DECISION

America Online, Inc. v. Gary Clowers, Sr.

Claim Number: FA0310000199821

PARTIES

Complainant is America Online, Inc., Dulles, VA (“Complainant”) represented by James R. Davis of Arent Fox Kintner Plotkin & Kahn, PLLC, 1050 Connecticut Avenue NW, Washington DC 20036. Respondent is Gary Clowers, 3185 Terrace Court, Apt. Q, Norcross, GA 30092 (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <compuserverefundrecovery.com> registered with Domaindiscover.

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.

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on October 3, 2003; the Forum received a hard copy of the Complaint on October 9, 2003.

On October 10, 2003, Domaindiscover confirmed by e-mail to the Forum that the domain name <compuserverefundrecovery.com> is registered with Domaindiscover and that Respondent is the current registrant of the name. Domaindiscover has verified that Respondent is bound by the Domaindiscover 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 October 13, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 3, 2003 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@compuserverefundrecovery.com by e-mail.

Having received no formal 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 November 10, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 assertions:

1. Respondent’s <compuserverefundrecovery.com> domain name is confusingly similar to Complainant’s COMPUSERVE mark.

2. Respondent does not have any rights or legitimate interests in the <compuserverefundrecovery.com> domain name.

3. Respondent registered and used the <compuserverefundrecovery.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant has provided evidence of a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the COMPUSERVE mark (Reg. No. 1,654,785 registered on August 27, 1991) in relation to, inter alia, computer software and services. Complainant uses the mark to provide a number of services, including assistance to consumers that have purchased products and had problems with shipping or delivery.

Respondent registered the <compuserverefundrecovery.com> domain name on April 30, 2003. Respondent used the disputed domain name to divert Internet traffic to its website, which assists consumers who have paid a shipping fee for packages not timely delivered. Respondent offered to sell the <compuserverefundrecovery.com> domain name to Complainant for $2,300.  Respondent has subsequently said that he has stopped using the domain name for anything.

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 and/or Confusingly Similar

Complainant has demonstrated that it has rights in the COMPUSERVE mark through registration with the USPTO. See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning”).

Complainant argues that Respondent’s <compuserverefundrecovery.com> domain name is confusingly similar to Complainant’s COMPUSERVE mark because the disputed domain name appropriates the entire mark and simply adds the generic or descriptive terms “refund” and “recovery” as a suffix of the mark. The addition of these generic or descriptive terms does not serve to distinguish sufficiently the domain name from the mark pursuant to Policy ¶ 4(a)(i) because Complainant’s COMPUSERVE mark remains the dominant element of the domain name. See AXA China Region Ltd. v. KANNET Ltd., D2000-1377 (WIPO Nov. 29, 2000) (finding that common geographic qualifiers or generic nouns can rarely be relied upon to differentiate the mark if the other elements of the domain name comprise a mark or marks in which another party has rights); see also 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).

Accordingly, the Panel concludes that Complainant has established Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent has failed to come forward and challenge the allegations in the Complaint. Thus, the Panel accepts all of Complainant’s reasonable allegations and inferences to be true. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true); 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).

Furthermore, based on Respondent’s failure to respond to the Complaint, the Panel is permitted to presume Respondent lacks any rights to or legitimate interests in the disputed domain name with regard to Policy ¶ 4(a)(ii). See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response, Respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name); see also 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).

Respondent is using the <compuserverefundrecovery.com> domain name to divert Internet traffic to its website, which assists consumers who have paid a shipping fee for packages not timely delivered. Respondent’s use of the disputed domain name represents neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) because Respondent is using a domain name confusingly similar to Complainant’s mark to divert Internet users to Respondent’s unauthorized, commercial website. See Disney Enterss, Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that Respondent’s diversionary use of Complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names); see also U.S. Franchise Sys., Inc. v. Howell, FA 152457 (Nat. Arb. Forum May 6, 2003) (holding that Respondent’s use of Complainant’s mark and the goodwill surrounding that mark as a means of attracting Internet users to an unrelated business was not a bona fide offering of goods or services).

Moreover, Respondent has proffered no evidence and there is no suggestion in the record that Respondent is commonly known by COMPUSERVE REFUND RECOVERY or <compuserverefundrecovery.com>. Accordingly, the Panel finds that Respondent has failed to demonstrate any rights to or legitimate interests in the disputed domain name for purposes of Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); 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).

The Panel concludes that Complainant has established Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent’s unauthorized, commercial use of the <compuserverefundrecovery.com> domain name, a domain name confusingly similar to Complainant’s COMPUSERVE mark, demonstrates Respondent’s bad faith registration and use of the disputed domain name because Respondent’s intentional attempt to attract Internet users to its website for commercial gain by creating a likelihood of confusion with Complainant’s mark evidences bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its diversionary use of Complainant's mark when the domain name resolves to commercial websites and Respondent fails to contest the Complaint, it may be concluded that Respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also 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).

Moreover, Respondent’s offer to sell the <compuserverefundrecovery.com> domain name to Complainant for $2,300 suggests that the disputed domain name was registered primarily for the purpose of selling the domain name registration to Complainant for valuable consideration in excess of Complainant’s out-of-pocket costs directly related to the domain name. 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 World Wrestling Fed’n Entmt., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000) (finding that Respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out-of-pocket costs).

The Panel concludes that Policy ¶ 4(a)(iii) has been established.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <compuserverefundrecovery.com> domain name be TRANSFERRED from Respondent to Complainant.

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated:  November 14, 2003

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