DECISION

America Online, Inc. v. Michele Dinoia a/k/a SZK.com

Claim Number: FA0212000137098

PARTIES

Complainant is America Online, Inc., Dulles, VA, USA (“Complainant”) represented by James R. Davis, of Arent Fox Kintner Plotkin & Kahn.  Respondent is Michele Dinoia SZK.COM, Pineto, ITALY (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <a0l.com> and <icq2000b.com> registered with The Registry at Info Avenue Inc., and <wwwnetscape.net> and <wwwwinamp.com>, registered with OnlineNIC.

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.

James A. Carmody, Esq., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on December 17, 2002; the Forum received a hard copy of the Complaint on December 19, 2002.

On December 18, 2002, The Registry at Info Avenue Inc. and OnlineNIC, confirmed by e-mail to the Forum that the domain names <a0l.com> and <icq2000b.com> are registered with The Registry at Info Avenue Inc., and <wwwnetscape.net> and <wwwwinamp.com> are registered with OnlineNIC., and that Respondent is the current registrant of the names.  The Registry at Info Avenue Inc. and OnlineNIC, have verified that Respondent is bound by the The Registry at Info Avenue Inc. and OnlineNIC 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 December 20, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 9, 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@a0l.com, postmaster@icq2000b.com, postmaster@wwwnetscape.net, postmaster@wwwwinamp.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 January 16, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James A. Carmody, Esq., 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

1. The  <a0l.com> domain name is confusingly similar to Complainant's AOL mark.

The <icq2000b.com> domain name is confusingly similar to Complainant's ICQ mark.

The <wwwnetscape.net> domain name is confusingly similar to Complainant's NETSCAPE mark.

The <wwwwinamp.com> domain name is confusingly similar to Complainant's WINAMP mark.

2. Respondent has no 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 numerous registrations for its AOL, ICQ, NETSCAPE and WINAMP marks with the United States Patent and Trademark Office.  Complainant’s Registration Numbers include 1,977,731 (AOL); 2,411,657 (ICQ); 2,027,552 (NETSCAPE) and 2,557,585 (WINAMP).  All of Complainant’s marks are well-known as Complainant is one of the largest providers of Internet services in the world.

Respondent registered <wwwnetscape.net> on May 6, 2002; <wwwwinamp.com> on February 3, 2002; <icq2000b.com> on July 29, 2001; and <a01.com> on August 6, 2001.  Respondent is using the disputed domain names to divert Internet users to various commercial websites including online communication software companies and online music companies.  Respondent has registered other domain names that incorporate the famous trademarks of others including <anheuserbusch.com> and <kidsrus.com>.

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 the 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 the 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, ICQ, NETSCAPE and WINAMP marks through registration with the United States Patent and Trademark Office and widespread use throughout the world, including Italy.

Respondent’s <a01.com> domain name is confusingly similar to confusingly similar to Complainant’s AOL mark.  Respondent merely replaces the letters “OL” in Complainant’s AOL mark with the numbers “01,” which are almost visually identical.  Thus, the disputed domain name does not overcome a claim of confusing similarity.  See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a Respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to Complainant’s marks); see also Oxygen Media, LLC v. Primary Source, D2000-0362 (WIPO June 19, 2000) (finding that the domain name <0xygen.com>, with zero in place of letter “O,” “appears calculated to trade on Complainant’s name by exploiting likely mistakes by users when entering the url address”).

The <icq2000b.com> domain name is confusingly similar to Complainant’s ICQ mark because it incorporates Complainant’s entire mark and merely adds the year “2000” and the letter “b.”  The addition of numbers and letters to a famous mark does not create a distinct domain name capable of overcoming a claim of confusing similarity because Complainant’s mark is still the dominant element of the domain name.  See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that adding the suffixes "502" and "520" to the ICQ trademark does little to reduce the potential for confusion); see also Hitachi, Ltd. v. Fortune Int’l Dev. Ent, D2000-0412 (WIPO July 2, 2000) (finding that the domain name <hitachi2000.net> is confusingly similar to Complainant’s mark); see also Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a Respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to Complainant’s marks).

The <wwwnetscape.net> and <wwwwinamp.com> domain names are confusingly similar to Complainant’s NETSCAPE and WINAMP marks respectively because they incorporate Complainant’s entire NETSCAPE and WINAMP marks and add only “www” before them.  The addition of the three w’s capitalizes on a common typographical error that occurs when an Internet user fails to type the period between the “www” of the URL and the second-level domain name.  This minor change does not add any distinguishing features to the <wwwnetscape.net> or <wwwwinamp.com> domain names.  See Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that Respondent’s domain name <wwwbankofamerica.com> is confusingly similar to Complainant’s registered trademark BANK OF AMERICA because it “takes advantage of a typing error (eliminating the period between the www and the domain name) that users commonly make when searching on the Internet”).

Accordingly, 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 inference in tbe 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”).

Moreover, Respondent has failed to invoke any circumstances that could demonstrate rights and legitimate interests in the domain name.  When Complainant asserts a prima facie case against Respondent, the burden of proof shifts to Respondent to show that it has rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  See 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 in respect of the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the Respondent has failed to invoke any circumstance that could demonstrate any rights or legitimate interests in the domain name).

Respondent is using the <icq2000b.com> domain name to direct Internet users to provide links to online communications software companies that provide services identical to those offered by Complainant at <icq.com>.  The use of a domain name confusingly similar to Complainant’s mark to divert Internet traffic to websites that compete with Complainant’s business is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor is it a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).  See Chip Merch., Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that the disputed domain names were confusingly similar to Complainant’s mark and that Respondent’s use of the domain names to sell competing goods was illegitimate and not a bona fide offering of goods); see also Ticketmaster Corp. v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9, 2001) (finding no rights or legitimate interests where Respondent generated commercial gain by intentionally and misleadingly diverting users away from Complainant's site to a competing website).

The <wwwwinamp.com> domain name is being used by Respondent to divert Internet users to a website that offers links to online music companies that directly compete with Complainant’s WINAMP service.  Respondent’s use of the <wwwwinamp.com> domain name in this manner is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(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 Am. Online Inc. v. Shenzhen JZT Computer Software Co., D2000-0809 (WIPO Sept. 6, 2000) (finding that Respondent’s operation of a website offering essentially the same services as the Complainant and displaying the Complainant’s mark was insufficient for a finding of bona fide offering of goods or services).

Respondent is using the <wwwnetscape.net> and <a01.com> domain names to divert Internet user users to commercial websites.  The use of Complainant’s marks to cause Internet user confusion and divert Internet traffic to websites unrelated to Complainant is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name); see also State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000) (finding that the “unauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services”); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that use of Complainant’s mark “as a portal to suck surfers into a site sponsored by Respondent hardly seems legitimate”).

Moreover,  Respondent has failed to submit any evidence that it is commonly known as A01, ICQ2000B, WWWNETSCAPE, WWWWINAMP, <a0l.com>, <icq2000b.com>, <wwwnetscape.net>, or <wwwwinamp.com>.  Based on the fame of Complainant’s marks it would be very difficult for Respondent to establish that it is commonly known as any of the disputed domain names; thus Respondent’s failure to respond can be inferred to be an admission that it has no rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c)(ii).  See 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); see also 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).

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

Registration and Use in Bad Faith

Respondent is using the four domain names in dispute to divert Internet users to various commercial websites.  It can be inferred that Respondent is making a profit from the Internet traffic it diverts to these websites and links.  Respondent is therefore using the disputed domain names to cause a likelihood of confusion for its own commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See 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)); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where Respondent directed Internet users seeking Complainant’s site to its own website for commercial gain).

Based on the fame of Complainant’s AOL, ICQ, NETSCAPE and WINAMP marks the Panel infers that Respondent had actual or constructive knowledge of Complainant’s rights in the marks when it registered the disputed domain names.  Registration of infringing domain names, despite actual or constructive 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) (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 Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration).

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

DECISION

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

Accordingly, it is Ordered that the domain names <a0l.com>, <icq2000b.com>, <wwwnetscape.net>, and <wwwwinamp.com> be TRANSFERRED from Respondent to Complainant.

James A. Carmody, Esq., Panelist

Dated: January 20, 2003

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