DECISION

America Online, Inc. v. Nebojsa Prijic

Claim Number: FA0205000112639

PARTIES

Complainant is America Online, Inc., Dulles, VA (“Complainant”) represented by James R. Davis, II, of Arent, Fox, Kintner, Plotkin & Kahn.  Respondent is Nebojsa Prijic, Splite, CROATIA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <theamericaonline.com>, registered with BulkRegister.com, Inc.

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 May 3, 2002; the Forum received a hard copy of the Complaint on May 6, 2002.

On May 6, 2002, BulkRegister.com, Inc. confirmed by e-mail to the Forum that the domain name <theamericaonline.com> is registered with BulkRegister.com, Inc. and that Respondent is the current registrant of the name.  BulkRegister.com, Inc. has verified that Respondent is bound by the BulkRegister.com, 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 May 6, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 28, 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@theamericaonline.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 June 13, 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 name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant makes the following allegations in this proceeding:

The disputed domain name <theamericaonline.com> is confusingly similar to AMERICA ONLINE, a registered mark in which Complainant holds rights.

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

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

B. Respondent did not submit a Response.

FINDINGS

Complainant operates the most widely used interactive online service in the world under the AMERICA ONLINE and AOL marks, with over thirty-four million service subscribers.  The AMERICA ONLINE mark has been and continues to be highly publicized throughout the U.S. and the world through substantial advertising efforts and the expenditure of millions of dollars.

Complainant registered the AMERICA ONLINE mark on the Principal Register of the United States Patent and Trademark Office (“USPTO”) by Complainant’s predecessor-in-interest on October 16, 1990 as Registration No. 1,618,148.  Complainant also holds registration of the <americaonline.com> domain name, which it uses to provide services to its subscribers as well as information to the general public.

Respondent registered the <theamericaonline.com> domain name on March 8, 2000, and has since used the domain name to provide a “portal” website with links to other various websites.  Respondent’s portal site is much like the sort of service Complainant provides at its website.

Prior to bringing its Complaint with the Forum, Complainant contacted Respondent via e-mail to defend its trademark rights with respect to the disputed domain name.  Complainant offered to reimburse Respondent for its out-of-pocket costs directly related to the domain name, which it calculated to be $36, in exchange for transfer of the name.  Respondent insisted that its out-of-pocket costs were nearer to $500, referring specifically to web hosting expenses and its hourly salary.

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 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 established in this proceeding that it has rights in the AMERICA ONLINE mark through registration with the USPTO and by continuous subsequent use.

The disputed domain name is confusingly similar to Complainant’s mark as it merely adds the generic word “the” to the mark and the top-level domain “.com.”  The addition of a generic word to Complainant’s mark does not defeat the overall impression of the 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 Complainant combined with a generic word or term).  Further, the top-level domain does not distinguish the domain name from the mark.  See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).

Policy ¶ 4(a)(i) has been satisfied.

Rights to or Legitimate Interests

Complainant has established in this proceeding that it has rights to and legitimate interests in the AMERICA ONLINE mark.  Because Respondent has not submitted a Response in this matter, the Panel may presume Respondent has no such rights or interests in the disputed domain name.  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 is hosting a portal website at the disputed domain name, much like a website Complainant would offer at its domain name.  In so doing, Respondent has intentionally tried to create confusion among Internet users or at least take advantage of the confusion that would inevitably follow.  Respondent’s conduct does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D.Mass 2002) (finding that, because the Respondent's sole purpose in selecting the domain names was to cause confusion with the Complainant's website and marks, it's use of the names was not in connection with the offering of goods or services or any other fair use); see also Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name).

No evidence in this proceeding suggests that Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii); Respondent is known to this Panel only as Nebojsa Prijic.  See Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., 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); 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).

Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Paragraph 4(b)(i) of the Policy explains that registering a domain name “primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark . . . for valuable consideration in excess of [Respondent’s] documented out-of-pocket costs directly related to the domain name” shall be evidence of the registration and use of a domain name in bad faith.  Policy ¶ 4(b)(i), emphasis added.

In the instant case, Respondent offered to transfer the domain name to Complainant for reimbursement of its purported out-of-pocket costs.  Complainant offered to pay for all of the expenses directly related to the domain name (i.e. the registration and renewal fees), but Respondent refused, demanding reimbursement of expenses related to its website creation and hosting.  Paragraph 4(b)(i) makes clear that the attempted sale of a domain name for an amount of money in excess of out-of-pocket expenses directly related to the domain name shall be evidence of bad faith.  Such is the case here.  See Booz-Allen & Hamilton Inc. v. Servability Ltd, D2001-0243 (WIPO Apr. 5, 2001) (finding bad faith where Respondent, a domain name dealer, rejected Complainant’s nominal offer of the domain in lieu of greater consideration); see also CBS Broadcasting Inc. v. Worldwide Webs, Inc., D2000-0834 (WIPO Sept. 4, 2000) (“[T]he fact that domain name registrants may legitimately and in good faith sell domain names does not imply a right in such registrants to sell domain names that are identical or confusingly similar to trademarks or service marks of others without their consent”).

Respondent conditioned the transfer of the disputed domain name upon Complainant’s reimbursing Respondent for costs associated with the creation and development of its website.  The website, however, must be distinguished from the domain name in this context.  The term “website” encompasses content that is hosted online.  The domain name is the address used to locate that content.  Paragraph 4(b)(i) of the Policy specifically refers to the domain name, not the website.  This is not to say that website content is irrelevant under different provisions of the Policy or in other circumstances, but in determining whether Respondent has sought consideration in excess of its out-of-pocket costs, the Policy makes clear that only costs related to the domain name are to be considered, and not those related to the creation or maintenance of the connected website.

Respondent will still be able to reap the benefits of the time and money it may have invested while holding registration of the disputed domain name; it will simply have to host the material at a domain name that does not infringe upon another party’s rights.

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 <theamericaonline.com> domain name be transferred from Respondent to Complainant.

Hon. Carolyn Marks Johnson, Panelist

Dated: June 27, 2002.

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