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Generic Top Level Domain Name (gTLD) Decisions |
America Online, Inc. v. Park Myung Hwan
Claim
Number: FA0411000359895
Complainant is America Online, Inc. (“Complainant”), represented by James R. Davis, of Arent Fox PLLC, 1050 Connecticut Avenue, NW, Washington,
DC 20036. Respondent is Park Myung
Hwan (“Respondent”), #1403 Youngsan Bd. 16-58 Hankangroo-3Ga, Yongsan-Gu,
Seoul, South Korea 140-013.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <aoltel.com>, registered with Onlinenic,
Inc.
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.
The
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on November
1, 2004; the National Arbitration Forum
received a hard copy of the Complaint
on November 3, 2004.
On
November 2, 2004, Onlinenic, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <aoltel.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
November 3, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”),
setting a deadline of November
23, 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@aoltel.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
December 2, 2004, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration
Forum appointed the
Honorable Charles K. McCotter, Jr. (Ret.) 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.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <aoltel.com>
domain name is confusingly similar to Complainant’s AOL mark.
2. Respondent does not have any rights or
legitimate interests in the <aoltel.com> domain name.
3. Respondent registered and used the <aoltel.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, a
global provider of online and interactive services, is the owner of numerous
trademark registrations worldwide for
the mark AOL and other marks that
incorporate AOL, including U.S. trademark Reg. Nos. 1,977,731 and 1,984,337 for
AOL and 2,472,041
for AOLTV (registered on June 4, 1996, July 2, 1996, and July
24, 2001, respectively). Complainant uses its marks in connection with,
among
other things, computerized shopping via telephone, telecommunications services,
and reference materials for television viewers.
The words “television” and
“telephone” are descriptive of these and other services provided by
Complainant.
Complainant
first used its AOL and AOLTV marks in connection with its services in 1989 and
2000, respectively. Complainant has used
its marks extensively and continuously
since that time. Complainant has invested substantial resources in developing
and marketing
its services. Each year, millions of consumers utilize
Complainant’s services and products and millions more are exposed to
Complainant’s
marks through advertising and promotional efforts. Complainant also
operates a website at the <aol.com> domain name.
Respondent
registered the <aoltel.com> domain name on September 6, 2002.
Respondent is using the domain name to promote a commercial website entitled
“ShopMOA” that
sells various products.
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.
Complainant has
established that it has rights in the AOL mark through registration with the
United States Patent and Trademark Office
and through the use of its marks in
commerce. 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).
The domain name
registered by Respondent is confusingly similar to Complainant’s AOL family of
marks. Respondent added the AOL mark
as a prefix to a shortened form of the
words “television” and “telephone,” which are generic terms and are descriptive
of services
Complainant offers. Therefore, the disputed domain name is not
sufficiently distinguishable from Complainant’s AOL mark under Policy
¶
4(a)(i). See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec.
9, 2000) (“[n]either the addition of an ordinary descriptive word . . . nor the
suffix ‘.com’ detract from
the overall impression of the dominant part of the
name in each case, namely the trademark SONY”); see also Modern Props, Inc.
v. Wallis, FA 152458 (Nat. Arb. Forum June 2, 2003) (stating that “[n]otwithstanding
the analysis by Respondent, ‘modprops’ is a contraction
or shorthand for
“Modern Props.” “Mod” cononotes [sic] ‘modern’ regardless of any other
dictionary meanings, so the names are substantially
similar in meaning).
Moreover, the disputed domain name is merely an alternate contraction for
Complainant’s AOLTV mark. Because
“tel” connotes “TV,” despite what other
meanings “tel” may have, the disputed domain name is substantially similar in
meaning to
Complainant’s AOLTV mark. Id.
Accordingly, the
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant is
able to establish a prima facie case by showing that Respondent does not
qualify for the three “safe harbors” provided
under Policy ¶¶
4(c)(i)-(iii). Such a showing shifts
Complainant’s burden to Respondent, who must come forward with evidence
rebutting Complainant’s allegations
in order to prevail on this element. In this case, Complainant has made a prima
facie showing that Respondent does not have any rights or legitimate interests
in the <aoltel.com> domain name.
See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l,
D2001-0376 (WIPO May 14, 2001) (stating that “[p]roving that the Respondent has
no rights or legitimate interests in respect of
the [d]omain [n]ame requires
the Complainant to prove a negative. For the purposes of this sub paragraph,
however, it is sufficient
for the Complainant to show a prima facie case and
the burden of proof is then shifted on to the shoulders of Respondent. In those
circumstances, the common approach is for [R]espondents to seek to bring
themselves within one of the examples of paragraph 4(c)
or put forward some
other reason why they can fairly be said to have a relevant right or legitimate
interests in respect of the domain
name in question”); see also G.D. Searle
v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that
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”).
Since
Complainant has made a prima facie showing that Respondent does not have any
rights or legitimate interests in the <aoltel.com> domain name,
the burden is shifted to Respondent to demonstrate that it has rights or
legitimate interests in the disputed domain
name. In this proceeding, Respondent has not submitted a Response. Thus, Respondent has failed to present any
circumstances under which it could substantiate rights or legitimate interests
in the <aoltel.com> domain name.
Furthermore, because Respondent has failed to submit a Response in this
proceeding, the Panel may accept as true all reasonable allegations
submitted
by Complainant in the Complaint. See
Geocities v. Geociites.com,
D2000-0326 (WIPO June 19, 2000) (finding that Respondent has no rights or
legitimate interests in the domain name because Respondent
never submitted a
response or provided the Panel with evidence to suggest otherwise); see also
Bayerische Motoren Werke AG v. Bavarian AG, FA110830 (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).
Respondent is
using the <aoltel.com> domain name to direct Internet users to a
commercial website. Respondent’s use of
a domain name that is confusingly similar to Complainant’s AOL mark dilutes
Complainant’s mark by diverting Internet
users to a website unrelated to that
mark and is not a use in connection with a bona fide offering of goods or
services pursuant
to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use
of the domain name pursuant to Policy ¶ 4(c)(iii). See Toronto-Dominion Bank v.
Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because Respondent's sole
purpose in selecting the domain names was to cause confusion with Complainant's
website and marks, its use of the names was not in connection with the offering
of goods or services or any other fair use); see also MSNBC Cable, LLC v. Tysys.com,
D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in
the famous MSNBC mark where Respondent attempted to
profit using Complainant’s
mark by redirecting Internet traffic to its own website); see also Pfizer,
Inc. v. Internet Gambiano Prods., D2002-0325 (WIPO June 20, 2002) (finding
that because the VIAGRA mark was clearly well-known at the time of Respondent’s
registration
of the domain name it can be inferred that Respondent is
attempting to capitalize on the confusion created by the domain name’s
similarity
to the mark).
Furthermore, no
evidence in the record suggests that Respondent is commonly known by the <aoltel.com>
domain name. Thus, Respondent has not
established rights or legitimate interests in the disputed domain name pursuant
to Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish Country Store, FA
96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have
rights in a domain name when Respondent is not known
by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests
where Respondent was not commonly known by the mark
and never applied for a
license or permission from Complainant to use the trademarked name); see
also 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).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
registered the domain name for commercial gain. Respondent’s domain name diverts Internet users wishing to search
under Complainant’s well-known mark to Respondent’s commercial website
through
the use of a domain name confusingly similar to Complainant’s mark. Respondent’s practice of diversion,
motivated by commercial gain, through the use of a confusingly similar domain
name evidences bad
faith registration and use pursuant to Policy ¶
4(b)(iv). See Entrepreneur Media, Inc.
v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. 2002) (“[w]hile an intent to
confuse consumers is not required for a finding of trademark infringement,
intent to deceive
is strong evidence of a likelihood of confusion”); see
also Perot Sys. Corp. v. Perot.net,
FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain
name in question is obviously connected with Complainant’s
well-known marks,
thus creating a likelihood of confusion strictly for commercial gain).
Furthermore,
while each of the four circumstances listed under Policy ¶ 4(b), if proven,
evidences bad faith use and registration
of a domain name, additional factors
can also be used to support findings of bad faith. See Twentieth Century
Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding
that in determining if a domain name has been registered in bad faith, the
Panel
must look at the “totality of circumstances”); see also Do the Hustle,
LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a
respondent to come forward to [contest complainant’s allegations] is tantamount
to
admitting the truth of complainant’s assertion in this regard”).
Respondent’s
registration of the disputed domain name, a domain name that incorporates
Complainant’s well-known registered mark in
its entirety and simply adds a
shortened form of a generic or descriptive term, suggests that Respondent knew
of Complainant’s rights
in the AOL and AOL.COM marks. Thus, the Panel finds that Respondent likely chose the <aoltel.com>
domain name based on the distinctive and well-known qualities of Complainant’s
mark, which evidences bad faith registration and use
pursuant to Policy ¶
4(a)(iii). See 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’”); see
also 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 Reuters
Ltd. v. Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000) (finding that
Respondent demonstrated bad faith where Respondent was aware of Complainant’s
famous
mark when registering the domain name as well as aware of the deception
and confusion that would inevitably follow if he used the
domain names); see
also Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002)
(determining that Policy paragraph 4(b) sets forth certain circumstances,
without limitation,
that shall be evidence of registration and use of a domain
name in bad faith); see also 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).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <aoltel.com> domain name be TRANSFERRED
from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated:
December 14, 2004
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