DECISION

America Online, Inc. v. Tommy Vercetti

Claim Number:  FA0403000244091

PARTIES

Complainant is America Online, Inc. (“Complainant”), represented by James R. Davis II, of Arent Fox PLLC, 1050 Connecticut Avenue, NW, Washington, DC 20036.  Respondent is Tommy Vercetti (“Respondent”), P.O. Box 65, Kutztown, PA 19530.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <fuckaol.net>, registered with iHoldings.com, Inc. d/b/a Dotregistrar.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.

Louis E. Condon as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on March 5, 2004; the Forum received a hard copy of the Complaint on March 8, 2004.

On March 10, 2004, iHoldings.com, Inc. d/b/a Dotregistrar.com confirmed by e-mail to the Forum that the domain name <fuckaol.net> is registered with iHoldings.com, Inc. d/b/a Dotregistrar.com and that Respondent is the current registrant of the name. iHoldings.com, Inc. d/b/a Dotregistrar.com has verified that Respondent is bound by the iHoldings.com, Inc. d/b/a Dotregistrar.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 March 11, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 31, 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@fuckaol.net 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 April 9, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Louis E. Condon 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 <fuckaol.net> domain name is confusingly similar to Complainant’s AOL mark.

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

3. Respondent registered and used the <fuckaol.net> domain name in bad faith.

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

FINDINGS

Complainant, America Online, Inc., began using the AOL mark in 1989 for its Internet-related services. Complainant is the owner of several trademark registrations on the Principal Register of the U.S. Patent and Trademark Office (“USPTO”) for the AOL mark, including Reg. Nos. 1,977,731 and 1,984,337, which it registered on June 4, 1996, and July 2, 1996, respectively. Complainant also operates a website at the <aol.com> domain name.

Respondent registered the <fuckaol.net> domain name on April 24, 2003.  Respondent uses the disputed domain name as a forum for discussion and to post pornographic content and links.

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 acquired rights to the AOL mark through registration with the USPTO and use in commerce.  See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that 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).

The domain name simply adds the word “fuck” to Complainant’s mark.  Generally, a domain name that consists of a mark and a generic word does not significantly distinguish itself from the mark.  However, “fuck” may be analogous to “sucks”: it may be a word that connotes greater distinction.  In fact, the only case to examine the word “fuck” and its bearing on similarity used an analogy to the word “sucks” for its analysis.  See Koninklijke Phillips Elecs. v. Snelling Domains Best, D2002-1041 (WIPO Dec. 16, 2002) (finding the <fuckphilips.com> domain name to be confusingly similar to Complainant’s PHILLIPS mark).

Courts and UDRP Panels have addressed the issue of appending the term "-sucks" to another’s trademark.  See Lucent Technologies, Inc. v. Lucentsucks.com, 95 F.Supp.2d 528 (E.D. Va. 2000) (<lucentsucks.com>); Bally Total Fitness v. Faber, 29 F.Supp.2d 1161 (C.D. Cal. 1998) (<ballysucks.com>); Wal-mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico, D2000-0477 (WIPO July 20, 2000) (<walmartsucks.com>) Cabela’s Inc. v. Cupcake Patrol, FA 95080 (Nat. Arb. Forum Aug. 29, 2000) (<cabelassucks.com>); Wal-Mart Stores, Inc. v. wallmartcanadasucks.com, D2000-1104 (WIPO Nov. 23, 2000) (<wallmartcanadasucks.com>); Lockheed Martin Corp. v. Parisi, D2000-1015 (WIPO Jan. 26, 2001) (<lockheedmartinsucks.com> and <lockheedsucks.com>).  In Lockheed, a majority of the Panel held:  “Both common sense and a reading of the plain language of the Policy support the view that a domain name combining a trademark with the word “sucks” or language clearly indicating that the domain name is not affiliated with the trademark owner cannot be considered confusingly similar to the trademark” Id; accord, Talk Radio Network v. Fotuard, FA 155181 (Nat. Arb. Forum June, 24 2003).

However, in Cabela’s, the Panel determined that "-sucks" domain names are not “immune from scrutiny as being confusingly similar to trademarks to which they are appended.”  Cabela’s Inc. v. Cupcake Patrol, FA 95080 (Nat. Arb. Forum Aug. 29, 2000) construed in Infospace, Inc. v. Sunwave Communications, FA 198015 (Nat. Arb. Forum Nov. 10, 2003).   “Each case must be considered in light of the facts presented.”  Cabela’s Inc. v. Cupcake Patrol, FA 95080 (Nat. Arb. Forum Aug. 29, 2000) (finding the disputed domain name <cabelassucks.com> confusingly similar to Complainant's mark, “Cabela’s”); see, e.g., Infospace, Inc. v. Sunwave Communications, FA 198015 (Nat. Arb. Forum Nov. 10, 2003); Wachovia Corp. v. Flanders,  D2003-0596 (WIPO Sept. 19, 2003); Savin Corp. v. savinsucks.com, FA 103982 (Nat. Arb. Forum Mar. 5, 2002).

In Claims where Respondent has not responded, Panels have accepted Complainants’ assertions of confusing similarity under the Policy.  See Quilogy, Inc. v. Ruddick, FA 134653 (Nat. Arb. Forum Jan. 9, 2003); see also Diners Club Int’l v. SPS, FA 149414 (Nat. Arb. Forum April 21, 2003). The test in Policy ¶ 4(a)(i) has a low threshold of proof.   See Desktop Media, Inc. v. Desktop Media, Inc., FA 96815 (Nat. Arb. Forum Apr. 12, 2001) (“[F]or the limited purposes of the domain name dispute resolution process[,] a low threshold of proof is all that is required to meet the first element ….”).  All that Complainant need demonstrate is that its mark is included in the domain name. See Nikon, Inc. and Nikon Corp. v. Technilab, Inc., D2000-1774 (WIPO Feb. 26, 2000) (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 Magnum Piering, Inc. v. Mudjackers & Wilson, 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).  Thus, since Respondent’s domain name wholly incorporates Complainant’s AOL mark and merely adds the word “fuck,” the Panel finds that the domain name is confusingly similar to Complainant’s mark for purposes of Policy 4(a)(i).

Therefore, the Panel finds for Complainant under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

When Complainant asserts a prima facie case against Respondent, the burden of proof shifts to Respondent to show that it has rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  Respondent has failed to submit a Response. Therefore, the Panel infers that Respondent lacks rights and legitimate interests in the disputed domain name.  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests in respect of the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also 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).

Furthermore, because Respondent has not submitted a Response, it is appropriate for the Panel to accept all reasonable allegations and inferences in the Complaint as true.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of the Complaint to be deemed true); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw adverse inferences from Respondent’s failure to reply to the Complaint).

Complainant alleges that Respondent is using the disputed domain name to promote pornography.  Using Complainant’s mark to promote pornography is neither a bona fide offering of goods or services, pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial of fair use of the domain name, pursuant to Policy ¶ 4(c)(iii).  See Isleworth Land Co. v. Lost In Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (finding that Respondent’s use of its domain name to link unsuspecting Internet traffic to an adult orientated website, containing pornography, did not constitute a connection with a bona fide offering of goods or services or a noncommercial or fair use); see also Microsoft Corp. v. Horner, D2002-0029 (WIPO Feb. 27, 2002) (holding that Respondent’s use of Complainant’s mark to “define the location of Respondent’s website on the Internet” and to host a pornographic website was not a legitimate noncommercial or fair use of the domain name).

The Record, including the WHOIS registration information, lacks any evidence which would indicate that Respondent is commonly known by the domain name.  The Panel infers that Respondent does not have legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii).  See Tercent Inc. v. 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).

Therefore, the Panel finds for Complainant under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent is using the disputed domain name to peddle pornography.  Appropriating someone else’s mark to promote pornography is bad faith registration and use pursuant to Policy ¶ 4(a)(iii).  See Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO Mar. 4, 2003) (stating that “whatever the motivation of Respondent, the diversion of the domain name to a pornographic site is itself certainly consistent with the finding that the Domain Name was registered and is being used in bad faith”); see also Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that absent contrary evidence, linking the domain names in question to graphic, adult-oriented websites is evidence of bad faith).

Therefore, the Panel finds for Complainant under Policy ¶ 4(a)(iii).

DECISION

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

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

                                    

                                  

Louis E. Condon, Panelist

Dated:  April 23, 2004

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