DECISION

America Online, Inc. v. Lorna Kang

Claim Number:  FA0309000193726

PARTIES

Complainant is America Online, Inc., Dulles, VA (“Complainant”) represented by James R. Davis II, of Arent Fox Kintner Plotkin & Kahn, PLLC.  Respondent is Lorna Kang, Perak, Malaysia (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <aolautos.com>, <aolquickbuddy.com>, <aoldsl.com> and <netscaperadio.com>, registered with Iholdings.Com, Inc. d/b/a Dotregistrar.Com.

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

Judge Harold Kalina (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on September 8, 2003; the Forum received a hard copy of the Complaint on September 10, 2003.

On September 9, 2003, Iholdings.Com, Inc. d/b/a Dotregistrar.Com confirmed by e-mail to the Forum that the domain names <aolautos.com>, <aolquickbuddy.com>, <aoldsl.com> and <netscaperadio.com> are registered with Iholdings.Com, Inc. d/b/a Dotregistrar.Com and that Respondent is the current registrant of the names. Iholdings.Com, Inc. d/b/a Dotregistrar.Com has verified that Respondent is bound by the Iholdings.Com, Inc. d/b/a Dotregistrar.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 September 12, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 2, 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@aolautos.com, postmaster@aolquickbuddy.com, postmaster@aoldsl.com and postmaster@netscaperadio.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 October 12, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Judge Harold Kalina (Ret.) 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 <aolautos.com>, <aolquickbuddy.com>, <aoldsl.com> and <netscaperadio.com> domain names are confusingly similar to Complainant’s AOL, BUDDY LIST, and NETSCAPE marks.

2. Respondent does not have any rights or legitimate interests in the <aolautos.com>, <aolquickbuddy.com>, <aoldsl.com> and <netscaperadio.com> domain names.

3. Respondent registered and used the <aolautos.com>, <aolquickbuddy.com>, <aoldsl.com> and <netscaperadio.com> domain names in bad faith.

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

FINDINGS

Complainant and its affiliated entity Netscape Communications Corp., is the owner of numerous trademarks for the marks AOL, BUDDY LIST, and NETSCAPE.    Complainant holds numerous registrations for its marks with the U.S. Patent and Trademark Office (“USPTO”), including Reg. Nos. 1,977,731 (AOL – June 4, 1996); 2,167,048 (BUDDY LIST – June 23, 1998) and 2,027,552 (NETSCAPE – December 31, 1996). 

Respondent registered the disputed domain names between November 5, 2001 and May 5, 2002.  Respondent’s <aolquickbuddy.com>, <aoldsl.com> and <netscaperadio.com> domain names redirect Internet users to commercial websites and search engines.  The <aolautos.com> directs Internet users to commercal websites but not search engines.  Respondent has a history of engaging in cybersquatting.  See e.g. Nat’l Wildlife Fed’n v. Kang, FA 170519 (Nat. Arb. Forum Sept. 9, 2003) (Respondent was ordered to transfer the <yourbigbackyard.com> and <rangerrickmagazine.com> domain names to Complainant); see also Qwest Communications Int’l Inc. v. Kang, FA 158161 (Nat. Arb. Forum July 8, 2003) (Respondent was ordered to transfer the <wwwqwest.com> domain name to Complainant). 

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 provides various Internet related services, including search engine services.  Complainant has established rights in the AOL, BUDDY LIST and NETSCAPE marks through their 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 <aoldsl.com> and <aolautos.com> domain names are confusingly similar to Complainant’s AOL mark because the domain names fully incorporate the mark and merely add the generic acronym “dsl” and generic word “autos.”  Furthermore, Respondent’s <netscaperadio.com> domain name is confusingly similar to Complainant’s NETSCAPE mark because the domain name fully incorporates the mark and merely adds the generic word “radio.”  Addition of generic words/acronyms to another’s mark is insufficient to distinguish a domain name from another’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 Pfizer, Inc. v. Papol Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that, because the subject domain name incorporated the VIAGRA mark in its entirety, and deviated only by the addition of the word “bomb,” the domain name was rendered confusingly similar to Complainant’s mark).

Furthermore, Respondent’s <aolquickbuddy.com> domain name is confusingly similar to Complainant’s AOL and BUDDY LIST marks because the domain name fully incorporates the AOL mark and combines it with the generic term “quick” along with the “buddy” portion of Complainant’s BUDDY LIST mark.  Combining Complainant’s marks along with a generic word is insufficient to circumvent the Panel from finding the disputed domain name confusingly similar to Complainant’s marks.  See Nintendo of Am., Inc. v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding confusing similarity where respondent combined Complainant’s POKEMON and PIKACHU marks to form the <pokemonpikachu.com> domain name).

Rights or Legitimate Interests

Respondent uses the misleading domain names to redirect Internet users to commercial websites and competing search engines.  The Panel presumes that Respondent receives “click-through-fees” from Internet vendors whose websites are visited via Respondent’s domain names.  Hence, the Panel concludes that Respondent has attempted to commercially benefit from the unauthorized use of Complainant’s marks which constitutes neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Yahoo! Inc. v. Web Master a/k/a MedGo, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (finding that Respondent’s use of a confusingly similar domain name to operate a pay-per-click search engine, in competition with Complainant, was not a bona fide offering of goods or services); see also Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that Respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to Complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name); see also Bank of Am. Corp. v. Out Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003) (holding that Respondent’s use of infringing domain names to direct Internet traffic to a search engine website that hosted pop-up advertisements was evidence that it lacked rights or legitimate interests in the domain names).

Furthermore, Respondent is not authorized or licensed to use or register domain names that incorporate Complainant’s marks.  The WHOIS information fails to establish that Respondent is commonly known by the disputed domain names.  Therefore, the Panel concludes that Respondent lacks 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 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); see also Tercent, Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).

Also, due to Respondent’s failure to refute the allegations of the Complaint by way of a Response, the Panel concludes that Respondent lacks rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii).  See 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); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).

Registration and Use in Bad Faith

It can be inferred that Respondent had knowledge of Complainant’s marks because Complainant’s marks have attained world-wide recognition through their use in commerce, are registered with the USPTO, and the disputed domain names systematically incorporate Complainant’s marks.  Registration of domain names, despite knowledge of Complainant’s rights, is evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii).  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 Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18, 2000) (finding that Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the worldwide prominence of the mark and thus Respondent registered the domain name in bad faith); see also 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”).

Furthermore, Respondent uses the misleading domain names to redirect Internet users to commercial websites and search engines that compete with Complainant.  The Panel presumes that Respondent commercially benefits via the misleading domain names by receiving “click-through-fees.”  Respondent’s use of the disputed domain names constitutes bad faith pursuant to Policy ¶ 4(b)(iv).  See 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)); see also 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 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).

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 <aolautos.com>, <aolquickbuddy.com>, <aoldsl.com> and <netscaperadio.com> domain names be TRANSFERRED from Respondent to Complainant.

Judge Harold Kalina (Ret.), Panelist

Dated:  October 24, 2003

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