DECISION

America Online, Inc. v. Arion Software

Claim Number:  FA0308000187395

PARTIES

Complainant is America Online, Inc., Dulles, VA (“Complainant”) represented by James R. Davis, of Arent Fox Kintner Plotkin & Kahn, PLLC.  Respondent is Arion Software, Laguna Hills, CA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain name at issue are <aolpms.com>, <aolbms.com>, <aolpos.com> and <aolcrm.com>, registered with Wild West Domains, Inc.

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.

Judge Harold Kalina (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on August 18, 2003; the Forum received a hard copy of the Complaint on August 18, 2003.

On August 18, 2003, Wild West Domains, Inc. confirmed by e-mail to the Forum that the domain names <aolpms.com>, <aolbms.com>, <aolpos.com> and <aolcrm.com> are registered with Wild West Domains, Inc. and that Respondent is the current registrant of the names. Wild West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, 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 19, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 8, 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@aolpms.com, postmaster@aolbms.com, postmaster@aolpos.com and postmaster@aolcrm.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 18, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Judge Harold Kalina (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 names be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <aolpms.com>, <aolbms.com>, <aolpos.com> and <aolcrm.com> domain names are confusingly similar to Complainant’s AOL mark.

2. Respondent does not have any rights or legitimate interests in the <aolpms.com>, <aolbms.com>, <aolpos.com> and <aolcrm.com> domain names.

3. Respondent registered and used the <aolpms.com>, <aolbms.com>, <aolpos.com> and <aolcrm.com> domain names in bad faith.

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

FINDINGS

Complainant, America Online, Inc., is the holder of numerous trademark registrations worldwide for the AOL mark, including U.S. Patent and Trademark Office Registration Nos. 1,977,731 and 1,984,337, which were registered on June 4, 1996, and July 2, 1996, respectively. Complainant uses its AOL mark in connection with, inter alia, Internet and computer-related services. Complainant began using its AOL mark in connection with computer online services and other Internet-related services at least as early as 1989, and to date has approximately thirty-five million subscribers, making it the most widely-used interactive online service in the world.

Respondent, Arion Software, registered the <aolpms.com> domain name on  November 6, 2002, the <aolbms.com> and <aolpos.com> domain names on February 21, 2003, and the <aolcrm.com> domain name on April 30, 2003. Respondent is not licensed or authorized to use Complainant’s AOL mark for any purpose. Respondent uses the disputed domain names to sell computer software programs online or to host a generic “log in” page, and purportedly operates these websites under the acronym for “Arion On Line.” After receiving a cease and desist letter from Complainant, Respondent informed Complainant that it could “put all this to an end” by reimbursing Respondent for the costs it would incur by renaming its business, and placed the dollar amount for this transaction at $25,000.

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

Respondent’s <aolpms.com>, <aolbms.com>, <aolpos.com> and <aolcrm.com> domain names are confusingly similar to Complainant’s AOL mark. Each disputed domain name uses Complainant’s famous AOL mark with the addition of a string of three letters. Given the fame surrounding the AOL mark, it remains the dominant feature of the disputed domain names, despite the inclusion of additional letters, and each domain name is thus confusingly similar to Complainant’s mark. See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that adding the suffixes "502" and "520" to the ICQ trademark does little to reduce the potential for confusion); see also Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a Respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to Complainant’s marks).

Accordingly, the Panel finds that the <aolpms.com>, <aolbms.com>, <aolpos.com> and <aolcrm.com> domain names are confusingly similar to Complainant’s AOL mark under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent uses the disputed domain names to either sell computer software or to host a generic “log in” page. In the context of its software sales, Respondent is operating as “Arion On Line,” which it claimed to Complainant as the rationale for its use of the AOL mark in its domain names. Complainant alleges that this business name is a simple pretext utilized by Respondent to attempt to legitimize its use of the AOL mark. As Respondent failed to respond to the Complaint and rebut what appears to be an obvious case of cybersquatting on the famous AOL mark, the Panel infers that Respondent admits that it lacks rights or legitimate interests in the disputed domain name. See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response, Respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name); see also BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any rights or legitimate interests in the domain name”).

Respondent’s use of the disputed domain names to sell computer software capitalizes on the fame surrounding Complainant’s AOL mark, while its use of the mark to draw Internet users to a generic log in screen merely dilutes the mark. In either circumstance, Respondent cannot be considered to be making a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the disputed domain names. Thus, Policy ¶¶ 4(c)(i) and (iii) cannot be considered to apply to Respondent. See Prudential Ins. Co. of Am. v. Stonybrook Invs., LTD, FA 100182 (Nat. Arb. Forum Nov. 15, 2001) (finding no rights or legitimate interests in the disputed domain name where Respondent was using Complainant’s mark to redirect Internet users to a website offering credit card services unrelated to those services legitimately offered under Complainant’s mark); see also U.S. Franchise Sys., Inc. v. Howell, FA 152457 (Nat. Arb. Forum May 6, 2003) (holding that Respondent’s use of Complainant’s mark and the goodwill surrounding that mark as a means of attracting Internet users to an unrelated business was not a bona fide offering of goods or services).

Similarly, Policy ¶ 4(c)(ii) is inapplicable to Respondent. In light of Respondent’s failure to respond and the world-wide fame of Complainant’s registered AOL mark, the Panel is unwilling to find that Respondent is “commonly known by” the disputed domain names. 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).

Further evidence that Respondent lacks rights or legitimate interests in the disputed domain names is evident from its attempt to sell each of its registrations to Complainant. 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 Mothers Against Drunk Driving v. Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, Respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name).

Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the <aolpms.com>, <aolbms.com>, <aolpos.com> and <aolcrm.com> domain names under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent is using the fame surrounding the AOL mark to lure Internet users into viewing its domain names, in an attempt to sell computer software. This use of Complainant’s mark for commercial gain is evidence that the disputed domain names were registered and used in bad faith pursuant to Policy ¶ 4(b)(iv). See 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); see also 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)).

However, the Panel feels that the more significant evidence that the domain names were registered and used in bad faith comes from Respondent’s attempt to sell its domain name registrations to Complainant. Given the widespread fame of the AOL mark, Respondent’s explanation to Complainant as to why it chose to use the AOL mark in its domain names, absent rebuttal by Respondent, is difficult to believe, at best. Thus, the Panel infers that Respondent’s primary purpose in registering each of the disputed domain names was the sale of those domain name registrations to Complainant. This type of activity evidences bad faith registration and use pursuant to Policy ¶ 4(b)(i). See Matmut v. Tweed, D2000-1183 (WIPO Nov. 27, 2000) (finding bad faith under Policy paragraph 4(b)(i) where Respondent stated in communication with Complainant, “if you are interested in buying this domain name, we would be ready to sell it for $10,000”); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000)  (finding that the attempted sale of a domain name is evidence of bad faith)

The Panel thus finds that Respondent registered and used the <aolpms.com>, <aolbms.com>, <aolpos.com> and <aolcrm.com> domain names 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 <aolpms.com>, <aolbms.com>, <aolpos.com> and <aolcrm.com> domain names be TRANSFERRED from Respondent to Complainant.

Judge Harold Kalina (Ret.), Panelist

Dated:  September 24, 2003

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2003/926.html