DECISION

America Online, Inc. v. Mike Flynn

Claim Number:  FA0301000143679

PARTIES

Complainant is America Online, Inc., Dulles, VA (“Complainant”) represented by James R. Davis of Arent Fox Kintner Plotkin & Kahn. Respondent is Mike Flynn, New York, NY (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <wwwcompuserve.com>, registered with Enom, 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 January 28, 2003; the Forum received a hard copy of the Complaint on January 30, 2003.

On January 29, 2003, Enom, Inc. confirmed by e-mail to the Forum that the domain name <wwwcompuserve.com> is registered with Enom, Inc. and that Respondent is the current registrant of the name. 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 January 30, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 19, 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@wwwcompuserve.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 February 25, 2003, 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 assertions:

1. The domain name registered by Respondent, <wwwcompuserve.com>, is confusingly similar to Complainant’s COMPUSERVE mark.

2. Respondent has no rights or legitimate interests in the <wwwcompuserve.com> domain name.

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

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

FINDINGS

Complainant, America Online, Inc., holds a registered trademark for the COMPUSERVE mark, registered on the Principal Register of the United States Patent and Trademark Office (Reg. No. 1,654,785) on August 27, 1991. Complainant has operated under its COMPUSERVE mark since 1970 in connection with its advertising, sale, and promotion of Internet and computer related services. Complainant also operates a website at <compuserve.com>.

Respondent, Mike Flynn, registered the <wwwcompuserve.com> domain name on March 24, 2002, but is not licensed or authorized to use Complainant’s COMPUSERVE mark for any purpose. Prior to Complainant’s attempts to contact Respondent about its infringing domain name, Respondent was using the domain name to redirect Internet users to a pharmaceutical company’s commercial web page at <e-scripts-md.com>. Complainant contacted this pharmaceutical company about the infringing domain name, and was informed that Respondent’s actions were likely being done in an attempt to collect a commission from diverted Internet traffic. Shortly after Complainant’s contacts with the pharmaceutical company, Respondent began routing its domain name to a different commercial website at <ewtn.com>, which sells religious-based products.

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 will draw such inferences as the Panel 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 COMPUSERVE mark through registration on the Principal Register of the United States Patent and Trademark Office, as well as by widespread and continuous use of the mark in commerce.

Respondent’s <wwwcompuserve.com> domain name is confusingly similiar to Complainant’s COMPUSERVE mark. By incorporating Complainant’s mark into its domain name with the addition of the “www” prefix, Respondent is not distinguishing its domain name from Complainant’s mark. Instead, Respondent is attempting to benefit from the common typographical error that results from an Internet user’s inadvertent omission of the period between the World Wide Web abbreviation and a second-level domain name. The resulting domain name is considered confusingly similar for purposes of Policy ¶ 4(a)(i) analysis. See Neiman Marcus Group, Inc. v. S1A, FA 128683 (Nat. Arb. Forum Dec. 6, 2002) (holding confusing similarity has been established because the prefix "www" does not sufficiently differentiate the <wwwneimanmarcus.com> domain name from Complainant's NEIMAN-MARCUS mark); see also Dana Corporation v. $$$ This Domain Name Is For Sale $$$, FA 117328 (Nat. Arb. Forum Nov. 19, 2002) (finding Respondent's <wwwdana.com> domain name confusingly similar to Complainant's registered DANA mark because Complainant's mark remains the dominant feature).

Accordingly, the Panel finds that the <wwwcompuserve.com> domain name is confusingly similiar to Complainant’s COMPUSERVE mark under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

With no response before the Panel, Complainant can meet its burden under Policy ¶ 4(a)(ii) by showing that Respondent would not be able to utilize the protections enumerated in Policy ¶¶ 4(c)(i)-(iii). Such a showing shifts Complainant’s burden to Respondent, and Respondent’s default posture results in an inability to meet that burden. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding where a Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests with respect to the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name).

Respondent has used the <wwwcompuserve.com> domain name to route Internet users to at least two commercial websites, presumably for a commission. Using a confusingly similar variation of Complainant’s mark in such a fashion does not constitute a bona fide offering of goods and services and it is not a legitimate noncommercial or fair use of the domain name. Thus, Complainant has shown that Policy ¶¶4(c)(i) and (iii) do not apply to Respondent. See 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); see also Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that Respondent's sole purpose in selecting the domain names was to cause confusion with Complainant's website and marks and its use of the names was not in connection with a bona fide offering of goods or services or any other fair use).

Respondent, Mike Flynn, does not appear to be “commonly known by” the name WWWCOMPUSERVE or <wwwcompuserve.com>. Given that the disputed domain name is a variation of Complainant’s mark and given the evidence that Respondent uses it to entrap Internet users who misspell Complainant’s web address, the Panel finds Policy ¶ 4(c)(ii) does not apply to Respondent. See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent has no rights in a domain name when Respondent is not known by the mark); see also 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").

The Panel also chooses to view Respondent’s failure to respond in this proceeding as evidence that it lacks rights and legitimate interests in the 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); see also Hewlett Packard Co. v. Full Sys., FA 94637 (Nat. Arb. Forum May 22, 2000) (holding that Respondent’s failure to offer any evidence permits the inference that the use of the Complainant’s mark in connection with the Respondent’s website is misleading and Respondent is intentionally diverting business from the Complainant).

Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the <wwwcompuserve.com> domain name under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Complainant urges that Respondent registered and used the <wwwcompuserve.com> domain name in bad faith. The Panel finds that the disputed domain name exemplifies “typosquatting,” a situation where a known trademark is slightly altered in an attempt to attract Internet users seeking the authentic domain name associated with that mark. Registration and use of a domain name in these circumstances evidences bad faith use and registration. See AltaVista Co. v. Stoneybrook, D2000-0886 (WIPO Oct. 26, 2000) (awarding <wwwalavista.com>, among other misspellings of altavista.com, to Complainant); see also Dow Jones & Co. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000) (awarding domain names <wwwdowjones.com>, <wwwwsj.com>, <wwwbarrons.com> and <wwwbarronsmag.com> to Complainants); see also 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").

Moreover, Respondent is using the infringing <wwwcompuserve.com> domain name to divert Internet users to other commercial websites for its own commercial gain. Respondent’s unauthorized use of Complainant’s mark for this purpose evidences bad faith use and registration pursuant to Policy ¶ 4(b)(iv). See Kmart v. Kahn, 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, the Panel may conclude that Respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also eBay, Inc v. Progressive Life Awareness Network, D2000-0068 (WIPO Mar. 16, 2001) (finding bad faith where Respondent is taking advantage of the recognition of the eBay mark and therefore is profiting by diverting users seeking the eBay website to Respondent’s site).

The Panel thus finds that Respondent registered and used the <wwwcompuserve.com> domain name in bad faith, and that Policy ¶ 4(a)(iii) is satisfied.

DECISION

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

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

Hon. Carolyn Marks Johnson, Panelist

Dated: March 11, 2003.

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