DECISION

America Online, Inc. v. Administrator a/k/a Domains-4sale.com

Claim Number:  FA0303000150478

PARTIES

Complainant is America Online, Inc., Dulles, VA (“Complainant”) represented by James R. Davis, of Arent Fox Kintner Plotkin & Kahn. Respondent is Administrator a/k/a Domains-4sale.com, Seattle, WA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <myaol.com>, registered with Onlinenic, 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.

                       

            Hon. Ralph Yachnin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on March 18, 2003; the Forum received a hard copy of the Complaint on March 20, 2003.

On March 19, 2003, Onlinenic, Inc. confirmed by e-mail to the Forum that the domain name <myaol.com> is registered with Onlinenic, Inc. and that Respondent is the current registrant of the name. Onlinenic, Inc. has verified that Respondent is bound by the Onlinenic, 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 20, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 9, 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@myaol.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 16, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Ralph Yachnin 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 <myaol.com> domain name is confusingly similar to Complainant’s AOL mark.

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

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

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

FINDINGS

Complainant, America Online, Inc., owns numerous trademark registrations for the AOL mark (e.g., U.S. Reg. Nos. 1,977,731 and 1,984,337, registered on June 4, 1996, and July 2, 1996, on the Principal Register of the U.S. Patent and Trademark Office). Under this mark, Complainant promotes its various computer-related sales and services. Complainant also owns numerous trademark registrations for the AOL.COM mark (e.g., U.S. Reg. Nos. 2,325,291 and 2,325,292). Complainant uses this mark as a domain name for its website, where its AOL mark is prominently displayed. Additionally, Complainant uses the unregistered MY AOL mark in conjunction with its other registered marks to provide personalized services to its customers.

Complainant has used its AOL and AOL.COM marks extensively in conjunction with its computer and Internet-related goods and services since as early as 1989.  Under its family of marks, Complainant operates the most widely used interactive online service in the world, and has spent millions of dollars advertising and promoting its services under these marks. As a result of Complainant’s efforts, it has accrued over thirty-five million subscribers worldwide and billions of dollars in sales.

Respondent, Administrator a/k/a Domains-4sale.com, registered the <myaol.com> domain name on October 16, 2002, and is not licensed or authorized to use Complainant’s AOL family of marks for any purpose. Respondent uses the domain name to host a website with a series of links to other websites, and in its WHOIS contact information indicates that the domain name registration is for sale.

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 established rights in the AOL and AOL.COM marks through registration on the Principal Register of the U.S. Patent and Trademark Office. Complainant has established rights in the MY AOL mark through continuous and widespread use of the mark in commerce.

Respondent’s <myaol.com> domain name is confusingly similar to Complainant’s registered AOL and AOL.COM marks. The addition of the word “my” does not distinguish the domain name from either of Complainant’s marks. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that the <bodybyvictoria.com> domain name is identical to Complainant’s BODY BY VICTORIA mark).

Furthermore, Respondent’s domain name is identical to Complainant’s MY AOL mark. See ESPN, Inc. v. MySportCenter.com, FA 95326 (Nat. Arb. Forum Sept. 5, 2000) (finding that the “domain name MYSPORTSCENTER.COM registered by Respondent is confusingly similar to Complainant’s SportsCenter mark”); see also Infospace.com, Inc. v. Delighters, Inc., D2000-0068 (WIPO May 1, 2000) (finding that the domain name <myinfospace.com> is confusingly similar to Complainant’s INFOSPACE mark).

Accordingly, the Panel finds that the <myaol.com> domain name is confusingly similar and identical to Complainant’s marks under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

The Panel chooses to view Respondent’s lack of response in this dispute as evidence that it has no rights or legitimate interests in the <myaol.com> 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 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).

Complainant, who carries the initial burden to show that Respondent lacks rights or legitimate interests in the <myaol.com> domain name, can meet its burden by showing that Respondent’s behavior is not demonstrative of the protections provided to domain name Registrants in Policy ¶¶ 4(c)(i)-(iii). Such an uncontested showing by Complainant shifts Complainant’s burden to Respondent. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding where 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).

Taking into account the infringing nature of the disputed domain name, Respondent’s conduct purporting to sell the disputed domain name is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor is it a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See Kinko’s Inc. v. eToll, Inc., FA 94447 (Nat. Arb. Forum May 27, 2000) (finding that Respondent has no rights or legitimate interests in the domain name where it appeared that the domain name was registered for ultimate use by Complainant); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding Respondent’s conduct purporting to sell the domain name suggests it has no legitimate use).

Given the fame of Complainant’s marks and the lack of any evidence to the contrary, the Panel finds that Respondent is not “commonly known by” the domain name as contemplated by 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 Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one “would be hard pressed to find a person who may show a right or legitimate interest” in a domain name containing Complainant's distinct and famous NIKE trademark).

Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the <myaol.com> domain name under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent’s <myaol.com> domain name is identical to one of Complainant’s marks and confusingly similar to several others. The Panel infers from the facts that Respondent deliberately chose to register a domain name that infringed on Complainant’s rights, evidence that the domain name was registered in bad faith. See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the “domain names are so obviously connected with the Complainants that the use or registration by anyone other than Complainants suggests ‘opportunistic bad faith’”).

Considering Respondent’s actual knowledge of Complainant’s rights in the AOL family of marks prior to registering the disputed domain name, the Panel finds that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(i). Based on Respondent’s WHOIS contact information, the Panel infers that Respondent’s motivation for registering the disputed domain name was sale of its registration. As the domain name so obviously infringes on Complainant’s marks, it is clear that Respondent’s ultimate goal was sale to Complainant. This evidences bad faith use and registration of the domain name. See Parfums Christain Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding bad faith where the Respondent’s WHOIS registration information contained the words, “This is domain name is for sale”); see also Euromarket Designs, Inc. v. Domain For Sale VMI, D2000-1195 (WIPO Oct. 26, 2000) (finding “the manner in which the Respondent chose to identify itself and its administrative and billing contacts both conceals its identity and unmistakably conveys its intention, from the date of the registration, to sell rather than make any use of the disputed domain name”).

The Panel thus finds that Respondent registered and used the <myaol.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 <myaol.com> domain name be TRANSFERRED from Respondent to Complainant.

Hon Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

Dated:  April 17, 2003

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