DECISION

America Online, Inc. v. Steven Brom

Claim Number: FA0203000105855

PARTIES

Complainant is America Online, Inc., Dulles, VA (“Complainant”) represented by James R. Davis, of Arent Fox Kintner Plotkin & Kahn.  Respondent is Steven Brom, Brooklyn, NY (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <aollovers.com> and <sexyonaol.com>, registered with Enom, 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.

James A. Crary as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on March 12, 2002; the Forum received a hard copy of the Complaint on March 15, 2002.

On March 18, 2002, Enom, Inc. confirmed by e-mail to the Forum that the domain names <aollovers.com> and <sexyonaol.com> are registered with Enom, Inc. and that Respondent is the current registrant of the names.  Enom, Inc. has verified that Respondent is bound by the Enom, 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 March 19, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 8, 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@aollovers.com and postmaster@sexyonaol.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 April 8, 2002 pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James A. Crary 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 disputed domain names <aollovers.com> and <sexyonaol.com> are confusingly similar to AOL and AOL.COM, registered marks in which Complainant holds rights.

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

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

B. Respondent

Respondent did not submit a Response in this proceeding.

FINDINGS

Complainant is the owner of numerous trademark registrations worldwide for the mark AOL, including U.S. trademark registration numbers 1,977,731 and 1,984,337, registered on the Principal Register on June 4, 1996 and July 2, 1996 respectively.  Complainant also holds registration of the trademark AOL.COM.  Complainant has used these marks (the “AOL marks”) in connection with computer services, computer bulletin boards, computer networks, computerized research and reference materials, and other telecommunications services.

Complainant has invested millions of dollars to promote the AOL marks and boasts that over 30 million users subscribe to its services.  Due to the substantial promotion of its marks and large global customer base, the AOL marks have become famous worldwide.

Respondent registered the disputed domain names on December 31, 2001, and has used the domain names to display pornographic pictures and to redirect Internet users to commercial pornographic websites.

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 demonstrated its rights in the AOL marks through registration with the United States Patent and Trademark Office and continuous subsequent use.  The disputed domain names are confusingly similar to Complainant’s marks as they merely add generic terms to the distinct 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 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 dominant feature of the disputed domain names is AOL, which reflects Complainant’s marks.  See Am. Online, Inc. v. Tella, FA 101820 (Nat. Arb. Forum Dec. 28, 2001) (finding that “the acronym ‘AOL’ has acquired, for the public, a distinctive meaning, which points . . . to Complainant's business and services”).

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Complainant has established its rights and interests in the AOL marks.  Because the Respondent has not submitted a Response in this matter, the Panel may presume that it has no such rights or legitimate interests.  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 infringing domain names to host and advertise pornographic material cannot be deemed a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  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); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that infringing on another's well-known mark to provide a link to a pornographic site is not a legitimate or fair use).

Further, there is no evidence Respondent is commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii); Respondent is only known to this Panel as Steven Brom.  See 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); see also Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc. & D3M Domain Sales, AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the Panel and Respondent did not come forward to suggest any right or interest it may have possessed).

The Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain names and, thus, Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent has registered and used the disputed domain names for profit by taking advantage of the fame and notoriety of Complainant’s marks.  In so doing, Respondent has caused Internet user confusion as to the affiliation or sponsorship of its websites and tarnished Complainant’s reputation and goodwill.  Such behavior demonstrates 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 Respondent registered the domain name <bigtex.net> to infringe on Complainant’s goodwill and attract Internet users to Respondent’s website); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding bad faith where the Respondent linked the domain name in question to websites displaying banner advertisements and pornographic material).

Additionally, Respondent’s registration and use of two infringing domain names demonstrates a pattern of behavior calculated to disrupt Complainant’s business and potentially prevent it from registering domain names that reflect its marks.  See 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).

Accordingly, 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 should be hereby granted.

Accordingly, it is Ordered that the <aollovers.com> and <sexyonaol.com> domain names be transferred from Respondent to Complainant.

James A. Crary, Panelist

Dated: April 18, 2002

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