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America Online, Inc. v. Sandie Kloszewskid/b/a Pink Domain [2003] GENDND 1079 (4 December 2003)


National Arbitration Forum

DECISION

America Online, Inc. v. Sandie Kloszewski d/b/a Pink Domain

Claim Number:  FA0310000204148

PARTIES

Complainant is America Online, Inc. (“Complainant”), represented by James R. Davis II of Arent Fox Kintner Plotkin & Kahn, 1050 Connecticut Avenue, NW, Washington, DC 20036.  Respondent is Sandie Kloszewski d/b/a Pink Domain  (“Respondent”), 2505 Laird Street, Santa Ana, CA 92706.

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <aol-8plus.com> and <aolfact.com>, registered with Melbourne IT, Ltd. d/b/a Internet Names Worldwide.

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically October 23, 2003; the Forum received a hard copy of the Complaint October 27, 2003.

On October 29, 2003, Melbourne IT, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the Forum that the domain names <aol-8plus.com> and <aolfact.com> are registered with Melbourne IT, Ltd. d/b/a Internet Names Worldwide and that Respondent is the current registrant of the names. Melbourne IT, Ltd. d/b/a Internet Names Worldwide verified that Respondent is bound by the Melbourne IT, Ltd. d/b/a Internet Names Worldwide 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 30, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 19, 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@aol-8plus.com and postmaster@aolfact.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 25, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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. The domain name registered by Respondent, <aol-8plus.com> and <aolfact.com>, are confusingly similar to Complainant’s AOL mark.

2. Respondent has no rights or legitimate interests in the <aol-8plus.com> and <aolfact.com> domain names.

3. Respondent registered and used the <aol-8plus.com> and <aolfact.com> domain names in bad faith.

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

FINDINGS

Complainant began to use its AOL mark in 1989 for its computer online services and other Internet-related services.  Currently Complainant operates the most widely-used interactive online service in the world and each year millions of AOL customers worldwide obtain services from Complainant.  Complainant is the owner of a software program called “AOL 8.0 Plus.”  Complainant is the owner of several trademark registrations worldwide for the AOL mark, including U.S. trademark registration Nos. 1,977,731 and 1,984,337, which were registered June 4, 1996, and July 2, 1996, respectively. 

Respondent registered the <aol-8plus.com> and <aolfact.com> domain names April 30, 2003.  Respondent uses the <aol-8plus.com> domain name to redirect Internet users to Respondent’s commercial website, <pinkdomain.info>.  Respondent uses the <pinkdomain.info> website to advertise that it develops websites for customers that desire to host websites that feature adult oriented web-cam shows.  Currently, the <aolfact.com> domain name resolves to a parking page for Webhosting.com and states “Welcome to the future web site of … aolfact.com.”  Complainant asserts that when it contacted Respondent to attempt to settle the dispute, Respondent stated that it would not transfer the domain names to Complainant for less than $10,000.  Complainant also asserts that in a telephone conversation between the two parties, Respondent admitted that it was a former AOL user. 

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 will draw such inferences as the Panel 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 to and/or Confusingly Similar

Complainant established by extrinsic proof in this proceeding that it has rights in the AOL mark through its registration of the mark with the U.S. Patent and Trademark Office (“USPTO”) and through the mark’s use in commerce since 1989.  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 Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established).

Respondent’s domain names are confusingly similar to Complainant’s mark because the domain names incorporate the AOL mark as a prefix to the generic phrase or word, “8plus” and “fact,” and then add the generic top-level domain “.com.”  The <aol-8plus.com> domain name is likely to confuse and mislead consumers into falsely believing that the services provided by Respondent are part of the AOL Version 8.0 software.  The <aolfact.com> domain name is likely to confuse and mislead consumers into falsely believing that Respondent’s site provides information or “facts” about the AOL service.  See 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); 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 Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).

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

Rights to or Legitimate Interests

Due to Respondent’s failure to provide a Response to the Panel in this proceeding, the Panel may accept all reasonable allegations in the Complaint as true.  See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (stating that “[i]n the absence of a response, it is appropriate to accept as true all allegations of the Complaint”).  Further, where Respondent fails to respond and controvert Complainant’s allegations, the Panel may make all reasonable inferences in favor of the Complainant. see also 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).

Moreover, since Respondent failed to dispute the allegations of the Complaint, the Panel may presume that Respondent lacks rights and legitimate interests in the domain names.  See 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); see also 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).

Respondent is not authorized or licensed to register or use domain names that incorporate the AOL mark.  The WHOIS information for the disputed domain names does not establish that Respondent is commonly known by the domain names or the AOL mark.  Therefore, the Panel finds that Respondent lacks rights and legitimate interests in the 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).

Respondent has used the misleading <aol-8plus.com> domain name to redirect Internet users to its commercial website, which includes website development services for adult websites.  Respondent’s use of the domain name, which is confusingly similar to Complainant’s mark, for commercial gain is evidence that the domain name is not being used to make a bona fide offering of goods or services nor used for a noncommercial or fair use.  See Disney Enterss, Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum March 17, 2003) (finding that Respondent’s diversionary use of Complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names); see also U.S. Franchise Sys., Inc. v. Howell, FA 152457 (Nat. Arb. Forum May 6, 2003) (holding that Respondent’s use of Complainant’s mark and the goodwill surrounding that mark as a means of attracting Internet users to an unrelated business was not a bona fide offering of goods or services).

In addition, Respondent’s passive holding of the <aolfact.com> domain name for over six months is evidence that Respondent lacks rights and legitimate interests in the domain name.  See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where Respondent failed to submit a Response to the Complaint and had made no use of the domain name in question); see also Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in the domain name where there is no proof that Respondent made preparations to use the domain name or one like it in connection with a bona fide offering of goods and services before notice of the domain name dispute, the domain name did not resolve to a website, and Respondent is not commonly known by the domain name).

Lastly, Respondent’s attempt to sell the two disputed domain names for more than out-of-pocket costs is evidence that Respondent lacks rights or legitimate interests in the domain names.  See Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s lack of rights and legitimate interests in the domain name is further evidenced by Respondent’s attempt to sell its domain name registration to Complainant, the rightful holder of the RED CROSS mark”); see also Mothers Against Drunk Driving v. Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, Respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name).

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

Registration and Use in Bad Faith

The Panel makes the inference that Respondent had actual knowledge of Complainant’s AOL mark because the mark is registered with the USPTO, is widely known nationally and internationally, and Respondent admitted that it was once an AOL customer.  Registration of a domain name, despite knowledge of Complainant’s rights, is evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii).  See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); 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’s use of the misleading <aol-8plus.com> domain name to redirect Internet users to its commercial website is evidence of bad faith pursuant to Policy ¶ 4(b)(iv).  See 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 Kmart v. Kahn, 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)).

Also, Respondent’s passive holding of the <aolfact.com> domain name for over six months is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).  Due to Respondent’s bad faith use of the <aol-8plus.com> domain name the Panel concludes that it would make little sense to wait until Respondent uses the <aolfact.com> domain name to determine that Policy ¶ 4(a)(iii) has been satisfied when inevitably its use will constitute bad faith.  See Phat Fashions v. Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000) (finding bad faith under Policy ¶ 4(b)(iv) even though Respondent has not used the domain name because “It makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy”); see also Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where Respondent made no use of the domain name in question and there are no other indications that Respondent could have registered and used the domain name in question for any non-infringing purpose); see also Am. Univ. v. Cook, FA 159549 (Nat. Arb. Forum Aug. 21, 2003) (“Respondent has established a pattern of bad faith use of Complainant’s AMERICAN UNIVERSITY mark via the registration and use of the other four disputed domain names; therefore, it makes little sense to wait until the <allamericanuniversity.info> domain name is used to determine that Policy ¶ 4(a)(iii) has been satisfied when inevitably its use will constitute bad faith”).

Lastly, Respondent’s attempt to sell the domain names for more than out-of-pocket costs constitutes additional evidence of bad faith, pursuant to Policy ¶ 4(b)(i).  See World Wrestling Fed’n Entm’t., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000) (finding that Respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out-of-pocket costs); see also Dynojet Research, Inc. v. Norman, AF-0316 (eResolution Sept. 26, 2000) (finding that Respondent demonstrated bad faith when he requested monetary compensation beyond out-of-pocket costs in exchange for the registered domain name).

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 <aol-8plus.com> and <aolfact.com> domain names be TRANSFERRED from Respondent to Complainant.

Hon. Carolyn Marks Johnson, Panelist

Dated: December 4, 2003


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