DECISION

America Online, Inc. v. GSD Pty. Ltd

Claim Number:  FA0307000169083

PARTIES

Complainant is America Online, Inc., Dulles, VA, USA (“Complainant”) represented by James R. Davis, of Arent Fox Kintner Plotkin & Kahn, PLLC. Respondent is GSD Pty. Ltd., Milton, Brisbane, Australia (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <aolteen.com> and <icqporn.com>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.Com.

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 July 16, 2003; the Forum received a hard copy of the Complaint on July 21, 2003.

On July 17, 2003, Intercosmos Media Group, Inc. d/b/a Directnic.Com confirmed by e-mail to the Forum that the domain names <aolteen.com> and <icqporn.com> are registered with Intercosmos Media Group, Inc. d/b/a Directnic.Com and that Respondent is the current registrant of the names. Intercosmos Media Group, Inc. d/b/a Directnic.Com has verified that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a Directnic.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 July 22, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 11, 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@aolteen.com and postmaster@icqporn.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 August 20, 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 makes the following assertions:

1. Respondent’s <aolteen.com> domain name is confusingly similar to Complainant’s AOL mark, and its <icqporn.com> domain name is confusingly similar to Complainant’s ICQ mark.

2. Respondent does not have any rights or legitimate interests in the <aolteen.com> and <icqporn.com> domain names.

3. Respondent registered and used the <aolteen.com> and <icqporn.com> domain names in bad faith.

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

FINDINGS

Complainant, America Online, Inc., is the owner of the registered AOL and ICQ marks. The AOL mark has been in continual use since 1989, and Complainant holds several registrations for the mark on the Principal Register of the U.S. Patent and Trademark Office (e.g. U.S. Reg. No. 1,977,731, registered on June 4, 1996) and with the Australian Trademark authorities (e.g. Australian Reg. No. 655,189). Complainant’s ICQ mark has also been registered on both the Principal Register (e.g. U.S. Reg. No. 2,411,657, registered on December 12, 2000, with a filing date of October 29, 1997) and with the Australian Trademark authorities (e.g. Australian Reg. No. 770,352). Sale of services under these marks have amounted to millions of dollars since their first use

Respondent, GSD Pty. Ltd, registered the <aolteen.com> and <icqporn.com> domain names on January 30 and January 28, 1999, respectively. Respondent is not licensed or authorized to use Complainant’s AOL or ICQ marks for any purpose. Both disputed domain names host adult-oriented websites. Both also display the text “Landed on the wrong page?” before listing a series of hyperlinks to additional adult-oriented content.

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 ICQ marks through registration of those marks with the appropriate trademark authorities in both the United States and Australia, as well as through widespread use of the marks in commerce.

Respondent’s <aolteen.com> and <icqporn.com> domain names are confusingly similar to Complainant’s AOL and ICQ marks. The <aolteen.com> domain name entirely appropriates Complainant’s famous AOL mark. Likewise, the <icqporn.com>domain name operates in the same manner vis a vis Complainant’s ICQ mark. After appropriating Complainant’s marks, Respondent then added the words “teen” or “porn” to those marks, additional words that do not disguise the fact that the dominant feature of each domain name is Complainant’s marks. Both domain names remain confusingly similar to the marks that they incorporate. 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 Complainant combined with a generic word or term); see also Oki Data Am.s, Inc. v. ASD Inc., D2001-0903 (WIPO Nov. 6, 2001) (“the fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks”).

Accordingly, the Panel finds that the <aolteen.com> and <icqporn.com>domain names are confusingly similar to Complainant’s AOL and ICQ marks, respectively, and that Policy ¶ 4(a)(i) is satisfied.

Rights or Legitimate Interests

Respondent uses the disputed domain names to post adult-oriented content. Given the prominent placement of Complainant’s AOL and ICQ marks in the two disputed domain names, such services cannot be considered to be “bona fide” or legitimately “noncommercial” for the purposes of Policy ¶¶ 4(c)(i) and (iii). Thus, the Panel holds that these “safe harbor” provisions of the Policy do not apply to Respondent. See ABB Asea Brown Boveri Ltd. v. Quicknet, D2003-0215 (WIPO May 26, 2003) (finding that the use of the disputed domain name in connection with pornographic images and links “tarnished and diluted” Complainant’s mark and this was evidence that Respondent had no rights or legitimate interests in the disputed domain name); see also Paws, Inc. v. Zuccarini, FA 125368 (Nat. Arb. Forum Nov. 15, 2002) (holding that the use of a domain name that is confusingly similar to an established mark to divert Internet users to an adult-oriented website “tarnishes Complainant’s mark and does not evidence noncommercial or fair use of the domain name by a respondent”).

Given the widespread fame of Complainant’s marks and the fact that Respondent has not affirmatively claimed to be “commonly known by” the disputed domain names, the Panel finds that Respondent cannot avail itself of Policy ¶ 4(c)(ii). See Foot Locker Retail, Inc. v. Gibson, FA 139693 (Nat. Arb. Forum Feb. 4, 2003) ( “[D]ue to the fame of Complainant’s FOOT LOCKER family of marks…and the fact that Respondent’s WHOIS information reveals its name to be ‘Bruce Gibson,’ the Panel infers that Respondent was not ‘commonly known by’ any of the disputed domain names prior to their registration, and concludes that Policy ¶ 4(c)(ii) does not apply to Respondent”); 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 Respondent does not have rights or legitimate interests in the <aolteen.com> and <icqporn.com> domain names under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent registered and used the disputed domain names in bad faith. Respondent registered two domain names that infringed on Complainant’s famous and registered AOL and ICQ marks. Respondent’s subsequent use of the goodwill surrounding Complainant’s marks to attract Internet users to adult oriented websites tarnishes that goodwill. This conclusion is bolstered by the fact that Respondent has constructively admitted that it is intentionally infringing on Complainant’s marks with its posting of the rhetorical question “Landed on the wrong page?” at each of the disputed domain names. Thus, Respondent’s unauthorized use of Complainant’s mark to host adult-oriented material is evidence that the disputed domain names were registered and used in bad faith. See Microsoft Corp. v. Horner, D2002-0029 (WIPO Feb. 27, 2002) (holding that Respondent’s use of Complainant’s mark to post pornographic photographs and to publicize hyperlinks to additional pornographic websites evidenced bad faith use and registration of the domain name); see also Nat’l Ass’n of Stock Car Auto Racing, Inc. v. RMG Inc – BUY or LEASE by E-MAIL, D2001-1387 (WIPO Jan. 23, 2002) (stating that “it is now well known that pornographers rely on misleading domain names to attract users by confusion, in order to generate revenue from click-through advertising, mouse-trapping, and other pernicious online marketing techniques”).

The Panel thus finds that Respondent registered and used the <aolteen.com> and <icqporn.com> 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 <aolteen.com> and <icqporn.com> domain names be TRANSFERRED from Respondent to Complainant.

James A. Carmody, Esq., Panelist

Dated:  September 2, 2003

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