DECISION

America Online, Inc. v. Grandtotal Finances8Ltd.

Claim Number:  FA0404000250749

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 Grandtotal Finances8Ltd. (“Respondent”), 34-20 Calle 34, Panama, PA 5.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <xxxaol.com>, registered with Iholdings.com, Inc. d/b/a Dotregistrar.com.

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.

James A.Crary as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on April 2, 2004; the Forum received a hard copy of the Complaint on April 5, 2004.

On April 2, 2004, Iholdings.com, Inc. d/b/a Dotregistrar.com confirmed by e-mail to the Forum that the domain name <xxxaol.com> 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 April 8, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 28, 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@xxxaol.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 May 13, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James A Crary 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 <xxxaol.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 <xxxaol.com> domain name.

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

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

FINDINGS

Complainant is one of the foremost providers of e-mail services and general interest information on the Internet.

Complainant owns numerous trademark and service mark registrations worldwide for the AOL mark, including U.S. trademark registration Nos. 1,977,731 (issued June 4, 1996) and 1,984,337 (issued July 2, 1996).  The AOL mark has been used since 1989 in connection with a variety of computer services, computer operating programs and systems, computer networks, computerized research and reference materials in the fields of business and finance, computer consultation services, among a variety of other goods and services.

Complainant also owns U.S. service mark and trademark registration numbers 2,325,291 (issued Mar. 7, 2000) and 2,325,292 (issued Mar. 7, 2000) for the AOL.COM mark.  The AOL.COM mark has been used since 1992 in connection with telecommunications services, electronic mail services, facsimile transmission, and a variety of computer services.

Respondent registered the disputed domain name <xxxaol.com> on June 14, 1998.  Respondent is using the domain name to redirect Internet users to a website located at <digimoney.com>, which sells services that facilitate Internet-based electronic money transfers.

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 as a result of its numerous registrations of the marks with the U.S. trademark authority.  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 J. C. Hall Co. v. Hallmark Cards, Inc., 340 F.2d 960, 144 U.S.P.Q. 435 (C.C.P.A. 1965) (registration on the Principal Register is prima facie proof of continual use of the mark, dating back to the filing date of the application for registration).

Previous decisions under the Policy have found domain names that contain third-party marks along with the letters “xxx” are confusingly similar to the marks.  In this case, Respondent has registered the <xxxaol.com> domain name, which contains Complainant’s famous AOL and AOL.COM marks in their entirety, and has appended the prefix “xxx.”  Consistent with prior decisions, the Panel finds the domain name <xxxaol.com> confusingly similar to the AOL and AOL.COM marks.  See L.F.P., Inc. v. Yarbrough, FA 114420 (Nat. Arb. Forum July 9, 2002) (“The subject domain name differs from the Complainant’s mark only by the addition of “xxx”.  This is not a distinguishing addition.”); see also Mattel, Inc. v. Phayze, Inc., FA 147303 (Nat. Arb. Forum Apr. 15, 2003) (finding the domain name <barbiexxx.com> confusingly similar to Complainant’s BARBIE mark pursuant to Policy ¶ 4(a)(i)); see also Victoria’s Secret et. al. v. Tri X Group, Ltd., FA 96540 (Nat. Arb. Forum Mar. 9, 2001) (“The domain name <victoriasxxxsecrets.com>, is confusingly similar to Complainants’ mark because the only difference is the insertion of the letters "xxx" within Complainants’ mark.). 

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

Rights or Legitimate Interests

Respondent has not responded to the Complaint.  The Panel presumes, therefore, that Respondent lacks rights to and legitimate interests in the disputed domain name.  See 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. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where Respondent fails to respond).

Nothing in the record indicates that Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See 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").

Furthermore, Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) because Respondent is piggy backing on the fame of Complainant’s AOL marks to attract Internet users to a website completely unrelated to the AOL mark.  See Ziegenfelder Co. v. VMH Enter., Inc. D2000-0039 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests based on the fact that the domain names bear no relationship to the business of Respondent and that Respondent would only legitimately choose to use Complainant’s mark in a domain name if Respondent was seeking to create an impression that the two businesses were affiliated); see also Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because Respondent's sole purpose in selecting the domain names was to cause confusion with Complainant's website and marks, its use of the names was not in connection with the offering of goods or services or any other fair use); see also Am. Online, Inc. v. Tencent Communications Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that use of Complainant’s mark “as a portal to suck surfers into a site sponsored by Respondent hardly seems legitimate”).

Moreover, Respondent is not licensed or otherwise authorized to use Complainant’s AOL or AOL.COM marks.  See State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000) (“[U]nauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services.”); see also Telstra Corp. v. Nuclear Marshmallow, D2000-0003 (WIPO Feb.18, 2000) (finding that Respondent lacked rights and legitimate interests in the domain name because Respondent was not authorized by Complainant to use its trademarks and the mark was distinct in its nature, such that one would not legitimately choose it unless seeking to create an impression of an association with Complainant).

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

Registration and Use in Bad Faith

Respondent is using the fame associated with Complainant’s mark to divert Internet users to sell services that facilitate Internet-based electronic money transfers.  Such use is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent intentionally attempted to attract Internet users for commercial gain, by creating a likelihood of confusion with Complainant’s AOL and AOL.COM marks.  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 used the confusingly similar domain name to attract Internet users to its commercial website); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent registered and used an infringing domain name to attract users to a website sponsored by Respondent); see also Kmart v. Khan, 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)).

Moreover, the AOL and AOL.COM marks are among the most well-known marks throughout the world.  Therefore, it is more probable than not that Respondent had knowledge of Complainant’s rights in the AOL marks at the time Respondent registered the disputed domain name, which occurred nine years after Complainant first used its AOL mark.  Knowingly registering a domain name confusingly similar to a third-party mark is evidence of bad faith pursuant to Policy ¶ 4(a)(iii).  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) (“there 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 <xxxaol.com> domain name be TRANSFERRED from Respondent to Complainant.

James A. Crary, Panelist

Dated:  May 25, 2004

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