DECISION

America Online, Inc. v. Refreshing Springs

Claim Number:  FA0409000335393

PARTIES

Complainant is America Online, Inc. (“Complainant”), represented by James R. Davis, of Arent Fox PLLC, 1050 Connecticut Avenue, NW, Washington, DC 20036.  Respondent is Refreshing Springs (“Respondent”), 3606 Park Lake Drive, Fortworth, TX 76133.

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <ezaol.com> and <camericaonline.com>, registered with Go Daddy Software, 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 September 27, 2004; the Forum received a hard copy of the Complaint on September 27, 2004.

On September 27, 2004, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the domain names <ezaol.com> and <camericaonline.com> are registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the names. 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 September 28, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 18, 2004 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@ezaol.com and postmaster@camericaonline.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 October 28, 2004, 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 <ezaol.com> and <camericaonline.com> domain names are confusingly similar to Complainant’s AOL, AOL.COM, and AMERICA ONLINE marks.

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

3. Respondent registered and used the <ezaol.com> and <camericaonline.com> domain names in bad faith.

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

FINDINGS

Complainant registered the AOL mark with the United States Patent and Trademark Office (“PTO”) on June 4, 1996 (Reg. No. 1,977,731).  The AOL mark is used in connection with a variety of services, including the electronic transmission of data, a variety of computer services, and the electronic storage and retrieval of data and documents.  Complainant registered the AOL.COM mark with the PTO on March 7, 2000 (Reg. No. 2,325,292).  The AOL.COM mark is used in connection with telecommunication services, such as “electronic transmission of data, images and documents via computer terminals; electronic store-and-forward messaging; electronic mail services, and facsimile transmission.”  Complainant registered the AMERICA ONLINE mark with the PTO on October 16, 1990 (Reg. No. 1,618,148).  The AMERICA ONLINE mark is used in connection with “leasing access time to a computer data base in the field of news, sports, financial, entertainment, and educational information.”

Respondent registered the disputed domain names <ezaol.com> and <camericaonline.com> on September 3 and September 5 of 2003, respectively.  On July 15, 2004, counsel for Complainant contacted Respondent via e-mail in an attempt to reach an amicable resolution with regard to the disputed domain name registrations.  Respondent responded to the e-mail that same day by stating:

The Web Site Is for sale

895.00 And I Will Forward It To You a.s.a.p.

If you are willing to buy we can talk other wise

dont waste my time and yours with idle chatter

Complainant’s counsel rejected Respondent’s offer to sell the domain name registrations.  Shortly thereafter, the disputed domain names began pointing to a website that solicits campaign donations for John Kerry, the challenger for the 2004 United States presidential election.

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 registered the AOL, AOL.COM, and AMERICA ONLINE marks with the PTO.  Therefore, Complainant has established rights in the marks pursuant to paragraph 4(a)(i) of the Policy. See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that the registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption); see also Am. Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001) (finding that successful trademark registration with the United States Patent and Trademark Office creates a presumption of rights in a mark).

The domain name <ezaol.com> incorporates Complainant’s AOL and AOL.COM marks in their entireties.  Respondent simply prefaces the marks with the letters “ez”.  Past decisions under the Policy have found the addition of the letters “ez” fails to alleviate the confusing similarity that arises as the result of incorporating a third-party mark within a domain name.  Therefore, consistent with prior decisions under the Policy, the Panel finds the domain name <ezaol.com> confusingly similar to Complainant’s AOL and AOL.COM marks pursuant to paragraph 4(a)(i) of the Policy.  See Dollar Fin. Group, Inc. v. EZLoanMart, FA 97309 (Nat. Arb. Forum June 25, 2001) (“The addition of the letters “ez” or variants thereof to Complainant’s established LOAN MART mark is insufficient to distinguish it from Complainant’s registered mark because LOAN MART remains the dominant feature of the Respondent’s domain name.”); see also Am. Online, Inc. v. Lusk, FA 283538 (Nat. Arb. Forum July 26, 2004) (finding the domain name <ezicq.com> confusingly similar to Complainant’s ICQ mark).

The domain name <camericaonline.com> incorporates Complainant’s AMERICA ONLINE mark in its entirety.  Respondent has simply prefaced the mark with the letter “c”.  It is well established that adding a single letter to a third-party mark fails to alleviate the confusing similarity that arises as the result of incorporating a third-party mark within a domain name.  Therefore, consistent with prior decisions under the Policy, the Panel finds the domain name <camericaonline.com> confusingly similar to Complainant’s AMERICA ONLINE mark pursuant to paragraph 4(a)(i) of the Policy.  See Computerized Security Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“[T]he addition of the letter ‘C’ does nothing to 'distinguish' Respondent's domain name from Complainant's registered trademark, which remains the principal element of the domain name.”); see also Am. Online, Inc. v. Inforian, Inc., FA 115086 (Nat. Arb. Forum Aug. 26, 2002) (“Respondent's <cicq.net > domain name is confusingly similar to Complainant's ICQ mark because it incorporates Complainant's entire mark and merely adds the letter ‘c’ to the beginning.”).

Complaniant has established Policy ¶ 4(a)(i).

Rights or Legitimate Interests

The failure of Respondent to respond to the Complaint functions as an implicit admission that Respondent lacks rights and legitimate interests in the disputed domain names.  It also allows the Panel to accept all reasonable allegations set forth in the Complaint as true.  See Honeywell Int’l Inc. v. Domain Deluxe, FA 269166 (Nat. Arb. Forum June 29, 2004) (“The failure of Respondent to respond to the Complaint functions both as an implicit admission that Respondent lacks rights to and legitimate interests in the domain names, as well as a presumption that Complainant’s reasonable allegations are true.”); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names); see also Am. Online, Inc. v. Clowers, FA 199821 (Nat. Arb. Forum Nov. 14, 2003) (finding that the failure to challenge a complainant’s allegations allows a panel to accept all of the complainant’s reasonable allegations and inferences as true).

There is nothing in the record to indicate that Respondent is commonly known by the domain names <ezaol.com> and <camericaonline.com> pursuant to paragraph 4(c)(ii) of the Policy.  See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (finding that the WHOIS information, and its failure to imply that Respondent is commonly known by the disputed domain name, is a 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); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").

Respondent offered to sell the domain name registrations for <ezaol.com> and <camericaonline.com> to Complainant, the owner of the AOL, AOL.COM, and AMERICA ONLINE marks, for $895.00.  Prior decisions under the Policy have held that the willingness of a domain name registrant to dispose of its rights in domain names may suggest that the registrant lacks rights and legitimate interests in the names.  In the absence of evidence to the contrary, the Panel finds that Respondent’s offer to sell the disputed domain name registrations indicates that Respondent lacks rights and legitimate interests in the domain names.  See Mothers Against Drunk Driving v. Hyun-Jun 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); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding Respondent’s conduct purporting to sell the domain name suggests it has no legitimate use); see also Cruzeiro Licenciamentos Ltda v. Sallen, D2000-0715 (WIPO Sept. 6, 2000) (finding that rights or legitimate interests do not exist when one holds a domain name primarily for the purpose of marketing it to the owner of a corresponding trademark).

Moreover, Respondent is using the disputed domain names to divert Internet users to the website of a candidate for the 2004 United States presidential election.  It is neither a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy nor a legitimate noncommercial or fair use under paragraph 4(c)(iii) of the Policy to use a domain name that is identical or confusingly similar to a third party’s mark and divert Internet users to political websites.  See Xerox Corp. v. Anti-Globalization Domains, FA 210224 (Nat. Arb. Forum Dec. 22, 2003) (finding that Respondent did not use its domain name in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use by diverting Internet users to a political website); see also Hoover Co. v. Anti-Globalization Domains, FA 206360 (Nat. Arb. Forum Dec. 18, 2003) (“Respondent is not making a legitimate noncommercial or fair use of the domain name by diverting Internet users to a website displaying political views that are not necessarily the views of Complainant.”); see also Rittenhouse Dev. Co. v. Pro-Life Domians, FA 193763 (Nat. Arb. Forum Oct. 16, 2003) (“[T]he Panel finds that Respondent's use of the domain name to direct Internet users to a politically-charged website is not in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use under Policy ¶ 4(c)(ii).”); see also City Univ. of New York v. Domains For Sale, FA 114477 (Nat. Arb. Forum July 24, 2002) (“Respondent's use of Complainant's mark for its own unrelated political agenda does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor does it represent a fair use pursuant to Policy ¶ 4(c)(iii).”).

Complainant has established Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

In conjunction with the above, it is apparent that the domain names <ezaol.com> and <camericaonline.com> have no connection with the content contained on the attached political website.  The Panel is of the opinion that, but for the goodwill surrounding Complainant’s AOL, AOL.COM, and AMERICA ONLINE marks, Complainant would not have registered and used the disputed domain names.  It is apparent that Respondent has attempted to take advantage of the goodwill surrounding Complainant’s mark to further its own agenda and therefore it may be concluded that Respondent registered the domain names in bad faith.  See McClatchy Mgm’t Serv., Inc. v. Please DON'T Kill Your Baby, FA 153541 (Nat. Arb. Forum May 28, 2003) (“By 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 Journal Gazette Co. v. Domain For Sale Inc., FA 12202 (Nat. Arb. Forum Oct. 9, 2002) (finding that Respondent registered and used the domain name <fortwaynejournalgazette.com> in bad faith because it linked the domain name to websites that were capable of tarnishing Complainant’s mark due to the highly charged political content).

The preceding paragraph also establishes that Respondent registered the disputed domain names with actual or constructive knowledge of Complainant’s rights in the AOL, AOL.COM, and AMERICA ONLINE marks, which is further evidence of Respondent’s bad faith registration and use of the domain names.  See 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); see also Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.”); see also Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. 2002) ("Where an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse.").

Complainant has established Policy ¶ 4(a)(iii).

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 <ezaol.com> and <camericaonline.com> domain names be TRANSFERRED from Respondent to Complainant.

Judge Harold Kalina (Ret.), Panelist

Dated:  November 11, 2004

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