DECISION

America Online, Inc. v. RAM a/k/a Ramakrishna Purnachandra

Claim Number: FA0212000136310

PARTIES

Complainant is America Online, Inc., Dulles, VA (“Complainant”) represented by James R. Davis, of Arent Fox Kintner Plotkin & Kahn.  Respondent is RAM a/k/a Ramakrishna Purnachandra, Franklin Lakes, NJ (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <aol-india.com>, registered with Register.com, 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.

Tyrus R. Atkinson, Jr., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on December 6, 2002; the Forum received a hard copy of the Complaint on December 12, 2002.

On December 9, 2002, Register.com, Inc. confirmed by e-mail to the Forum that the domain name <aol-india.com> is registered with Register.com, Inc. and that Respondent is the current registrant of the name. Register.com, Inc. has verified that Respondent is bound by the Register.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 December 12, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 2, 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@aol-india.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 January 10, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr., 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:

Respondent’s <aol-india.com> domain name is confusingly similar to Complainant’s AOL mark.

Respondent does not have any rights or legitimate interests in the <aol-india.com> domain name.

Respondent registered and used the <aol-india.com> domain name in bad faith.

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

FINDINGS

Complainant, America Online, Inc., is the owner of numerous trademark registrations worldwide for the mark AOL, including U.S. Trademark Reg. Nos. 1,977,731 and 1,984,337, which were registered on June 4, 1996 and July 2, 1996, respectively, on the Principal Register of the United States Patent and Trademark Office. Complainant owns U.S. Trademark Reg. Nos. 2,325,291 and 2,325,292 for the mark AOL.COM. Complainant uses its mark AOL.COM as a domain name for its website, where the AOL mark is used extensively as a significant method of promoting Complainant’s various computer-related sales and services. Sales of services under these marks have amounted to billions of dollars, with millions of those dollars being spent on advertising under the mark. As a result, consumers associate the mark AOL, especially when used in a domain name, with Complainant’s services.

Respondent, RAM a/k/a Ramakrishna Purnachandra, registered the <aol-india.com> domain name on March 3, 2000, and is not licensed or authorized to use the AOL family of marks for any purpose. Respondent uses the disputed domain name to provide various online services that are identical to Complainant’s services.

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 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 with the United States Patent and Trademark Office and through widespread and continuous use of the mark in commerce.

Respondent’s <aol-india.com> domain name is confusingly similar to Complainant’s AOL and AOL.COM marks. It incorporates Complainant’s distinctive AOL mark in its entirety, with the mere addition of the country “India.” The addition of a geographic qualifier such as this, taken in conjunction with the strength of Complainant’s mark, does not prevent a finding of confusing similarity between the disputed domain name and Complainant’s marks. See VeriSign, Inc. v. Tandon, D2000-1216 (WIPO Nov. 16, 2000) (finding confusing similarity between Complainant’s VERISIGN mark and the <verisignindia.com> and <verisignindia.net> domain names where Respondent added the word “India” to Complainant’s mark); see also Wal-Mart Stores, Inc. v. Walmarket Canada, D2000-0150 (WIPO May 2, 2000) (finding that the domain name, <walmartcanada.com> is confusingly similar to Complainant’s famous mark).

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

Rights or Legitimate Interests

In the present dispute, Respondent’s lack of a response to the Complaint will be viewed by the Panel as evidence that it lacks rights and legitimate interests in the disputed domain name. 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 BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any rights or legitimate interests in the domain name”).

Respondent uses the infringing <aol-india.com> domain name to host a commercial website; specifically, a website which offers many of the same online services as Complainant. By playing off of the fame of Complainant’s mark, and using that mark to offer services that compete with Complainant, Respondent is not making a bona fide offering of goods or services as described in Policy ¶ 4(c)(i), nor is it making a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). Neither of these examples demonstrating rights and legitimate interests in a domain name are applicable to Respondent. See MBS Computers Ltd. v. Workman, FA 96632 (Nat. Arb. Forum Mar. 16, 2001) (finding no rights or legitimate interests when Respondent is using a domain name identical to Complainant’s mark and is offering similar services); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that “[I]t would be unconscionable to find a bona fide offering of services in a respondent’s operation of web-site using a domain name which is confusingly similar to the Complainant’s mark and for the same business”).

Respondent uses the name “Akhila Officers Lobby of India” on its website in a transparent attempt to appear to be “commonly known by” the <aol-india.com> domain name. Considering that Respondent is offering services identical to Complainant and the fact that the AOL mark is famous worldwide, the Panel does not feel compelled to find that Respondent was “commonly known by” the <aol-india.com> domain name. See Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (finding that “merely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy”); 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"); 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 <aol-india.com> domain name under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent’s <aol-india.com> domain name, incorporating the entirety of Complainant’s mark, is confusingly similar to that mark so as to create a likelihood of confusion as to the source or sponsorship of the associated website. As that website serves a commercial purpose, Respondent’s attempts to profit from the likelihood of confusion that it created when it registered the <aol-india.com> domain name evidences bad faith use and registration of a domain name pursuant to Policy ¶ 4(b)(iv). See 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); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where Respondent directed Internet users seeking Complainant’s site to its own website for commercial gain).

Furthermore, the very fact of Respondent’s registration of a domain name incorporating Complainant’s famous AOL mark evidences bad faith registration. Respondent’s blatant attempt to mask its infringing activity by claiming to be known as “Akhila Officers Lobby of India” does not prevent this Panel from finding such registration was done in bad faith. See Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the worldwide prominence of the mark and thus Respondent registered the domain name in bad faith); see also Yahoo! Inc. v. Ashby, D2000-0241 (WIPO June 14, 2000) (finding that the fame of the YAHOO! mark negated any plausible explanation for Respondent’s registration of the <yahooventures.com> domain name).

Accordingly, the Panel finds that Respondent registered and used the <aol-india.com> domain name in bad faith, and Policy ¶ 4(a)(iii) is satisfied.

DECISION

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

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

Tyrus R. Atkinson, Jr., Panelist

Dated: January 21, 2003

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