DECISION

America Online, Inc. v. David Clemett a/k/a D Clemett

Claim Number:  FA0305000157297

PARTIES

Complainant is America Online, Inc., Dulles, VA (“Complainant”) represented by James R. Davis, II, of Arent Fox Kintner Plotkin & Kahn. Respondent is David Clemett, Newport, RI (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <aolamerica.com>, <aoltexas.com>, <aolnewyork.com>, <aolnewport.com>, <aolpalmbeach.com>, <aolfashion.net>, <aolmodels.com>, <aoldate.com>, <aolnightclubs.com>, <aolhotel.com>, <aolmatch.net> and <aolmembers.net>, registered with Catalog.Com, Inc..

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.

Sandra Franklin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on May 12, 2003; the Forum received a hard copy of the Complaint on May 15, 2003.

On May 13, 2003, Catalog.Com, Inc. confirmed by e-mail to the Forum that the domain names <aolamerica.com>, <aoltexas.com>, <aolnewyork.com>, <aolnewport.com>, <aolpalmbeach.com>, <aolfashion.net>, <aolmodels.com>, <aoldate.com>, <aolnightclubs.com>, <aolhotel.com>, <aolmatch.net> and <aolmembers.net> are registered with Catalog.Com, Inc. and that Respondent is the current registrant of the names. Catalog.Com, Inc. has verified that Respondent is bound by the Catalog.Com, 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 May 16, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 5, 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@aolamerica.com, postmaster@aoltexas.com, postmaster@aolnewyork.com, postmaster@aolnewport.com, postmaster@aolpalmbeach.com, postmaster@aolfashion.net, postmaster@aolmodels.com, postmaster@aoldate.com, postmaster@aolnightclubs.com, postmaster@aolhotel.com, postmaster@aolmatch.net and postmaster@aolmembers.net 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 June 11, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra Franklin 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 <aolamerica.com>, <aoltexas.com>, <aolnewyork.com>, <aolnewport.com>, <aolpalmbeach.com>, <aolfashion.net>, <aolmodels.com>, <aoldate.com>, <aolnightclubs.com>, <aolhotel.com>, <aolmatch.net> and <aolmembers.net> domain names are confusingly similar to Complainant’s AOL mark.

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, America Online, Inc., is the holder of numerous trademark registrations for the AOL mark. Complainant has registered its mark both abroad and in the U.S., where Respondent is domiciled (e.g., U.S. Reg. No. 1,977,731, registered on the Principal Register of the U.S. Patent and Trademark Office on June 4, 1996). Complainant uses its mark in connection with providing services on the Internet, such as the leasing of access time to computer databases, computer bulletin boards, electronic mail services and computerized research and reference materials in the fields of business, finance, news, weather, sports, fashion, hotels, theater, nightclubs, travel, education and the like. Complainant adopted and began using its mark as early as 1989 in connection with providing this broad range of information and services over the Internet and at its proprietary AOL online system at the <aol.com> domain name. With 35 million subscribers, Complainant operates the most widely-used interactive online service in the world, while millions more are exposed to the AOL mark through Complainant’s worldwide advertising campaigns.

Respondent David Clemett, also known as “D Clemett,” registered the <aolmembers.net> domain name on March 13, 2002 the <aolnewyork.com>, <aolnewport.com>, <aolpalmbeach.com> and <aolhotel.com> domain names on July 30, the <aolfashion.net>, <aolmodels.com> and <aoldate.com> domain names on August 5, the <aolnightclubs.com> and <aolmatch.net> domain names on September 29, the <aolamerica.com> domain name on October 28, and the <aoltexas.com> domain name on October 30. Respondent is not and has not been licensed or authorized to use Complainant’s AOL mark for any purpose. Respondent’s contact email address for each of the disputed domain names is an address provided by Complainant. 

Respondent uses the <aolmembers.net> domain name to provide Internet services, such as the providing of weather, travel, and news information, that compete with services provided by Complainant. The website associated with this domain name also presents itself to Internet users as associated with Complainant. For example, the website includes a link that specifically invites AOL members to “click here for full screen view,” while the email address “FindGoogle@aol.com” is prominantly displayed. At this website, businesses are given the option of adding their commercial URL for advertisement purposes for a fee that starts at a rate of $50 per month.

The somewhat sparse evidence submitted to the Panel indicates that the <aolamerica.com>, <aoltexas.com>, <aolnewyork.com>, <aolnewport.com>, <aolpalmbeach.com>, <aolfashion.net>, <aolmodels.com>, <aoldate.com>, <aolnightclubs.com> and <aolhotel.com> domain names are not currently being used by Respondent, while the <aolmatch.net> domain name resolves to a website that simply claims to be the “FUTURE HOME OF http://www.aolmatch.net.”  Complainant alleges, but provides no evidentiary support for, the proposition that Respondent uses the <aolnewport.com> domain name in the same manner as its <aolmembers.net> domain name. However, it appears that Respondent posts no content at either this or any of the other above mentioned domain names. Without any reliable evidence to depend upon, the Panel chooses to treat each of the disputed domain names, with the exception of the <aolmembers.net> domain name, as being effectively unused by Respondent since its registration of those domain names between seven and ten months ago.

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 registration of the mark on the Principal Register of the U.S. Patent and Trademark Office, as well as through widespread and continuous use of the mark in commerce.

Respondent’s domain names are each confusingly similar to Complainant’s AOL mark. All incorporate Complainant’s famous AOL mark with the addition of various descriptive terms like “models,” “date” or “nightclubs,” or geographical terms such as “Palm Beach,” “New York” or “America.” The dominant feature of each of the disputed domain names is Complainant’s AOL mark and the mere addition of these terms is not enough to disguise the confusing similarity between the mark and the domain names. See AXA China Region Ltd. v. KANNET Ltd., D2000-1377 (WIPO Nov. 29, 2000) (finding that common geographic qualifiers or generic nouns can rarely be relied upon to differentiate the mark if the other elements of the domain name comprise a mark or marks in which another party has rights); see also Am. Online, Inc. v. Asian On-Line This Domain For Sale, FA 94636 (Nat. Arb. Forum May 17, 2000) (finding that the domain names, which consist of “ao-l” and geographic location are confusingly similar to Complainant’s mark).

Accordingly, the Panel finds that the disputed domain names are each identical to Complainant’s AOL mark under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Complainant can meet its burden of demonstrating that Respondent lacks rights or legitimate interests in the disputed domain names by showing that Respondent is unable to avail itself of the provisions of Policy ¶¶ 4(c)(i)-(iii). See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests with respect to the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name).

Each disputed domain name, with the exception of the <aolmembers.net> domain name has gone unused by Respondent since their registrations. With respect to the <aolmembers.net> domain name, Respondent has posted a website that gives the impression of being affiliated with Complainant, with its prominent display of an email address provided by AOL, an invitation for AOL users to “click here for full screen view” and the inviting nature of the domain name to AOL members itself. This behavior, along with Respondent’s providing of services similar to those provided by Complainant at the <aol.com> domain name, 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 Ziegenfelder Co. v. VMH Enter., Inc., D2000-0039 (WIPO Mar. 14, 2000) (finding that failure to provide a product or service or develop the site demonstrates that Respondents have not established any rights or legitimate interests in the domain name); see also Nike, Inc. v. Crystal Int’l, D2001-0102 (WIPO Mar. 19, 2001) (finding no rights or legitimate interests where Respondent made no use of the infringing domain names).

As stated above, Respondent does not use any of the remaining domain names. This non-use is likewise not a type of behavior capable of falling under Policy ¶ 4(c)(i) or (iii). See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that “[I]t would be unconscionable to find a bona fide offering of services in a respondent’s operation of web-site using a domain name which is confusingly similar to the Complainant’s mark and for the same business”); see also 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)

In light of the fame surrounding Complainant’s AOL mark and Respondent’s failure to submit any evidence to the contrary, the Panel concludes that Respondent is not “commonly known by” the disputed domain name as contemplated by Policy ¶ 4(c)(ii). See Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one “would be hard pressed to find a person who may show a right or legitimate interest” in a domain name containing Complainant's distinct and famous NIKE trademark); see also Victoria’s Secret v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (finding sufficient proof that Respondent was not commonly known by a domain name confusingly similar to Complainant’s VICTORIA’S SECRET mark because of Complainant’s well-established use of the mark).

The Panel also chooses to view Respondent’s failure to respond to the Complaint as evidence that it lacks rights or legitimate interests in the disputed domain name. 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); Hewlett Packard Co. v. Full Sys., FA 94637 (Nat. Arb. Forum May 22, 2000) (holding that Respondent’s failure to offer any evidence permits the inference that the use of Complainant’s mark in connection with Respondent’s website is misleading and Respondent is intentionally diverting business from Complainant).

Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

The <aolmembers.net> domain name entirely incorporates Complainant’s famous AOL mark, while the addition of the word “members” to the mark operates to enhance the likelihood of confusion in the minds of Internet users as to whether Complainant is the sponsor or source of Respondent’s website. Respondent’s several references to Complainant’s mark on its website, as well as the similar nature of the services offered there, all serve to increase this likelihood of confusion. As Respondent uses the domain name to solicit advertising fees from businesses, the domain name is commercial in nature, and thus Respondent’s activities with respect to this domain name evidence registration and use in bad faith pursuant to Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent registered and used an infringing domain name to attract users to a website sponsored by Respondent); see also America Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that Respondent intentionally attempted to attract Internet users to his website for commercial gain by creating a likelihood of confusion with Complainant’s mark and offering the same chat services via his website as Complainant).

With respect to each of the disputed domain names, evidence that they were registered in bad faith can be inferred from Respondent’s actual knowledge of Complainant’s rights in the AOL mark. While the fame of Complainant’s mark alone would be sufficient to support such an inference, the fact that Respondent’s contact information includes an email address provided by Complainant itself is enough to impute actual knowledge to Respondent. This is further evidence that the domain names were registered in bad faith. See Pfizer, Inc. v. Papol Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between Complainant’s mark and the content advertised on Respondent’s website was obvious, Respondent “must have known about the Complainant’s mark when it registered the subject domain name”); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that the ICQ mark is so obviously connected with Complainant and its products that the use of the domain names by Respondent, who has no connection with Complainant, suggests opportunistic bad faith).

Bad faith use of each of the disputed domain names (with the exception of the <aolmembers.net> domain name) is evidenced by Respondent’s failure to use them. The evidence before the Panel indicates that each has sat dormant for anywhere between seven to ten months. As each of the domain names incorporates Complainant’s famous and registered AOL mark, it is unlikely that Respondent would be able to find any good faith use for these domain names, and in any event, Respondent has not come forward to explain its infringing behavior to the Panel. Thus, the Panel concludes that Respondent’s passive holding of the <aolamerica.com>, <aoltexas.com>, <aolnewyork.com>, <aolnewport.com>, <aolpalmbeach.com>, <aolfashion.net>, <aolmodels.com>, <aoldate.com>, <aolnightclubs.com>, <aolhotel.com> and <aolmatch.net> domain names are evidence that they are being used in 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 Body Shop Int’l PLC v. CPIC NET & Hussain, D2000-1214 (Nov. 26, 2000) (finding bad faith where (1) Respondent failed to use the domain name and (2) it is clear that Respondent registered the domain name as an opportunistic attempt to gain from the goodwill of Complainant).

The Panel thus finds that Respondent registered and used the disputed domain names in bad faith, and that Policy ¶ 4(a)(iii) is satisfied.

DECISION

Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <aolamerica.com>, <aoltexas.com>, <aolnewyork.com>, <aolnewport.com>, <aolpalmbeach.com>, <aolfashion.net>, <aolmodels.com>, <aoldate.com>, <aolnightclubs.com>, <aolhotel.com>, <aolmatch.net> and <aolmembers.net> domain names be TRANSFERRED from Respondent to Complainant.

Sandra Franklin, Panelist

Dated:  June 25, 2003

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