DECISION

America Online, Inc. v. Scott Ridher a/k/a PUGDOG Enterprises, Inc.

Claim Number: FA0408000306611

PARTIES

Complainant is America Online, Inc. (“Complainant”), represented by James R. Davis, of Arent Fox PLLCB, 4050 Connecticut Avenue, NW, Washington, DC 20036.  Respondent is Scott Ridher a/k/a PUGDOG Enterprises, Inc. (“Respondent”), P.O. Box 81619, Pittsburgh PA15217.

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <icq-it.com>, <compuperve.com>, <aoloholic.com>, <aoloholic.net>, <aoloholic.org>, <aolcoholic.com>, <aolcoholic.net> and <aolcoholic.org>, registered with The Name It Corporation d/b/a Nameservices.Net/Innerwise, Inc. d/b/a Itsyourdomain.com.

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 a Panelist in this proceeding.

Bruce E. Meyerson as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on July 30, 2004; the Forum received a hard copy of the Complaint on August 4, 2004.

On Aug 10, 2004, The Name It Corporation d/b/a Nameservices.Net/Innerwise, Inc. d/b/a Itsyourdomain.com confirmed by e-mail to the Forum that the domain names <icq-it.com>, <compuperve.com>, <aoloholic.com>, <aoloholic.net>, <aoloholic.org>, <aolcoholic.com>, <aolcoholic.net> and <aolcoholic.org> are registered with The Name It Corporation d/b/a Nameservices.Net/Innerwise, Inc. d/b/a Itsyourdomain.com and that Respondent is the current registrant of the name.  The Name It Corporation d/b/a Nameservices.Net/Innerwise, Inc. d/b/a Itsyourdomain.com has verified that Respondent is bound by the The Name It Corporation d/b/a Nameservices.Net/Innerwise, Inc. d/b/a Itsyourdomain.com 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 August 16, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of Sept. 6, 2004 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@icq-it.com, postmaster@compuperve.com, postmaster@aoloholic.com, postmster@aoloholic.net, postmaster a@aoloholic.org. postmaster@aolcoholic.com. postmaster@aolcoholic.net and postmaster@aolcoholic.org by e-mail.

A timely Response was received and determined to be complete on September 7, 2004.

On September 15, 2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson as Panelist.

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant, America Online, Inc., states that it operates and controls the AOL, ICQ and COMPUSERVE services and owns numerous trademarks worldwide for the marks AOL and ICQ, including registrations in the United States (the “AOL Marks”).  According to Complainant, it also owns federal trademark registrations for the mark AOL.COM in the United States.  Complainant contends that the AOL Marks are used extensively at this portal web site, which is a significant method of promoting AOL’s goods and services. 

Complainant contends that for many years prior to Respondent’s registration of the domain names at issue in this proceeding, AOL and its predecessors-in-interest adopted and began using the AOL Marks in connection with computer and Internet-related goods and services.  Since their first adoption, the distinctive AOL Marks have been used continuously and extensively in interstate and international commerce in connection with the advertising and sale of AOL’s goods and services. 

Complainant contends that AOL has invested substantial sums of money in developing and marketing its services and that each year millions of AOL customers worldwide obtain goods and services offered under the AOL Marks; millions more are exposed to said marks through advertising and promotion.  According to Complainant, because of these substantial advertising expenditures and sales, the AOL Marks have become well-known and famous among members of the purchasing public. 

Complainant asserts that years after AOL's adoption and first use of its AOL Marks, and long after the AOL Marks became well-known and famous, Respondent registered the domain names <icq-it.com>, <compuperve.com>, <aoloholic.com>, <aoloholic.net>, <aoloholic.org>, <aolcoholic.com>, <aolcoholic.net> and <aolcoholic.org> for the bad faith purpose of profiting from the goodwill AOL has created in its ICQ, AOL, and COMPUSERVE marks.   Complainant asserts that Respondent has attempted to sell the domain names for a profit and has used the domain names to route to commercial web sites that compete directly with many of AOL’s services. 

B. Respondent

Respondent states that it is a long-time Internet developer with a history of developing “niche database-backed websites” for its own use, and for sale as turnkey businesses.  Respondent states that Complainant has no claim to the disputed domain names and that the claims made by Complainant are premature and an effort to abuse the ICANN system.

Respondent states that when it did a trademark search no names exactly like the domain names at issue were identified.  Respondent argues that Complainant has no exclusive claim to the letters “AOL” or “ICQ” apart from the direct associations with their offerings. 

Respondent states that in acquiring the domain names at issue, it had no intent to sell them, or to block Complainant from using the names.  Respondent states that it has not used the domain names at this time; they are on a development list.  Because they are not being “used,” Respondent states that Complainant cannot claim an infringing use.

FINDINGS

Complainant holds registrations with the United States Patent and Trademark Office (“USPTO”) for the AOL, AOL.COM, ICQ and COMPUSERVE marks (Reg. No. 1,984,337, issued July 2, 1996, Reg. Nos. 2,325,292 and 2,325,291, issued Mar. 7, 2000 and Reg. No. 2,411,657, Issued Dec. 12, 2000) for a variety of telecommunication and computer services, programs and networking. 

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”

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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the 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 holds registrations with the United States Patent and Trademark Office (“USPTO”) for the AOL, AOL.COM, ICQ and COMPUSERVE marks (Reg. No. 1,984,337, issued July 2, 1996, Reg. Nos. 2,325,292 and 2,325,291, issued Mar. 7, 2000 and Reg. No. 2,411,657, Issued Dec. 12, 2000) for a variety of telecommunication and computer services, programs and networking.  Thus, Complainant has established rights in the AOL, AOL.COM, ICQ and COMPUSERVE marks due to its registrations 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 is correct that Respondent’s <icq-it.com> domain name is confusingly similar to Complainant’s ICQ mark because the domain name fully incorporates the mark and merely adds a hyphen, the generic term “it” and the top-level domain “.com.” See InfoSpace.com, Inc. v. Ofer, D2000-0075 (WIPO Apr. 27, 2000) (“The domain name ‘info-space.com’ is identical to Complainant’s INFOSPACE trademark. The addition of a hyphen and .com are not distinguishing features.”). 

Complainant is also correct that Respondent’s <compuperve.com> domain name is confusingly similar to Complainant’s COMPUSERVE mark because the domain name merely misspells Complainant’s COMPUSERVE mark by using a “p” instead of an “s” and adds the top-level domain “.com.” See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive);  see also Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001) (finding that the domain names <tdwatergouse.com> and <dwaterhouse.com> are virtually identical to gomplainant’s TD WATERHOUSE name and mark).  

Complainant is also correct that Respondent’s <aoloholic.net>, <aoloholic.org>, <aolcoholic.net> and <aolcoholic.org> domain names are confusingly similar to Complainant’s AOL mark because the domain names fully incorporate the mark, merely adding the letters “oholic” or “coholic,” and the top-level domains “.net” or “.org.” Finally, Complainant correctly argues that Respondent’s <aoloholic.com> and <aolcoholic.com> domain names are confusingly similar to Complainant’s AOL.COM mark because the domain names incorporate the mark in its entirety and merely add the letters “oholic” or “coholic.”  The addition of the letters “oholic” or “coholic” is insufficient to differentiate Respondent’s domain names from Complainant’s AOL and AOL.COM marks.  See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to complainant’s marks);  see also America Online, Inc. v. iDomainNames.com, FA 93766 (Nat. Arb. Forum Mar. 24, 2000) (finding that respondent’s domain name <go2AOL.com> was confusingly similar to complainant’s AOL mark). 

Rights or Legitimate Interests

The Panel finds that the record supports Complainant’s contention that Respondent’s <icq-it.com>, <compuperve.com>, <aoloholic.com>, <aoloholic.net>, <aoloholic.org>, <aolcoholic.com>, <aolcoholic.net> and <aolcoholic.org> domain names take advantage of the goodwill associated with Complainant’s well-known AOL, AOL.COM, ICQ and COMPUSERVE marks and therefore Respondent is not making a  legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  Thus, Respondent lacks rights and legitimate interests in the disputed domain names.  See Cf. J. Paul Getty Trust v. Domain 4 Sale & Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000) (finding rights or legitimate interests do not exist when one has made no use of the websites that are located at the domain names at issue, other than to sell the domain names for profit). 

Moreover, the record supports Complainant’s contention that Respondent is not commonly known by the <icq-it.com>, <compuperve.com>, <aoloholic.com>, <aoloholic.net>, <aoloholic.org>, <aolcoholic.com>, <aolcoholic.net> and <aolcoholic.org> domain names and therefore lacks rights and legitimate interests in the domain names pursuant to Policy ¶ 4(c)(i). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where respondent was not commonly known by the mark and never applied for a license or permission from complainant to use the trademarked name). 

Further, Respondent acknowledges that it has failed to use the sites to which the disputed domain names resolve.  Such failure demonstrates the lack of a bona fide offering of goods or services by a Respondent pursuant to Policy ¶ 4(c)(i), or the failure to make a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Bloomberg L.P. v. Sandhu, FA 96261 (Nat. Arb. Forum Feb. 12, 2001) (finding that no rights or legitimate interests can be found when respondent fails to use disputed domain names in any way);  see also Ziegenfelder Co. v. VMH Enter., Inc., D2000-0039 (WIPO Mar. 14, 2000) (finding that failure to provide a product or service or develop the site demonstrates that respondent has not established any rights or legitimate interests in the domain name); see also Flor-Jon Films, Inc. v. Larson, FA 94974 (Nat. Arb. Forum July 25, 2000) (finding that respondent’s failure to develop the site demonstrates a lack of legitimate interest in the domain name).

Registration and Use in Bad Faith

The record supports Complainant’s assertion that Respondent is using the  <icq-it.com>, <compuperve.com>, <aoloholic.com>, <aoloholic.net>, <aoloholic.org>, <aolcoholic.com>, <aolcoholic.net> and <aolcoholic.org> domain names for the primary purpose of selling the domain name registrations. Thus, Respondent registered and used the domain names in bad faith pursuant to Policy ¶ 4(b)(i). See Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where respondent offered domain names for sale);  see also Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (“general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”). 

Not only does Respondent’s failure to use its website demonstrate its lack of legitimate interest in the domain name, but also such nonuse constitutes evidence of bad faith on the part of Respondent.  See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that respondent’s passive holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that respondent made no use of the domain name or website that connects with the domain name, and that passive holding of a domain name permits an inference of registration and use in bad faith). 

Finally, the Panel agrees with Complainant’s contention that Respondent had actual or constructive knowledge of Complainant’s AOL, AOL.COM, ICQ and COMPUSERVE marks, particularly given their worldwide reputation, and thus Respondent registered and used the <icq-it.com>, <compuperve.com>, <aoloholic.com>, <aoloholic.net>, <aoloholic.org>, <aolcoholic.com>, <aolcoholic.net> and <aolcoholic.org> domain names in bad faith pursuant to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“There is a legal presumption of bad faith, when respondent reasonably should have been aware of complainant’s trademarks, actually or constructively.”); see also Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that respondent had actual and constructive knowledge of complainant’s mark given the worldwide prominence of the mark and thus respondent registered the domain name in bad faith). 

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 <icq-it.com>, <compuperve.com>, <aoloholic.com>, <aoloholic.net>, <aoloholic.org>, <aolcoholic.com>, <aolcoholic.net> and <aolcoholic.org> domain names be TRANSFERRED from Respondent to Complainant.

Bruce E. Meyerson, Panelist
Dated: September 29, 2004

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