
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