|
|
Home
| Databases
| WorldLII
| Search
| Feedback
Generic Top Level Domain Name (gTLD) Decisions |
America Online, Inc. v. Pro-Life Domains
aka Pro-Life Domains, Inc.
Claim
Number: FA0306000161565
Complainant is America Online, Inc., Dulles, Virginia
(“Complainant”) represented by James R.
Davis, II, of Arent Fox Kintner Plotkin & Kahn. Respondent is Pro-Life Domains, Inc., Bronx, New York (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <supportataol.com> and <americaoliine.com>,
registered with Enom, Inc.
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.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on June 4, 2003; the Forum
received a hard copy of the Complaint
on June 5, 2003.
On
June 4, 2003, Enom, Inc. confirmed by e-mail to the Forum that the domain names
<supportataol.com> and <americaoliine.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
June 9, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"),
setting a deadline of
June 30, 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
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 9, 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.
Complainant
requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <supportataol.com> and
<americaoliine.com> domain names are confusingly similar to
Complainant’s family of marks.
2. Respondent does not have any rights or
legitimate interests in the <supportataol.com> and <americaoliine.com>
domain names.
3. Respondent registered and used the <supportataol.com>
and <americaoliine.com> domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
America Online, Inc., is the holder of numerous trademark registrations
worldwide for the AOL family of marks.
Complainant holds many registrations for the AOL mark, including U.S.
Patent and Trademark Registration Nos. 1,977,731 and 1,984,337,
which were
registered on June 4, 1996 and July 2, 1996, respectively. Complainant also holds numerous trademark
registrations worldwide for the AMERICA ONLINE mark, including U.S. Patent and
Trademark
Registration No. 1,618,148, which was registered on October 16,
1990. In addition, Complainant holds
U.S. Patent and Trademark Registration Nos. 2,325,291 and 2,325,292, which were
both registered on
March 7, 2000 for the AOL.COM mark.
Complainant
began using the AOL and AMERICA ONLINE marks as early as 1989 and the AOL.COM
mark as early at 1992 in connection with
computer online services and other
Internet-related services. Complainant
uses the AOL.COM mark and the domain name AMERICAONLINE.COM in connection with
its official Internet web site.
Complainant also uses the AOL and AMERICA ONLINE marks extensively at
its official web site to promote its services.
With
approximately thirty-five million subscribers, Complainant operates the most
widely-used interactive online service in the world. Each year, millions of Internet users worldwide obtain services
offered under the AOL family of marks.
Millions more are exposed to Complainant’s family of marks through
advertising and promotion.
Respondent
registered the <supportataol.com> domain name on March 3, 2003,
and the <americaoliine.com> domain name on March 12, 2003. Respondent is using the disputed domain
names to route Internet users to the <abortioninsmurder.org> domain name
web page which
portrays graphic images of aborted fetuses and promotes various
organizations and entities that provide services related to birth
control,
adoption, counseling, etc.
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.
Complainant has
established rights in the AOL, AMERICA ONLINE and AOL.COM marks through
registration of the marks with the U.S. Patent
and Trademark Office and
continuous use of the marks 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 BroadcastAmerica.com,
Inc. v. Quo, DTV2000-0001 (WIPO Oct. 4, 2000) (finding that Complainant has
common law rights in BROADCASTAMERICA.COM, given extensive use of
that mark to
identify Complainant as the source of broadcast services over the Internet, and
evidence that there is wide recognition
with the BROADCASTAMERICA.COM mark
among Internet users as to the source of broadcast services).
Respondent’s <supportataol.com>
and <americaoliine.com> domain names are confusingly similar
to Complainant’s family of marks.
Respondent added the generic words “support” and “at” to Complainant’s
famous and distinctive AOL mark resulting in the <supportataol.com> domain
name. In addition, Respondent’s <americaoliine.com>
domain name is merely a misspelling of Complainant’s famous AMERICA ONLINE
mark. Thus, the Panel finds that the
disputed domain names are not sufficiently distinguishable from Complainant’s
family of marks under
Policy ¶ 4(a)(i). See America Online, Inc. v. iDomainNames.com, FA 93766 (Nat. Arb. Forum Mar. 24,
2000) (finding that Respondent’s domain name <go2AOL.com> was confusingly
similar to Complainant’s
AOL mark): 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); see also America
Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb.
Forum Mar. 16, 2000) (finding that Respondent’s domain name,
<americanonline.com>, is confusingly similar
to Complainant’s famous
AMERICA ONLINE mark).
Accordingly, the
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent has
failed to show any circumstances that could substantiate its rights or
legitimate interests in the <supportataol.com> and <americaoliine.com>
domain names because Respondent has failed to submit a response in this
proceeding. In the absence of a
response, the Panel may accept all reasonable allegations contained in the
complaint as true. 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 Am. Online, Inc. v. AOL
Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate
interests where Respondent fails to respond).
There is no
evidence that Respondent is commonly known by either of the disputed domain
names. Both the names given in the
WHOIS contact information for the <supportataol.com> and <americaoliine.com>
domain names and the fame surrounding Complainant’s family of marks support the
Panel’s inference that Respondent is not commonly
known by either of the
disputed domain names. 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 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).
Respondent has
no rights or legitimate interests in either the <supportataol.com> domain
name or the <americaoliine.com> domain name. Respondent is taking advantage of
Complaianant’s famous family of marks by using the disputed domain names to
attract Internet users
and then reroute them to the web page hosted at the
<abortionismurder.org> domain name for its own financial gain. Complainant has no connection with the
anti-abortion web page that Respondent is redirecting Internet users to. In addition, Respondent is tarnishing
Complainant family of marks by subjecting unwary Internet users to a website
that advocates
a controversial issue and features graphic photographs of
aborted fetuses. Therefore, the Panel
finds that Respondent’s use of the disputed domain names does not establish a
bona fide offering of goods or
service under Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii). See The Am.
Nat’l. Red Cross v. Domains a/k/a Best
Domains a/k/a John Berry, FA
143684 (Nat. Arb. Forum Mar. 4, 2003) (Respondent used a disputed domain name
to divert internet users to websites not associated
with or authorized by
Complainant, such as an anti-abortion website.
“Appropriating Complainant’s mark for these purposes cannot equate to a
bona fide offering of goods and services, and does not evidence
legitimate
noncommercial or fair use of the domain name”); see also Rittenhouse Dev. Co. v. Domains For Sale, Inc., FA 105211 (Nat. Arb. Forum Apr. 8, 2002) (finding that,
by linking the confusingly similar domain name to an “Abortion is Murder”
website Respondent has not demonstrated a right or legitimate interest in the
disputed domain name).
Accordingly, the
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
registered and is using the <supportataol.com> and <americaoliine.com>
domain names in bad faith. Once
Respondent attracts Internet users, it redirects them to the
<abortionismurder.org> domain name which displays politically
charged
content that is completely unrelated to Complainant’s business. Thus, the Panel finds that Respondent has
intentionally registered the disputed domain names containing Complainant’s
well-known family
of marks in bad faith pursuant to Policy ¶ 4(a)(iii). See McClatchy Management Services, Inc.
v. Please DON'T Kill Your Baby a/k/a William and Mark Purdy II, Willaim S.
Purdy, FA 153541 (Nat. Arb. Forum May 28, 2003) (finding “[b]y
intentionally taking advantage of the goodwill surrounding Complainant’s
mark
to further its own political agenda, Respondent registered the disputed domain
names in bad faith”); see also See Rittenhouse
Dev. Co. v. Domains For Sale, Inc., FA
105211 (Nat. Arb. Forum Apr. 8, 2002) (finding that “when a party registers and
uses a domain name that incorporates a well-known
mark and connects the domain
name with a website that depicts offensive images,” the party has registered
and used the disputed domain
name in bad faith).
Accordingly, the
Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established
all three elements required under ICANN Policy, the Panel concludes that relief
shall be GRANTED.
Accordingly, it
is Ordered that the <supportataol.com> and <americaoliine.com>
domain names be TRANSFERRED from Respondent to Complainant.
John J. Upchurch , Panelist
Dated:
July 23, 2003
WorldLII:
Copyright Policy
|
Disclaimers
|
Privacy Policy
|
Feedback
URL: http://www.worldlii.org/int/other/GENDND/2003/760.html