DECISION

America Online, Inc. v. Roger Klemons

Claim Number:  FA0310000203127

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 Roger Klemons  (“Respondent”) CA.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <aolsmuts.com>, registered with Wild West Domains, Inc.

PANEL

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

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on October 10, 2003; the Forum received a hard copy of the Complaint on October 16, 2003.

On October 10, 2003, Wild West Domains, Inc. confirmed by e-mail to the Forum that the domain name <aolsmuts.com> is registered with Wild West Domains, Inc. and that Respondent is the current registrant of the name. Wild West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, 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 October 17, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 6, 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@aolsmuts.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 November 14, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (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 name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <aolsmuts.com> domain name is confusingly similar to Complainant’s AOL mark.

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

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

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

FINDINGS

Complainant is an Internet service provider, owning numerous trademark registrations in the mark AOL, including Reg. No. 1,977,731 and Reg. No. 1,984,337, registered on June 4, 1996 and July 2, 1996, for computer and telecommunication services.  Complainant also owns the registrations for the mark AOL.COM, including Reg. No. 2,325,291 and 2,325,292, both registered on March 7, 2000, for computer and telecommunications services.

Respondent registered <aolsmuts.com> on July 26, 2003.  The domain name directs the user to a website with pornography and editorial content.  The bottom of the home page disclaims affiliation with some major web services and service providers: “AOLSmuts has no affiliation with Yahoo, MSN, America Online, AIM, ICQ, Excite or any other online chat device or messenger program/service.”

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 trademark registration and continuous use.  The disputed domain name is confusingly similar to Complainant’s mark.  The only difference between the disputed domain name <aolsmuts.com>  and Complainant’s mark is the addition of “smuts.”  A domain name that incorporates a famous mark and adds a generic term does not distinguish the disputed domain name from the famous mark.  Therefore, the Panel finds that <aolsmuts.com> is confusingly similar to AOL.  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 the Complainant combined with a generic word or term); see also 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).

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

Rights or Legitimate Interests

Respondent has failed to submit a Response in this proceeding.  Thus, the Panel is permitted to accept all reasonable allegations and inferences in the Complaint as true.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”).

Respondent is using a domain name that is confusingly similar to Complainant’s mark in connection with a website that offers pornographic services.  This use 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 Isleworth Land Co. v. Lost In Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (finding that Respondent’s use of its domain name to link unsuspecting Internet traffic to an adult-oriented website did not constitute a connection with a bona fide offering of goods or services or a noncommercial or fair use); see Target Brands, Inc. v. Bealo Group S.A., FA 128684 (Nat. Arb. Forum Dec. 17, 2002) (stating that “[m]isdirecting Internet traffic by utilizing Complainant’s registered mark [in order to direct Internet users to an adult-oriented website] does not equate to a bona fide offering of goods or services . . . nor is it an example of legitimate noncommercial or fair use of a domain name . . . . Respondent was merely attempting to capitalize on a close similarity between its domain name and the registered mark of Complainant, presumably to gain revenue from each Internet user redirected to the pornographic website).

Given the WHOIS contact information for the disputed domain, one can infer that Respondent is not commonly known by the name.  In addition, Complainant has not licensed or authorized Respondent to use the <aolsmuts.com> domain name.  Therefore, Respondent has failed to satisfy Policy ¶ 4(c)(ii).  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 Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding that no person besides Complainant could claim a right or a legitimate interest with respect to the domain name <nike-shoes.com>).

Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

In the disclaimer on the pornographic website, Respondent refers to Complainant.  This demonstrates that Respondent was aware of Complainant, and his registration of the disputed domain name was in bad faith.  See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); 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). 

Respondent distributes pornographic pictures and commentary in conjunction with Complainant’s mark, demonstrating that the use of the disputed domain name was in bad faith.  See Microsoft Corp. v. Horner, D2002-0029 (WIPO Feb. 27, 2002) (holding that Respondent’s use of Complainant’s mark to post pornographic photographs and to publicize hyperlinks to additional pornographic websites evidenced bad faith use and registration of the domain name); see also Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that absent contrary evidence, linking the domain names in question to graphic, adult-oriented websites is evidence of bad faith).

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 <aolsmuts.com> domain name be TRANSFERRED from Respondent to Complainant.

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated:  November 21, 2003

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