DECISION

America Online, Inc. v. DomainMonger.com

Claim Number:  FA0312000215405

PARTIES

Complainant is America Online, Inc. (“Complainant”), represented by James R. Davis, of Arent Fox Kintner Plotkin & Kahn, 1050 Connecticut Avenue, NW, Washington, DC 20036. Respondent is DomainMonger.com (“Respondent”), 14128 126th Place NE, Kirkland, WA 98034.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <go4aol.com>, registered with Tucows, 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 (the "Forum") electronically on December 4, 2003; the Forum received a hard copy of the Complaint on December 8, 2003.

On December 8, 2003, Tucows, Inc. confirmed by e-mail to the Forum that the domain name <go4aol.com> is registered with Tucows, Inc. and that Respondent is the current registrant of the name. Tucows, Inc. has verified that Respondent is bound by the Tucows, 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 8, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 29, 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@go4aol.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 5, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James A. Carmody, Esq.,  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 <go4aol.com> domain name is confusingly similar to Complainant’s AOL mark.

2. Respondent does not have any rights or legitimate interests in the <go4aol.com> domain name.

3. Respondent registered and used the <go4aol.com> domain name in bad faith.

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

FINDINGS

Complainant, America Online, Inc., began to use its AOL mark in 1989 for its computer online services and other Internet-related services. Currently Complainant operates the most widely-used interactive online service in the world and each year millions of AOL customers worldwide obtain services from Complainant. Complainant is the owner of several trademark registrations on the Principal Register of the U.S. Patent and Trademark Office for the AOL mark, including U.S. Reg. Nos. 1,977,731 and 1,984,337, which were registered June 4, 1996, and July 2, 1996, respectively. Complainant also operates a website at the <aol.com> domain name.

Respondent, DomainMonger.com, registered the <go4aol.com> domain name on July 31, 2003, without license or authorization to use Complainant’s AOL mark for any purpose. The disputed domain name was initially used to operate a portal to an adult-oriented website entiteld “Gay Porn.” After receiving a cease-and-desist letter from Complainant, Respondent called Complainant’s counsel claiming to be a legitimate Internet services company and stating that the disputed domain name had actually been registered by one of Respondent’s customers. Respondent stated that it took control of the domain name after the customer became delinquent on certain debts. However, when Complainant offered to pay Respondent’s standard $17 domain name registration/transfer fee to effect transfer of the disputed domain name registration, Respondent replied that it would not agree to a transfer unless Complainant paid it $285. Respondent claimed that this amount was what was owed to it by its deliquent customer, and threatened to host another active website at the disputed domain name if Complainant refused its offer.

Complainant refused to pay Respondent $285, and Respondent currently uses the disputed domain name to promote, inter alia, Respondent’s own website and services and links to third party commercial websites that offer wireless services, software, and other related goods and 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 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 registration of the mark on the Principal Register of the U.S. Patent and Trademark Office, as well as through widespread use of the mark in commerce.

Respondent’s <go4aol.com> domain name is confusingly similar to Complainant’s AOL mark. The addition of the generic word “go” and the numeral “4” do not disguise the fact that the dominant feature of the domain name is Complainant’s famous AOL mark. See Am. 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).

Accordingly, the Panel finds that the <go4aol.com> domain name is confusingly similar to Complainant’s AOL mark under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Even were the Panel to attribute the adult-oriented web-portal previously hosted at the disputed domain name to someone other than Respondent, in which case Respondent would clearly have no rights or legitimate interests in the disputed domain name, the Panel finds that Respondent’s current use of the domain name does not evidence rights or legitimate interests. Considering the fame of Complainant’s AOL mark, and its prominent placement in the disputed domain name, it would be difficult for Respondent to defend any activity at the disputed domain name. In this dispute, Respondent has not only failed to file a Response, but is capitalizing on the goodwill surrounding Complainant’s AOL mark to not only attract Internet users to its own commercial website, but also to expose Internet users to hyperlinks that bring them to websites of Complainant’s competitors. Such use does not evidence rights or legitimate interests in the disputed domain name. See eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating that the "use of complainant’s entire mark in infringing domain names makes it difficult to infer a legitimate use"); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that use of Complainant’s mark “as a portal to suck surfers into a site sponsored by Respondent hardly seems legitimate”); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that Respondent’s diversionary use of Complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to competitors of Complainant, was not a bona fide offering of goods or services).

Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the <go4aol.com> domain name under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Complainant’s famous AOL mark is registered on the Principal Register of the U.S. Patent and Trademark Office. Both this registration and the fame of the mark permit the Panel to infer that Respondent had actual knowledge of Complainant’s rights in the AOL mark when it obtained the disputed domain name, evidence that the domain name was registered in bad faith. See Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO, a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof”); 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).

Using the disputed domain name to attract Internet users to its own commercial website, and those of Complainant’s competitors, is evidence of bad faith use of the disputed domain name. Respondent was put on actual notice of Complainant’s rights in the AOL mark and its objection to any use of the disputed domain name, yet Respondent chose to use the domain name rather than leave it dormant. This knowing capitalization on a likelihood of confusion with Complainant’s famous AOL mark and services is sufficient evidence to warrant a finding of bad faith use. See 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); see also eBay, Inc v. Progressive Life Awareness Network, D2000-0068 (WIPO Mar. 16, 2001) (finding bad faith where Respondent is taking advantage of the recognition that eBay has created for its mark and therefore profiting by diverting users seeking the eBay website to Respondent’s site).

The Panel thus finds that Respondent registered and used the <go4aol.com> domain name in bad faith, and that Policy ¶ 4(a)(iii) is 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 <go4aol.com> domain name be TRANSFERRED from Respondent to Complainant.

James A. Carmody, Esq., Panelist

Dated:  January 19, 2004

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