DECISION

America Online, Inc. v. fluxxx, inc

Claim Number:  FA0305000158162

PARTIES

Complainant is America Online, Inc., Dulles, VA (“Complainant”) represented by James R. Davis, of Arent Fox Kintner Plotkin & Kahn.  Respondent is fluxxx, inc, Ft. Lauderdale, FL (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <aolwebfind.com>, registered with Network Solutions, 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.

John J. Upchurch as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on May 20, 2003; the Forum received a hard copy of the Complaint on May 22, 2003.

On May 22, 2003, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <aolwebfind.com> is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 June 3, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 23, 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 @aolwebfind.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 July 2, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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 <aolwebfind.com> domain name is confusingly similar to Complainant’s family of marks.

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

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

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

FINDINGS

Complainant, America Online, Inc., owns numerous trademark registrations worldwide for the AOL family of marks.  Complainant owns U.S. Patent and Trademark Office Reg. Nos. 1,977,731 and 1,984,337 for the AOL mark, which were registered on June 4, 1996 and July 2, 1996, respectively.  Complainant also owns U.S. Patent and Trademark Office Reg. Nos. 2,325,291 (registered on Mar. 7, 2000) and 2,325,292 (registered on March 7, 2002) for the mark AOL.COM.  In addition, Complainant owns U.S. Patent and

Trademark Office Reg. No.2,476,914, which was registered on Aug. 14, 2001 for the NETFIND mark.  Each of these marks are registered on the Principal Register.   

Complainant began using the AOL mark as early as 1989, the NETFIND mark as early as 1990, and the AOL.COM mark as early as 1992 in connection with providing services and general interest information on the Internet around the world.  With over thirty-four million subscribers, AOL operates the most widely used interactive online service in the world. Each year, millions of Complainant’s customers obtain services under the AOL family of marks; millions more are exposed to said marks through advertising and promotion. As a result, the AOL marks have become one of the most readily recognized and famous marks used on the Internet. 

Respondent registered the <aolwebfind.com> domain name on October 23, 2001 and is using it to route Internet users to a commercial pornographic website.  The pornographic site at the disputed domain name offers Internet users the opportunity to join “Hardcore XXX Mag.” and receive pictures, video feeds, adult jokes and cartoons, passwords, and links to other sites.  Complainant has nothing to do with the services offered at the pornographic website associated with the <aolwebfind.com> domain name.

Respondent registered the <aolnetfind.com>, <aol-porn.com>, and <aolwebfind.com> domain names many years after Complainant first registered and used the AOL mark.  Respondent transferred the <aolnetfind.com> and <aol-porn.com> domain names to Complainant and Respondent claimed it would cease all infringing uses of the AOL mark.

In an informal response to the complaint, Respondent expressed to the Panel that it did not contest Complainant’s allegations and it was willing to transfer the <aolwebfind.com> domain name to Complainant.

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, AOL.COM, and NETFIND marks through registration and subsequent continuous use of the mark in commerce.  See The Men’s Wearhouse, Inc. v. Brian 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).

The disputed domain name is confusingly similar to Complainant’s family of marks.  Respondent is using Complainant’s famous and distinctive AOL mark as a prefix to “web find,” which has the same meaning as Complainant’s NETFIND mark.  The AOL mark is the dominant feature in the disputed domain name and is likely to lead consumers to believe the services provided at the <aolwebfind.com> domain name are associated with an Internet search function sponsored by Complainant.  Furthermore, the Panel finds that replacing the word “net” with the word “web” is not sufficient to differentiate the disputed domain name from Complainant’s AOL, AOL.COM, and NETFIND marks.  See Prudential Ins. Co. of Am. v. Irvine, FA 95768 (Nat. Arb. Forum Nov. 6, 2000) (finding that the domain name is identical to Complainant’s PRUDENTIAL ONLINE trademark…also the root of the domain name, namely the word "Prudential," is identical to Complainant’s mark…thus, the domain name in its entirety is confusingly similar to Complainant’s family of marks); see also Oki Data Americas, Inc. v. ASD Inc., D2001-0903 (WIPO Nov. 6, 2001) (“the fact that a domain name incorporates a Complainant’s registered mark is sufficient to establish identical or confusing similarity for purposes of the Policy despite the addition of other words to such marks”); see also America Online Inc. v. Neticq.com Ltd., D2000-1606 (WIPO Feb. 12, 2001) (finding that the addition of the generic word “Net” to Complainant’s ICQ mark, makes the <neticq.com> domain name confusingly similar to Complainant’s mark).

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

Rights or Legitimate Interests

Respondent has failed to submit a formal response in this proceeding.  However, in an informal submission to the Panel, Respondent stated that it did not contest Complainant’s allegations and that the administrative contact for the disputed domain name had already

been transferred.   Thus, Respondent’s willingness to transfer the <aolwebfind.com> domain name is evidence that it lacks legitimate interests or rights in the disputed domain name.  See Land O’ Lakes Inc. v. Offbeat Media Inc., FA 96451 (Nat. Arb. Forum Feb. 23, 2001) (finding that Respondent’s willingness to transfer upon notification of the Complaint is evidence of its lack of legitimate interests or rights); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that Respondent’s failure to submit a formal response combined with its agreement at the onset of the Complaint to transfer the disputed names satisfies all the requirements of 4(a)).

Respondent is using the <aolwebfind.com> domain name to redirect Internet users to a pornographic website.  The pornographic site at the disputed domain name offers Internet users the chance to join “Hardcore XXX Mag.” and receive its services.  Respondent is taking advantage of Complainant’s famous mark by routing Internet users to the commercial domain name for its own financial gain.  Respondent is also tarnishing Complainant’s family of marks by subjecting Internet users to a series of unsolicited sexually explicit and pornographic images.  Thus, the Panel finds that Respondent’s use of Complainant’s family of marks to promote a commercial pornographic website that is unrelated to Complainant does not establish a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name under Policy ¶¶ 4(c)(i) and (iii).  See MatchNet plc v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that it is not a bona fide offering of goods or services to use a domain name for commercial gain by attracting Internet users to third party sites offering sexually explicit and pornographic material, where such use is calculated to mislead consumers and tarnish Complainant’s mark); see also Nat’l Football League Prop., Inc. v. One Sex Entm’t Co., D2000-0118 (WIPO Apr. 17, 2000) (finding that Respondent had no rights or legitimate interests in the domain names <chargergirls.com> and <chargergirls.net> where Respondent linked these domain names to its pornographic website); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that infringing on another's well-known mark to provide a link to a pornographic site is not a legitimate or fair use).

There is no evidence that Respondent, fluxxx, inc. is commonly known by the disputed domain name.  In addition, both the name given in the WHOIS contact information for the <aolwebfind.com> domain name and the fame surrounding Complainant’s family of marks support the reasonable inference that Respondent is not commonly known by the disputed domain name.  Furthermore, Respondent is not licensed or authorized to use Complainant’s mark for any purpose.  Thus, the Panel reasonably infers that Policy ¶ 4(c)(ii) does not apply to Respondent.  See Tercent Inc. v. Lee 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 Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent has no rights or legitimate interests in domain names because it is not commonly known

by Complainant’s marks and Respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use).

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

Registration and Use in Bad Faith

Respondent registered and uses the <aolwebfind.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv).  Respondent creates a likelihood of confusion as to the source of sponsorship when Respondent uses Complainant’s famous family of marks to redirect them to a pornographic website associated with the <aolwebfind.com> domain name.  The Panel reasonably infers that Respondent is commercially profiting from the unauthorized use of Complainant’s family of marks based on the images displayed and services offered on the redirected website.  Thus, Respondent’s violation of Policy ¶4(b)(iv) is evidence of bad faith use and registration of the disputed domain name.  See 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); see also Youtv, Inc. v. Alemdar, FA 94243 (Nat. Arb. Forum Apr. 25, 2000) (finding bad faith where Respondent attracted users to his website for commercial gain and linked his website to pornographic websites).

The Panel finds that Policy ¶ 4(a)(iii) has been 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 <aolwebfind.com> domain name be TRANSFERRED from Respondent to Complainant.

John J. Upchurch , Panelist

Dated:  July 15, 2003

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