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Generic Top Level Domain Name (gTLD) Decisions |
America Online, Inc. v.
connectionworldwide inc a/k/a gary francis
Claim Number: FA0412000384811
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 connectionworldwide
inc a/k/a Gary Francis (“Respondent”), P.O. Box
3444, Road Town, Tortola, Virgin Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <youvegotg-mail.com>
(the “Domain Name”), registered with Register.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.
Michael
Albert as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on December
16, 2004; the National Arbitration
Forum received a hard copy of the Complaint
on December 20, 2004.
On
December 20, 2004, Register.com confirmed by e-mail to the National Arbitration
Forum that the domain name <youvegotg-mail.com>
is registered with Register.com and that the Respondent is the current
registrant of the name. Register.com has verified that Respondent
is bound by
the Register.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
December 20, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”),
setting a deadline
of January 10, 2005 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@youvegotg-mail.com by e-mail.
A
timely Response was received and determined to be complete on January 10, 2005.
On January 18, 2005, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed Michael Albert as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant
contends that it owns a family of YOU’VE GOT marks,
including YOU’VE GOT MAIL, YOU’VE GOT AOL and YOU’VE GOT PICTURES, and that it
uses these marks
in commerce in connection with, among other things, providing
online services and information.
Complainant has obtained United States trademark registrations for
these marks. It began using these marks
in commerce long before Respondent registered the Domain Name. Complainant has made extensive use of these
marks in commerce worldwide, which is known to its millions of subscribers, as
well as
to others, including viewers of a popular film which used the YOU’VE
GOT MAIL mark under license from Complainant.
Complainant avers that the
Domain Name is confusingly similar to its marks, in that it differs only by one
letter (“g”) and one typographical
character (a hyphen). It asserts that Respondent has no rights in,
and is not commonly known by, the Domain Name, and that Respondent registered
the Domain
Name in bad faith as evidenced by the registration long after
Complainant’s marks became famous, by its use of the Domain Name to
direct
Internet traffic to Respondent’s web site at <g-mailgreetingcards.com>, and that confusion of the
public “is particularly likely given that Respondent is providing online
services that are likely to be confused with those provided by AOL under its
various YOU’VE GOT marks.” Complainant
further asserts that bad faith is shown by Respondent’s use of the Domain Name
to direct users to its business which “sells
underwear and displays photographs
of naked women.”
B.
Respondent
Respondent denies the allegations of the
Complaint, and asserts that it operates a legitimate business, that because its
products
are so different from Complainant’s there is no likelihood of
confusion, that it registered the Domain Name solely “to prevent future
competitors utilising wording taken from our web-site,” and that the term
“youvegotg-mail” is a play on words derived from “common
and widely used
vernacular” and that it “relates specifically to our product concept.” It denies that there was any intent to
confuse, or likelihood of confusion, and that when contacted by Complainant, it
offered to
include a disclaimer on its website denying any association between
the two companies, as well as to discontinue the link between
the Domain Name
and the <g-mailgreetingcards.com> e-commerce website.
FINDINGS
The Panel finds that Complainant has met
its burden of proof to show that Respondent’s domain name is confusingly similar
to a trademark
owned by Complainant; that Respondent does not have legitimate
rights in the Domain Name; and that the Domain Name was registered
in bad
faith.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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.”
Paragraph
4(a) of the Policy requires that the Complainant must prove each of the
following three elements to obtain an order that
a domain name be cancelled or
transferred:
(1)
the domain
name registered by the Respondent is identical or confusingly similar to a
trademark or service mark in which the Complainant
has rights;
(2)
the
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.
Complainant has established rights in the YOU’VE GOT
MAIL mark through registration with the United States Patent and Trademark
Office
and through continuous use in commerce since 1992. 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).
Respondent
appears to contend that the mark is generic. A generic term cannot function as
a trademark, and therefore its purported
owner cannot prevent others from using
the term in commerce. This proceeding
is not designed to enable a full and final adjudication of the genericness question;
and in any event Respondent has
provided little or no evidence from which any
such finding can be made. While the
mark may be well-known (as both parties apparently agree), that does not make
it generic. Moreover, the evidence
before the Panel suggests that much of that fame may result from the use of the
mark in connection with a popular
film.
Because that usage was made under license from Complainant, the usage
does not undermine the mark’s ability to function as a trademark; rather, the licensed use operates to the
benefit of the licensor, whose ownership rights in the mark were recognized in
the license. Moreover, the USPTO’s
registration of the mark is prima facie evidence that it functions as a
trademark and is not generic.
Accordingly, this Panel will follow the above-noted presumption that the
mark is distinctive and validly owned by Complainant. Nothing herein is intended to preclude any court of law from
addressing this question on a more fully developed factual record.
The
next issue is whether the mark and the Domain Name are confusingly
similar. The Panel finds that the <youvegotg‑mail.com> domain name is confusingly
similar to Complainant’s YOU’VE GOT MAIL mark because the domain name fully
incorporates Complainant’s
mark, adding only the letter “g” and making a couple
of inconsequential typographical adjustments – adding a hyphen, removing an
apostrophe and spaces (which cannot be used in domain names), and adding the
“.com” generic top-level domain (gTLD). These minor
changes fail to distinguish
the Domain Name from the mark, leaving the two confusingly similar. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000)
(finding that the top-level of the domain name such as “.net” or “.com” does
not affect the domain
name for the purpose of determining whether it is
identical or confusingly similar); see also Hannover
Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001)
(finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are
impermissible
in domain names and a generic top-level domain such as ‘.com’ or
‘.net’ is required in domain names”); see also Chernow Communications, Inc. v. Kimball, D2000-0119 (WIPO May 18,
2000) (“the use or absence of punctuation marks, such as hyphens, does not
alter the fact that a name is
identical to a mark”); see also Chi-Chi’s, Inc. v. Rest. Commentary,
D2000-0321 (WIPO June 29, 2000) (finding the domain name <chichis.com> to
be identical to Complainant’s CHI-CHI’S mark, despite
the omission of the
apostrophe and hyphen from the mark); 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 rather one that is confusingly
similar to complainant’s marks); see also Am. Online, Inc. v. Tencent Communications Corp., FA 93668 (Nat.
Arb. Forum Mar. 21, 2000) (finding that <oicq.net> and <oicq.com>
are confusingly similar to Complainant’s
ICQ mark).
The question is a close one, because “[i]n the Internet context, consumers are
aware that domain names for different Web sites are quite often similar,
because of the
need for language economy, and that very small differences
matter.” Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135,
1147 (9th
Cir. 2002). Similarity and likelihood
of confusion are highly context-specific, and in some contexts, the addition of
the single letter “g” might
well distinguish the marks. See Knight-Ridder, Inc. v. Cupcake Patrol, FA 96551 (Nat. Arb. Forum
Mar. 6, 2001) (finding that the domain name <hearld.com> is not identical
or confusingly similar
to Complainant’s typographically similar
trademark). Here, however, the Panel
finds that the extra “g” – which, notably, is the same letter as in the word
“got” and thus which may appear
to be a typographical error resulting from
re-typing a letter –does not do enough to distinguish the Domain Name from the
mark. This conclusion is reinforced by
the apparent absence of any significance to the use of the phrase YOU’VE GOT
MAIL that would explain
or justify Respondent’s adoption of a variant of that
mark for what seems to be an unrelated business. Rather than suggesting any legitimate play on words, this usage
seems to be little more than an adoption and slight modification of
Complainant’s mark, leaving the two confusingly similar.
Respondent is
not known by the <youvegotg‑mail.com> domain
name.
Indeed, that is not even the primary domain name of its e-commerce
business, but rather merely redirects traffic to another site.
Accordingly, there is little basis for the
Panel to find that Respondent has any rights or legitimate interests in the
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").
Complainant contends that Respondent has
used the disputed domain name to divert Internet users searching under
Complainant’s mark
to Respondent’s website, which sells underwear and displays
photographs of naked women. Respondent
points out that the women in question are not entirely naked, but rather are
clad in Respondent’s product (a g-string).
Even so, the Panel concludes that Respondent’s website bears little or
no relationship to the famous mark that Respondent has chosen
to incorporate
into the Domain Name, and accordingly that – whatever the bona fide use may be
of the underlying business Respondent
is operating – this is not a bona fide
use of that mark in connection with Respondent’s business. See 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); see also MSNBC Cable, LLC v. Tysys.com,
D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in
the famous MSNBC mark where Respondent attempted to
profit using Complainant’s
mark by redirecting Internet traffic to its own website); 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”); see
also 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-oriented website, containing images of scantily clad women
in provocative
poses, did not constitute a connection with a bona fide offering
of goods or services or a noncommercial or fair use); see also Paws, Inc. v.
Zuccarini, FA 125368 (Nat. Arb. Forum Nov. 15, 2002) (holding that the use
of a domain name that is confusingly similar to an established mark
to divert
Internet users to an adult-oriented website “tarnishes Complainant’s mark and
does not evidence noncommercial or fair use
of the domain name by a
respondent”).
Once Complainant makes a prima facie case regarding
Policy ¶ 4(a)(ii), the burden shifts to Respondent to establish rights or
legitimate interests in the domain name.
See G.D. Searle v. Martin
Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where
Complainant has asserted that Respondent has no rights or legitimate
interests
with respect to the domain name it is incumbent on Respondent to come forward
with concrete evidence rebutting this assertion
because this information is
“uniquely within the knowledge and control of the respondent”); see also
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 with
respect to the domain, the burden shifts to Respondent
to provide credible evidence that substantiates its claim of rights and
legitimate
interests in the domain name).
Respondent’s argument and evidence on this point are inadequate. It asserts first that the registration “was
only done to prevent future competitors utilising wording taken from our
web-site.” The significance of this
point is not readily apparent to the Panel, and does not clearly explain why
Respondent has any legitimate
rights or interests in the Domain Name. Respondent later asserts that “our website
is www.g-mailgreetingcards.com and the [Domain Name] in question was merely
registered
to protect the content of our site and business idea. We have linked
other domains registered by us to protect our site content and
business idea
including the domain name in question but also www.gmailcards.com ,
www.gmailgreetingcards.com, etc. We provided links
from all the domains we have
registered to our site.” This assertion
shows only that the <g-mailgreetingcards.com> domain name may
legitimately belong to Respondent; but fails to
explain why Respondent should
be permitted to trade on the goodwill of a different and unrelated trademark in
order to direct traffic
to its website.
The Domain Name is confusingly similar to
a famous mark, resolves to a commercial website that contains photographs of
scantily clad
women, and Respondent has no particular justification for the
choice of a domain name so similar to Complainant’s mark. Moreover, Respondent commercially benefits
when Internet users visit its website.
The Panel infers that Respondent registered and used the Domain Name in
bad faith under 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 Drs. Foster
& Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000)
(finding bad faith where Respondent directed Internet users seeking
Complainant’s site
to its own website for commercial gain).
While Respondent may be right that its
e-commerce business is legitimate and that it is totally unrelated to the uses
to which Complainant’s
marks are put, the Panel must nonetheless consider the
“totality of the circumstances” in determining whether bad faith has been
shown. See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb.
Forum May 18, 2000) (finding that in determining if a domain name has been
registered in bad faith, the Panel
must look at the “totality of
circumstances”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624
(WIPO Aug. 21, 2000) (“the examples [of bad faith] in Paragraph 4(b) are
intended to be illustrative, rather than exclusive”).
Panels have commonly found that using a
famous mark to redirect Internet users to a website that contains
“adult-oriented content”
is bad faith under Policy ¶ 4(a)(iii). See Six
Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO Mar. 4, 2003) (“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 Wells
Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum Mar. 18,
2003) (finding that Respondent’s tarnishing use of the disputed domain names to redirect Internet users to
adult-oriented websites was evidence that the domain names were being used in
bad faith). Even assuming that the
content of Respondent’s e-commerce site is distinguishable from those other
cases, the lack of any commercial
or linguistic relationship between the Domain
Name and the business nonetheless suggests that the choice of Domain Name was
made
primarily due to the fame of the mark that it adapted, rather than as a
result of any legitimate need to choose this particular Domain
Name
independently of the goodwill associated with Complainant’s mark.
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 <youvegotg-mail.com>
domain name be TRANSFERRED from Respondent to Complainant.
Michael Albert, Panelist
Dated: February 1, 2005
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