DECISION

America Online, Inc. v. USIDR a/k/a John Quigley

Claim Number:  FA0405000275846

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 USIDR a/k/a John Quigly (“Respondent”), 8604 Copper Mountain, Las Vegas, NV 89129.

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <aolmusicsearch.com>, <aolmusicvideos.com>, <aolsessions.com>, <aolsmileys.com>, <aolsmilies.com> and <radionetscapeplus.com>, registered with eNom, 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.

Hon. Ralph Yachnin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on May 25, 2004; the Forum received a hard copy of the Complaint on May 26, 2004.

On May 28, 2004, eNom, Inc. confirmed by e-mail to the Forum that the domain names <aolmusicsearch.com>, <aolmusicvideos.com>, <aolsessions.com>, <aolsmileys.com>, <aolsmilies.com> and <radionetscapeplus.com> are registered with eNom, Inc. and that Respondent is the current registrant of the names. eNom, Inc. has verified that Respondent is bound by the eNom, 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 May 28, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 17, 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@aolmusicsearch.com, postmaster@aolmusicvideos.com, postmaster@aolsessions.com, postmaster@aolsmileys.com, postmaster@aolsmilies.com and postmaster@radionetscapeplus.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 June 24, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Ralph Yachnin 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 names be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <aolmusicsearch.com>, <aolmusicvideos.com>, <aolsessions.com>, <aolsmileys.com>, <aolsmilies.com> and <radionetscapeplus.com> domain names are confusingly similar to Complainant’s AOL and NETSCAPE marks.

2. Respondent does not have any rights or legitimate interests in the <aolmusicsearch.com>, <aolmusicvideos.com>, <aolsessions.com>, <aolsmileys.com>, <aolsmilies.com> and <radionetscapeplus.com> domain name.

3. Respondent registered and used the <aolmusicsearch.com>, <aolmusicvideos.com>, <aolsessions.com>, <aolsmileys.com>, <aolsmilies.com> and <radionetscapeplus.com> domain names in bad faith.

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

FINDINGS

Complainant, America Online, Inc., and its affiliated entity Netscape Communications Corp. own the marks AOL, AOL.COM, NETSCAPE, NETSCAPE.COM, and numerous other marks that incorporate those terms (Reg. No. 1,984,337, July 2, 1996, Reg. No. 1,977,731, issued June 4, 1996, Reg. No. 2,027,552, issued December 31, 1996, Reg. No. 2,219,433, issued January 19, 1999, Reg. No. 2,325,291, issued March 7, 2000, Reg. No. 2,325,292, issued March 7, 2000).  Complainant uses its marks in connection with providing services and general interest information on the Internet, including online music and video services. 

Respondent registered the disputed domain names between December 1, 2003 and February 7, 2004 many years after AOL’s adoption and first use of its AOL marks, and long after the AOL marks became well-known and famous.  Respondent is using the domain names to redirect Internet users to a website that hosts a popular search engine which provides links to commercial music websites that are owned and operated by Respondent.

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 names 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 names; and

(3) the domain names has been registered and is being used in bad faith.

Identical and/or Confusingly Similar

Complainant has established that it has rights in the AOL and NETSCAPE marks through registration with the United States Patent and Trademark Office and through continued 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 names registered by Respondent are confusingly similar to Complainant’s AOL and NETSCAPE marks because the domain names incorporate a combination of Complainant’s marks and only deviate with the addition of generic or descriptive words.  The mere addition of generic or descriptive words to Complainant’s registered marks does not negate the confusing similarity of Respondent’s domain names pursuant to Policy ¶ 4(a)(i).  See Oki Data Americas, Inc. v. ASD Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name incorporates a Complainant’s registered mark is sufficient to establish identical or confusing similarity for purposes of the Policy despite the addition of other words to such marks.”); see also L.L. Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000) (finding that combining the generic word “shop” with Complainant’s registered mark “llbean” does not circumvent Complainant’s rights in the mark nor avoid the confusing similarity aspect of the ICANN Policy); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to Complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which Complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity); see also Westfield Corp., Inc. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element).

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

Rights or Legitimate Interests

Complainant alleged that Respondent has no rights or legitimate interests in the disputed domain names registered by Respondent.  Respondent did not file a Response.  Therefore, the Panel may accept any reasonable assertions by Complainant as true.  See 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); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw adverse inferences from Respondent’s failure to reply to the Complaint).

Respondent appropriating Complainant’s mark to advertise Respondent’s music services.  Consumer confusion is likely given that the infringing domains is used in connection with providing online services that compete directly with those provided by Complainant.  The Panel finds that this use of domain names confusingly similar to Complainant’s marks is not 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 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 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 Avery Dennison Corp. v. Steele, FA 133626 (Nat. Arb. Forum Jan 10, 2003) (finding that Respondent had no rights or legitimate interests in the disputed domain name where it used Complainant’s mark, without authorization, to attract Internet users to its business, which competed with Complainant).

Moreover, Respondent offered no evidence and no proof in the record suggests that Respondent is commonly known by the <aolmusicsearch.com>, <aolmusicvideos.com>, <aolsessions.com>, <aolsmileys.com>, <aolsmilies.com> and <radionetscapeplus.com> domain names.  Thus, Respondent has not established rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c)(ii).  See 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 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 registered the domain names for commercial gain.  Respondent’s domain names divert Internet users wishing to search under Complainant’s well-known marks to Respondent’s commercial websites through the use of domain names confusingly similar to Complainant’s mark.  Respondent’s practice of diversion, motivated by commercial gain, through the use of confusingly similar domain names evidences bad faith registration and use pursuant to Policy ¶ 4 (b)(iv).  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 America Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that Respondent intentionally attempted to attract Internet users to his website for commercial gain by creating a likelihood of confusion with Complainant’s mark and offering the same chat services via his website as Complainant); see also Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that Respondent had engaged in bad faith use and registration by linking the domain name to a website that offers services similar to Complainant’s services, intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s marks).

Furthermore, Respondent registered the domain names for the primary purpose of disrupting Complainant’s business by redirecting Internet traffic intended for Complainant to Respondent’s websites that directly competed with Complainant.  Respondent’s Registration of domain names for the primary purpose of disrupting the business of a competitor is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).  See General Media Communications, Inc. v. Vine Ent., FA 96554 (Nat. Arb. Forum Mar. 26, 2001) (finding bad faith where a competitor of Complainant registered and used a domain name confusingly similar to Complainant’s PENTHOUSE mark to host a pornographic web site); see also Clear Channel Communications, Inc. v. Beaty Enters., FA 135008 (Nat. Arb. Forum Jan. 2, 2003) (finding evidence of bad faith use and registration where Respondent and Complainant both operated in the highly regulated field of radio broadcasting and Respondent registered a domain name incorporating Complainant’s call letters).

The Panel finds that Policy ¶ 4(a)(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 <aolmusicsearch.com>, <aolmusicvideos.com>, <aolsessions.com>, <aolsmileys.com>, <aolsmilies.com> and <radionetscapeplus.com> domain names be TRANSFERRED from Respondent to Complainant.

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

Dated:  July 8, 2004

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