national arbitration forum

DECISION

America Online, Inc. v. Stephen Williams

Claim Number:  FA0410000338577

PARTIES

Complainant is America Online, Inc. (“Complainant”), represented by James R. Davis, of Arent Fox PLLC, 1050 Connecticut Avenue NW, Washington, DC 20036.  Respondent is Stephen Williams (“Respondent”), 3412 Main Street, Bridgeport, CN 06606.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <africanaol.com>, registered with Go Daddy Software, 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.

James A. Carmody, esq., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on October 4, 2004; the National Arbitration Forum received a hard copy of the Complaint on October 7, 2004.

On October 5, 2004, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the domain name <africanaol.com> is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, 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 October 11, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 1, 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@africanaol.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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

On November 13, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, esq., as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 <africanaol.com> domain name is confusingly similar to Complainant’s AOL mark.

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

3. Respondent registered and used the <africanaol.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 AOL mark, including United States trademark registration nos. 1,977,731 and 1,984,337, registered on June 4, 1996 and July 2, 1996, respectively.  Complainant registered the AOL mark in connection with, inter alia, computer services, namely leasing access time to computer databases, computer bulletin boards, computer networks, and computerized research and reference materials, in the fields of business, finance, news, weather, sports, computing and computer software, games, music, theater, movies, travel, education and telecommunications services, namely electronic transmission of data, images, and documents via computer terminals and electronic mail services.  Complainant has continuously used the AOL mark in commerce since at least 1989. 

Respondent registered the <africanaol.com> domain name on April 11, 2003.  Respondent is using the domain name to sell products concerning the African continent, including books, computers and computer-related products. 

Complainant and Respondent have been involved in a domain name dispute over the disputed domain name in the past, where the arbitrator held that Respondent registered and used the <africanaol.com> domain name in bad faith and the domain name was transferred to Complainant shortly thereafter.  Once Complainant allowed the domain registration to lapse due to a clerical oversight, Respondent re-registered the domain name. 

Complainant contacted Respondent and requested that all unauthorized use of the AOL mark cease. However, Respondent refused to terminate or transfer the domain name.  Instead, Respondent offered to sell the domain name registration for $20,000.00 and threatened to raise the price to $50,000.00.

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 mark through its use in commerce and 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”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption).

Respondent’s <africanaol.com> domain name is confusingly similar to Complainant’s AOL mark because the domain name fully incorporates the mark and merely adds the generic and geographical term “african.”  The generic and geographical term “african” does not sufficiently distinguish the disputed domain name from Complainant’s mark.  See 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); see also Net2phone Inc. v. Netcall SAGL, D2000-0666 (WIPO Sept. 26, 2000) (finding that Respondent’s registration of the domain name <net2phone-europe.com> is confusingly similar to Complainant’s mark" the combination of a geographic term with the mark does not prevent a domain name from being found confusingly similar"); 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).

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Complainant alleges that Respondent does not have rights or legitimate interests in the <africanaol.com> domain name.  Respondent has not stepped forward to contest these allegations made in the Complaint. Thus, the Panel accepts all reasonable inferences and allegations in the Complaint as true. See Bayerische Motoren Werke AG v. Bavarian AG, FA 110830 (Nat. Arb. Forum June 17, 2002) (finding that in the absence of a Response the Panel is free to make inferences from the very failure to respond and assign greater weight to certain circumstances than it might otherwise do); 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).

Additionally, based on Complainant’s failure to contest Complainant’s allegations, the Panel is permitted to presume that Respondent lacks all rights to and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See 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); 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).

Respondent is using the <africanaol.com> domain name to sell products concerning the African continent, including books, computers and computer-related products and services that are in direct competition with Complainant’s computer-related products and services.  Respondent’s use of a domain name that is confusingly similar to Complainant’s AOL mark to redirect Internet users to a commercial website offering products and services, some of which are similar to those offered by Complainant, is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).  See 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”).

Furthermore, Respondent is not authorized or licensed to register or use the domain name incorporating Complainant’s mark.  The record fails to establish that Respondent is commonly known by the domain name.  Therefore, the Panel concludes that Respondent lacks rights and legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii).  See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent’s registration of the <africanaol.com> domain name incorporating Complainant’s well-known registered mark in addition to Respondent’s past involvement in a domain name dispute with Complainant for the same domain name, and Complainant’s previous registration of the disputed domain name, evidence Respondent’s knowledge of Complainant’s rights in the AOL mark.  Thus, the Panel finds that Respondent likely chose the <africanaol.com> domain name based on the distinctive and well-known qualities of Complainant’s mark.  See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); see also InTest Corp. v. Servicepoint, FA 95291 (Nat. Arb. Forum Aug. 30, 2000) (finding that where the domain name has been previously used by Complainant, subsequent registration of the domain name by anyone else indicates bad faith, absent evidence to the contrary).  

Respondent is appropriating Complainant’s AOL mark to lead Internet users to Respondent’s commercial website.  The Panel finds that Respondent is intentionally creating a likelihood of confusion to attract Internet users for Respondent’s commercial gain pursuant to Policy ¶ 4(b)(iv).  See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also 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)).

Furthermore, Respondent’s offer to sell the domain name registration for $20,000.00, a price above and beyond the cost of registration, is further evidence of Respondent’s bad faith registration and use of the disputed domain name 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 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 finds that Policy ¶ 4(c)(iii) has been satisfied.

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 <africanaol.com> domain name be TRANSFERRED from Respondent to Complainant.

James A. Carmody, esq., Panelist

Dated:  November 22, 2004

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