DECISION

America Online, Inc. v. Edmund Janas II a/k/a Destiny Design

Claim Number: FA0310000203173

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 Edmund Janas II a/k/a Destiny Design, 27 Dorchester St., Springfield, MA 01109 (“Respondent”).

REGISTRARS AND DISPUTED DOMAIN NAMES

The domain names at issue are <aolvoicemail.com>, <world-wide-wow.com> and <welcometotheworldwidewow.com> registered with Enom, Inc., and <musicnetonaol.com>, <musicnetaol.com> and <aoltivo.com> registered with Go Daddy Software, 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.

 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 14, 2003; the Forum received a hard copy of the Complaint on October 17, 2003.

On October 15, 2003, Enom, Inc. confirmed by e-mail to the Forum that the domain names <aolvoicemail.com>, <world-wide-wow.com> and <welcometotheworldwidewow.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 the same date, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the domain names <musicnetonaol.com>, <musicnetaol.com> and <aoltivo.com> are registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the names. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the Policy.

On October 20, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 10, 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@aolvoicemail.com, postmaster@world-wide-wow.com, postmaster@welcometotheworldwidewow.com, postmaster@musicnetonaol.com, postmaster@musicnetaol.com, and postmaster@aoltivo.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.

PROCEDURAL ISSUE: MARKS OF MULTIPLE PARTIES

Respondent’s <aoltivo.com> domain name incorpates disparate parties’ marks and interests. More specifically, TiVo Inc.’s TIVO mark is implicated by way of Respondent’s domain name. Due to practical difficulties inherent in the UDRP, cooperative complaint initiation is unlikely and unfeasible. Because Complainant initiated this dispute prior to any other interested party, Complainant has the opportunity to acquire the domain name, while seeking to protect its AOL mark from an infringing use. However, due to the procedural complexities presented by the current dispute, the following issue must be addressed: that Complainant seeks acquisition of the subject domain name in good faith, and will forfeit its interest in the contested domain name if the other represented mark is infringed upon following a transfer of the domain name registration to Complainant. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (Complainant’s continuing control of the <viagra-xenical-celebrex-propecia-meridia-zyban.com> domain name is contingent upon good faith possession, and Complainant will forfeit its interest in the domain name if it infringes on the other represented marks); see also G.D. Searle v. Dunham, FA 123901 (Nat. Arb. Forum Oct. 9, 2002).

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 <aolvoicemail.com>, <world-wide-wow.com>, <welcometotheworldwidewow.com>, <musicnetonaol.com>, <musicnetaol.com> and <aoltivo.com> domain names (hereinafter the “disputed domain names” or “domain names”) are identical or confusingly similar to Complainant’s AOL, WORLD WIDE WOW and WELCOME TO THE WORLD WIDE WOW marks.

2. Respondent does not have any rights or legitimate interests in the disputed domain names.

3. Respondent registered and used the disputed domain names in bad faith.

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

FINDINGS

Complainant holds a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the AOL mark (Reg. No. 1,977,731 registered on June 4, 1996) in relation to, inter alia, telecommunications services and computer services. Complainant also holds pending trademark applications with the USPTO for the WOLRD WIDE WOW mark (Ser. No. 76,498,330 filed on March 18, 2003) and the WELCOME TO THE WORLD WIDE WOW mark (Ser. No. 76,498,333 filed on March 18, 2003) in relation to, inter alia, computer software and telecommunications services.

Respondent registered the disputed domain names between February 26, 2003 and July 24, 2003. Respondent has linked the domain names to a website that offers telecommunication services similar to those offered by Complainant under its marks. Respondent offered to transfer the <musicnetonaol.com>, <musicnetaol.com> and <aoltivo.com> domain names to Comlainant for a total of $990.

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 that it has rights in the AOL mark through registration with the USPTO. See 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); see also 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”). Furthermore, Respondent has established its rights in the WORLD WIDE WOW and WELCOME TO THE WORLD WIDE WOW marks through its pending trademark applications. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that Complainant's trademark or service mark be registered by a government authority or agency for such rights to exist. Rights in the mark can be established by pending trademark applications); see also Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (finding that the Uniform Domain Name Dispute Resolution Policy does not require “that a trademark be registered by a governmental authority for such rights to exist”).

Complainant argues that Respondent’s <world-wide-wow.com> and <welcometotheworldwidewow.com> domain names are identical to Complainant’s marks because the domain names appropriate Complainant’s entire mark and simply add hyphens and/or the generic top-level domain (gTLD) “.com” to the mark. Neither the addition of hyphens nor the addition of a gTLD suffice to significantly distinguish the domain names from the marks for purposes of Policy ¶ 4(a)(i). See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Chernow Communications Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark").

Complainant contends that Respondent’s <aolvoicemail.com>, <musicnetonaol.com>, <musicnetaol.com> and <aoltivo.com> domain names are confusingly similar to Complainant’s AOL mark because the domain names incorporate Complainant’s mark in its entirety and add generic or descriptive terms, or the third-party mark TIVO. The Panel finds that the addition of these terms does not sufficiently differentiate the domain names from the mark under Policy ¶ 4(a)(i). See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied); see also 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 G.D. Searle & Co. v. Pelham, FA 117911 (Nat. Arb. Forum Sept. 19, 2002) (finding that the addition of other drug names does not create a distinct mark capable of overcoming a claim of confusing similarity, “it merely creates a domain name with severe potential to confuse Internet users as to the source, sponsorship and affiliation of the domain”).

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

Rights or Legitimate Interests

Respondent has not come forward to challenge the allegations in the Complaint. Therefore, the Panel accepts all of Complainant’s reasonable allegations and inferences to be true. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true); see also 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).

Moreover, Respondent has failed to invoke any circumstances that could demonstrate rights to or legitimate interests in the domain names. When Complainant asserts a prima facie case against Respondent, the burden shifts to Respondent to show rights to or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii). See Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that Respondent has no rights or legitimate interests in the domain name because Respondent never submitted a Response or provided the Panel with evidence to suggest otherwise); see also Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the Panel and Respondent did not come forward to suggest any right or interest it may have possessed).

Respondent has linked the domain names to a website that offers telecommunication services similar to those offered by Complainant under its marks. Respondent’s use of domain names identical or confusingly similar to Complainant’s marks to offer services in direct competition with Complainant’s business does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶4(c)(iii). See Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that Respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with Complainant, was not a bona fide offering of goods or services); see also Computerized Sec. Sys., Inc. d/b/a SAFLOK v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (holding that Respondent’s appropriation of Complainant’s mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services).

Respondent is not licensed or authorized to use Complainant’s marks. Furthermore, Respondent has offered no proof and there is no evidence in the record that Respondent is commonly known by any of the disputed domain names. Accordingly, the Panel finds that Respondent has failed to demonstrate any rights to or legitimate interests in the domain names with regard 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 RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").

The Panel finds that Complainant has established Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent’s use of the disputed domain names, domain names identical or confusingly similar to Complainant’s marks, to compete directly with Complainant’s business establishes Respondent’s bad faith because Respondent’s use of the domain names to attract internet users to Respondent’s website for commercial gain by creating a likelihood of confusion with Complainant’s mark evidences bad faith registration and use 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).

Moreover, Respondent’s offer to sell three of the disputed domain names for $990 further demonstrates Respondent’s bad faith because the registration of a domain name primarily for the purpose of selling the domain name registration to Complainant for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name is evidence of registration and use in bad faith under Policy ¶ 4(b)(i). See Pocatello Idaho Auditorium Dist. v. CES Marketing Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002) ("[w]hat makes an offer to sell a domain [name] bad faith is some accompanying evidence that the domain name was registered because of its value that is in some way dependent on the trademark of another, and then an offer to sell it to the trademark owner or a competitor of the trademark owner"); see also Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where Respondent offered domain names for sale).

Accordingly, the Panel finds that Complainant has established Policy ¶ 4(a)(iii).

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 <aolvoicemail.com>, <world-wide-wow.com>, <welcometotheworldwidewow.com>, <musicnetonaol.com>, <musicnetaol.com> and <aoltivo.com> domain name be TRANSFERRED from Respondent to Complainant.

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

Dated: November 24, 2003 

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