DECISION

AOL Time Warner, Inc. v. apex domains a/k/a Anti-Globalization Domains a/k/a Domains Anti-Globalization

Claim Number:  FA0309000198026

PARTIES

Complainant is AOL Time Warner, Inc., New York, NY (“Complainant”) represented by James R. Davis II, of Arent Fox Kintner Plotkin & Kahn, PLLC, 1050 Connecticut Avenue, NW, Washington, D.C. 20036.  Respondent is apex domains a/k/a Anti-Globalization Domains a/k/a Domains Anti-Globalization, 5444 Arlington Ave., #g14, Bronx, NY 10471 (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <aoltechsupport.com>, registered with Enom, Inc., and <scoobydo.com>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.Com (hereinafter “Directnic.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.

James A. Crary as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on September 24, 2003; the Forum received a hard copy of the Complaint on September 29, 2003.

On September 29, 2003, Enom, Inc. confirmed by e-mail to the Forum that the domain name <aoltechsupport.com> is registered with Enom, Inc., and that Respondent is the current registrant of the name. On September 29, 2003, Directnic.Com confirmed by e-mail to the Forum that the domain name <scoobydo.com> is registered with Directnic.Com, and that Respondent is the current registrant of the name. Enom, Inc. and Directnic.Com have verified that Respondent is bound by the Enom, Inc. and Directnic.Com registration agreements 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 3, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 23, 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@aoltechsupport.com and postmaster@scoobydo.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 29, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed  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 <aoltechsupport.com> domain name is confusingly similar to Complainant’s AOL mark and Respondent’s <scoobydo.com> domain name is confusingly similar to Complainant’s SCOOBY-DOO mark.

2. Respondent does not have any rights or legitimate interests in the <aoltechsupport.com> and <scoobydo.com> domain names.

3. Respondent registered and used the <aoltechsupport.com> and <scoobydo.com> domain names in bad faith.

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

FINDINGS

Complainant, AOL Time Warner, Inc., owns numerous trademark registrations for the AOL mark in the United States (e.g. U.S. Reg. Nos. 1,977,731 and 1,984,337). Complainant has approximately thirty-five million subscribers for its AOL-branded interactive online service and has used the AOL mark since as early as 1989 in this capacity.

Complainant also owns several trademark registrations for the SCOOBY-DOO mark (e.g. U.S. Reg. No. 1,579,527). The SCOOBY-DOO mark has been used in commerce since 1969 in connection with entertainment services, and Complainant has marketed the mark to consumers via Internet websites, comic books, movies and television programing.

Respondent, apex domains a/k/a Anti-Globalization Domains a/k/a Domains Anti-Globalization, registered the <aoltechsupport.com> and <scoobydo.com> domain names on March 28, and March 24, 2002, respectively. Respondent uses both of the disputed domain names to redirect Internet users to the <abortionismurder.org> domain name, which hosts an anti-abortion website displaying graphic images of aborted fetuses and hyperlinks to anti-abortion documents related to, inter alia, birth control, adoption and abortion counseling.

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 and SCOOBY-DOO marks through registration of the marks with the U.S. Patent and Trademark Office, as well as through widespread and continuous use of the marks in commerce.

Respondent’s <aoltechsupport.com> domain name is confusingly similar to Complainant’s AOL mark. Respondent’s use of Complainant’s famous AOL mark with the addition of the descriptive phrase “tech support” (a service provided by Complainant) creates a domain name that remains confusingly similar to Complainant’s mark. See Oki Data Ams., Inc. v. ASD Inc., D2001-0903 (WIPO Nov. 6, 2001) (“the fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks”); see also Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where Respondent’s domain name combines Complainant’s mark with a generic term that has an obvious relationship to Complainant’s business).

Respondent’s <scoobydo.com> domain name is confusingly similar to Complainant’s SCOOBY-DOO mark. But for the elimination of the second “o” in the word DOO and the deletion of the hyphen between the two words of Complainant’s mark, the domain name is identical to Complainant’s mark. See Nat’l Cable Satellite Corp. v. Black Sun Surf Co., FA 94738  (Nat. Arb. Forum June 19, 2000) (holding that the domain name <cspan.net>, which omitted the hyphen from the trademark spelling, C-SPAN, is confusingly similar to Complainant's mark); see also State Farm Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730 (Nat. Arb. Forum June 15, 2000) (finding that the domain name <statfarm.com> is confusingly similar to Complainant’s STATE FARM mark).

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

Rights or Legitimate Interests

Respondent uses both of the disputed domain names to redirect Internet users to the <abortionismurder.org> domain name, which hosts politically charged content that bears no relation to Complainant’s AOL mark or the SCOOBY-DOO mark. Using Complainant’s mark for these purposes is not a bona fide offering of goods and services, and without Complainant’s authorization to use the marks, cannot be considered a legitimate noncommercial or fair use of the domain names. Thus, Policy ¶¶ 4(c)(i) and (iii) are inapplicable in this dispute. 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).

Given the fame of Complainant’s AOL and SCOOBY-DOO marks, the Panel finds that Respondent is not “commonly known by” the name “AOL Tech Support” or “Scooby Do,” rendering Policy ¶ 4(c)(ii) inapplicable in this dispute. See 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); see also 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).

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

Registration and Use in Bad Faith

Respondent has appropriated Complainant’s famous AOL and SCOOBY-DOO marks to express its opinions on abortion. The Panel infers that Respondent had actual knowledge of Complainant’s rights in these marks when it registered the disputed domain names, providing evidence that Respondent registered the domain names in bad faith. As Respondent is capitalizing on the goodwill Complainant has built up around its marks to express opinions that are not endorsed or officially supported by Complainant, Respondent’s use tarnishes Complainant’s marks and evidences bad faith use. See McClatchy Mgmt. Servs. Inc. v. Please DON'T Kill Your Baby, FA 153541 (Nat. Arb. Forum May 28, 2003) (“By intentionally taking advantage of the goodwill surrounding Complainant’s mark to further its own political agenda, Respondent registered the disputed domain names in bad faith”); see also Journal Gazette Co. v. Domain For Sale Inc., FA 12202 (Nat. Arb. Forum Oct. 9, 2002) (finding “Respondent chose the domain name to increase the traffic flowing to the <abortionismurder.org> and <thetruthpage.com> websites,” which tarnished Complainant’s mark, evidence that the domain name was registered in bad faith).

The Panel thus finds that Respondent registered and used the <aoltechsupport.com> and <scoobydo.com> domain names 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 <aoltechsupport.com> and <scoobydo.com> domain names be TRANSFERRED from Respondent to Complainant.

James A. Crary, Panelist

Dated:  November 3, 2003

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