DECISION

America Online, Inc. v. Paul Oshideri

Claim Number:  FA0306000162174

PARTIES

Complainant is America Online, Inc., Dulles, VA (“Complainant”) represented by James R. Davis, of Arent Fox Kintner Plotkin & Kahn.  Respondent is Paul Oshideri, Santa Ana, CA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <aolutility.biz>, registered with Innerwise, Inc. d/b/a Itsyourdomain.Com.

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.

Tyrus R. Atkinson, Jr., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on June 11, 2003; the Forum received a hard copy of the Complaint on June 13, 2003.

On June 12, 2003, Innerwise, Inc. d/b/a Itsyourdomain.Com confirmed by e-mail to the Forum that the domain name <aolutility.biz> is registered with Innerwise, Inc. d/b/a Itsyourdomain.Com and that Respondent is the current registrant of the name. Innerwise, Inc. d/b/a Itsyourdomain.Com has verified that Respondent is bound by the Innerwise, Inc. d/b/a Itsyourdomain.Com 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 16, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 7, 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@aolutility.biz 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 14, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr., 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 <aolutility.biz> domain name is confusingly similar to Complainant’s AOL and AOL.COM marks.

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

3. Respondent registered and used the <aolutility.biz> domain name in bad faith.

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

FINDINGS

Complainant operates the most widely used interactive online service in the world and each year millions of AOL customers worldwide obtain services offered under the AOL and AOL.COM marks.  As early as 1989, Complainant has used the AOL mark in connection with computer services, namely leasing access time to computer databases, computer networks, and computerized research and reference materials.  Complainant holds several registrations for the AOL mark with the U.S. Patent and Trademark Office (“USPTO”), including Reg. Nos. 1,977,731 (registered June 4, 1996) and 1,984,337 (registered July 2, 1996). 

In addition, Complainant uses its AOL.COM mark as the domain name for its website.  Complainant holds several registrations for the AOL.COM mark with the USPTO, including Reg. Nos. 2,325,291 and 2,325,292 (both registered on March 7, 2000).  Complainant has used the AOL.COM mark in commerce since as early as 1992.

Respondent registered the <aolutility.biz> domain name on March 22, 2002.  The disputed domain name directs Internet users to a commercial website called <domainsnext.com>, which provides ISP, Web hosting, and e-mail services that are similar to those provided by Complainant.

Respondent lost a UDRP decision filed by Complainant in an earlier dispute regarding the nearly identical <aolutility.com> domain name.  See America Online, Inc. v. Cucamonga Elec. Corp. a/k/a Paul Oshideri, FA 103364 (Nat. Arb. Forum Feb. 26, 2002) (The Panel ordered that the <aolutility.com> domain name be transferred from Respondent 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 and AOL.COM marks through registration with the USPTO and through use in commerce.

Respondent’s <aolutility.biz> is confusingly similar to Complainant’s marks because it fully incorporates the AOL mark and merely adds the generic word “utility.”  Internet users are likely to mistakenly assume that the disputed domain name should be associated with Complainant because it fully incorporates the well-known AOL mark and directs Internet users to a website that offers services similar to Complainant. Therefore, the disputed domain name is confusingly similar to Complainant’s mark.  See 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 the Complainant combined with a generic word or term); see also America Online, Inc. v. Viper, D2000-1198 (WIPO Nov. 28, 2000) (“it is well past the day when Internet users would not make the assumption that use of AOL as part of a domain name links that site in the mind of the user to Complainant”).

Furthermore, the <aolutility.biz> domain name is practically identical to the <aolutility.com> domain name, which was transferred from the Respondent to the Complainant in a previous UDRP hearing.  The only difference between the current disputed domain name and the previously disputed domain name is that the generic top-level domain name has been changed to “.biz.”  Therefore, this Panel concludes that the <aolutility.biz> domain name should also be classified as confusingly similar to Complainant’s marks.  See America Online, Inc. v. Cucamonga Elec. Corp. a/k/a Paul Oshideri, FA 103364 (Nat. Arb. Forum Feb. 26, 2002) (finding that the <aolutility.com> domain name was confusingly similar to Complainant’s AOL and AOL.COM marks).

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

Rights or Legitimate Interests

Due to Respondent’s failure to respond to the allegations in the Complaint, the Panel presumes that Respondent lacks rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).  See Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the Panel and Respondent did not come forward to suggest any right or interest it may have possessed); 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).

Also, Respondent is not affiliated with Complainant and the record fails to establish that Respondent is authorized or licensed to register or use domain names or marks incorporating Complainant’s marks.  Furthermore, the WHOIS information for the <aolutility.biz> domain name lists Respondent, Paul Oshideri as the registrant; however, it fails to establish Respondent as an “individual, business, or other organization” commonly known by the <aolutility.biz> domain name.  Therefore, Respondent does not have rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).  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 Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark).

Finally, the Panel presumes that Respondent incorporated Complainant’s AOL mark into the disputed domain name with the intent to commercially benefit from the goodwill associated with the mark.  The Panel presumes that Respondent attempted to commercially benefit from the disputed domain name by receiving a share of the profits generated from directing Internet users to the <domainsnext.com> domain name, a commercial website.  Respondent’s incorporation of Complainant’s AOL mark with the intent to commercially gain from its goodwill is neither 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 Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was diverting consumers to its own website by using Complainant’s trademarks); see also MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous MSNBC mark where Respondent attempted to profit using the Complainant’s mark by redirecting Internet traffic to its own website).

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

Registration and Use in Bad Faith

Respondent registered the <aolutility.biz> domain name after a UDRP proceeding in which Respondent was ordered to transfer the <aolutility.com> domain name to Complainant.  Given that the currently disputed <aolutility.biz> domain name is practically identical to the previously disputed <aolutility.com> domain name, the Panel concludes that Respondent knew of Complainant’s rights in the AOL mark and registered the <aolutility.biz> domain name in bad faith.  See Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that, in light of the notoriety of Complainants' famous marks, Respondent had actual or constructive knowledge of the BODY BY VICTORIA marks at the time she registered the disputed domain name and such knowledge constituted bad faith); 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).

Also, Respondent registered the <aolutility.biz> domain name and incorporated Complainant’s AOL mark with the intent to commercially benefit from the goodwill associated with the mark.  The Panel presumes that Respondent attempted to commercially benefit from the disputed domain name by receiving a share of the profits generated from directing Internet users to the <domainsnext.com> domain name, a commercial website.  Respondent’s registration and use of the disputed domain name with the intent to commercially benefit from the goodwill associated with Complainant’s AOL mark constitutes bad faith 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 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).

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 <aolutility.biz> domain name be TRANSFERRED from Respondent to Complainant.

Tyrus R. Atkinson, Jr., Panelist

Dated:  July 25, 2003

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