DECISION

America Online, Inc. v. Robert Miller

Claim Number:  FA0308000180625

PARTIES

Complainant is America Online, Inc., Dulles, VA (“Complainant”) represented by James R. Davis II, of Arent Fox Kintner Plotkin & Kahn.  Respondent is Robert Miller, Pluckemin, NJ (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <hotaol.com>, registered with Go Daddy Software, 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.

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on August 5, 2003; the Forum received a hard copy of the Complaint on August 6, 2003.

On August 6, 2003, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the domain name <hotaol.com> is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, 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 August 7, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 27, 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@hotaol.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 September 10, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 <hotaol.com> 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 <hotaol.com> domain name.

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

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

FINDINGS

Complainant, America Online, Inc., began using its AOL marks in connection with computer online services and other Internet-related services at least as early as 1989, and is the holder of numerous trademark registrations for these marks. Complainant’s registrations include U.S. Patent and Trademark Office (“USPTO”) Registration Nos. 1,977,731 and 1,984,337 (registered June 4, 1996, and July 2, 1996, respectively, for the AOL mark). In addition, Complainant holds several trademark registrations for the AOL.COM mark, such as Registration Nos. 2,325,291 and 2,325,292, both registered on March 7, 2002. With approximately thirty-five million subscribers, AOL 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. 

Respondent, Robert Miller, registered the <hotaol.com> domain name on May 5, 2000, and is not licensed or authorized to use Complainant’s AOL mark for any purpose. After registering the disputed domain name, Respondent began operating a website that purported to offer an online service that would compete directly with Complainant. Shortly after receipt of a cease-and-desist letter from Complainant that requested transfer of the disputed domain name, Respondent replaced the previous content with a webpage hosting photographs of items sold on eBay. Respondent then responded to Complainant’s cease-and-desist letter by explaining that it simply viewed the website as a “non-word letter string which is of no value or interest to [Complainant].” When Complainant responded to this letter by again requesting transfer of the disputed domain name, Respondent replied to Complainant’s counsel by explaining that it used the disputed domain name for “misc. email addresses when registering at online [web]sites” and later noted that it would “consider any monetary offer [Complainant] may wish to offer for the [domain] name.”

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 though registration of the marks with the U.S. Patent and Trademark Office, as well as through widespread and continuous use of the marks in commerce.

Respondent’s <hotaol.com> domain name is confusingly similar to Complainant’s AOL and AOL.COM marks. The domain name includes Complainant’s mark with the addition of the descriptive word “hot,” which does not dispell any confusion arising from the inclusion of Complainant’s mark in the domain name. See Magnum Piering, Inc. v. Mudjackers, D2000-1525 (WIPO Jan. 29, 2001) (holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name rather than upon the likelihood of confusion test under U.S. trademark law); see also Oki Data Ams., 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 <hotaol.com> domain name is confusingly similar to Complainant’s AOL and AOL.COM marks under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent initially used the disputed domain name to host a website for a company that presumably provided services that competed directly with Complainant’s. Respondent’s use of Complainant’s mark in order to compete with Complainant is not a bona fide business offering, nor a legitimate noncommercial or fair use of the domain name. Thus, Policy ¶¶ 4(c)(i) and (iii) are not applicable to Respondent under these facts. See Avery Dennison Corp. v. Steele, FA 133626 (Nat. Arb. Forum Jan 10, 2003) (finding that Respondent had no rights or legitimate interests in the disputed domain name where it used Complainant’s mark, without authorization, to attract Internet users to its business, which competed with Complainant); see also N. Coast Med., Inc. v. Allegro Med., FA 95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no rights or legitimate interests in a domain name that diverted Internet users to Respondent’s competing website through the use of Complainant’s mark).

Likewise, the fact that Respondent chose to utilize the famous AOL mark in a domain name, absent some showing by Respondent to the contrary, evidences that Respondent lacks rights or legitimate interests in the disputed domain name. As Respondent has not come forward to rebut Complainant’s assertion, Respondent’s sudden desire to post pictures of items on eBay instead of directly competing with Complainant cannot be considered to be protected under Policy ¶¶ 4(c)(i) or (iii). See eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating that the "use of complainant’s entire mark in infringing domain names makes it difficult to infer a legitimate use").

Additional evidence that Respondent lacks rights or legitimate interests in the disputed domain name can be gathered from Respondent’s apparent willingness to sell its domain name registration to Complainant. While there is nothing wrong per se in selling a domain name registration, Respondent’s offer to sell the disputed domain name to the rightful owner of the AOL mark permits the inference that this was Respondent’s ultimate goal in registering a domain name that contains Complainant’s famous AOL mark. See Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum March 4, 2003) (stating that “Respondent’s lack of rights and legitimate interests in the domain name is further evidenced by Respondent’s attempt to sell its domain name registration to Complainant, the rightful holder of the RED CROSS mark”); see also Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests where Respondent registered the domain name with the intention of selling its rights).

Considering the fame of Complainant’s AOL mark and Respondent’s assertion that it considers the domain name as no more than a “non-word letter string,” the Panel finds that Respondent is not “commonly known by” the disputed domain name for the purposes of Policy ¶ 4(c)(ii). See 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); 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).

Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the <hotaol.com> domain name under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Despite Respondent’s claim that the disputed domain name is no more than a string of unrelated letters, the Panel infers that Respondent was well aware of Complainant and its rights in the AOL mark when it registered the <hotaol.com> domain name, and registration of a domain name with actual knowledge that the domain name includes another party’s trademark is evidence that the domain name was registered in bad faith. See Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the worldwide prominence of the mark and thus Respondent registered the domain name in bad faith); see also Yahoo! Inc. v. Ashby, D2000-0241 (WIPO June 14, 2000) (finding that the fame of the YAHOO! mark negated any plausible explanation for Respondent’s registration of the <yahooventures.com> domain name).

Evidence that the domain name was used in bad faith can be gleaned from Respondent’s initial use of the domain name to advertise a business that purportedly competed with Complainant. Such unlicensed and unauthorized use of Complainant’s AOL mark for this purpose is evidence of bad faith use. See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with Complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding bad faith under Policy ¶ 4(b)(iv) where Respondent initially used the domain name at issue to resolve to a website where educational services were offered to the same market as that served by Complainant and later Respondent modified use of the domain name after receiving domain name Complaint).

Furthermore, the Panel infers that Respondent’s ultimate goal in registering the disputed domain name was to sell its domain name registration to Complainant. The above mentioned uses of the disputed domain name made Complainant aware of Respondent and its activities, whereupon Respondent immediately attempted to begin negotiating a price for a domain name that prominently featured the AOL mark. This attempt to sell its domain name registration to Complainant is additional evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(i). See Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002) ("[w]hat makes an offer to sell a domain [name] bad faith is some accompanying evidence that the domain name was registered because of its value that is in some way dependent on the trademark of another, and then an offer to sell it to the trademark owner or a competitor of the trademark owner"); see also S. Co. v. Doms, D2000-0184 (WIPO May 8, 2000) (finding that Respondent violated Policy ¶ 4(b)(i), by indicating to Complainant that he would “consider a cash offer,” inviting Complainant to “submit an opening cash or stock offer,” and failing to reply to Complainant’s offer).

The Panel thus finds that Respondent registered and used the <hotaol.com> domain name in bad faith, and that Policy ¶ 4(a)(iii) is satisfied.

DECISION

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

Accordingly, it is Ordered that the <hotaol.com> domain name be TRANSFERRED from Respondent to Complainant.

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated:  September 15, 2003

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