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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
America Online, Inc. v. Viper
Case No. D2000-1198
1. The Parties
The Complainant is America Online, Inc., a corporation organized under the laws of the State of Delaware, United States of America, having its principal place of business at Dulles, Virginia, United States of America. The Respondent is Viper, an entity of form unknown, with an address in San Francisco, California, United States of America.
2. The Domain Name and Registrar
The domain name at issue is "aolgirls.com", which domain name is registered with Register.com ("Register"), a registrar based in the State of New York, the United States of America.
3. Procedural History
A Complaint was submitted electronically to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on September 11, 2000, and the signed original together with four copies forwarded by express courier under cover of a letter of September 13, 2000. An Acknowledgment of Receipt was sent by the WIPO Center to the Complainant, dated September 14, 2000.
On September 14, 2000, a Request for Registrar Verification was transmitted to Register requesting it to: (1) confirm that a copy of the Complaint was sent to Register by the Complainant; (2) confirm that the domain name at in issue is registered with Register; (3) confirm that the person identified as the Respondent is the current registrant of the domain name; (4) provide the full contact details (i.e., postal address(es), telephone number(s), facsimile number(s), e-mail address(es)) available in the registrar’s Whois database for the registrant of the disputed domain name, the technical contact, the administrative contact and the billing contact; (5) confirm that the Uniform Domain Name Dispute Resolution Policy ("Policy") applies to the domain name at issue; and (6) indicate the current status of the domain name at issue.
Under cover of a letter dated September 14, 2000, transmitted to WIPO on September 28, 2000, by facsimile, Register confirmed that the domain name "aolgirls.com" is registered with Register and that the Respondent, Viper, was the current registrant of the name. Register also forwarded the requested Whois details, as well confirming that: (1) Register received a copy of the Complaint from the Complainant; (2) that the Policy was applicable to the domain name.
A Formal Requirements Compliance Checklist was initiated by the assigned WIPO Center Case Administrator on September 11, 2000, and completed on September 29, 2000. The Panelist has independently reviewed the Requirements and agrees with the assessment of the WIPO Center Case Administrator that the Complaint is in formal compliance with the requirements of the Rules for Uniform Domain Name Dispute Resolution Policy ("Rules") and the WIPO Supplemental Rules for Uniform Domain Dispute Resolution Policy, in effect as of December 1, 1999, (the "WIPO Supplemental Rules"). The required fees for a single-member Panel were paid on time and in the required amount by the Complainant.
No formal deficiencies having been recorded, on September 29, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent (with copies to the Complainant, Register and ICANN), setting a deadline of October 18, 2000, by which the Respondent could file a Response to the Complaint. The Commencement Notification was transmitted to the Respondent by e-mail to the e-mail addresses indicated in the Complaint and specified in Register’s Whois confirmation, and by post/courier to the indicated postal address. Having reviewed the communications records in the case file, the Panelist finds that the WIPO Center has discharged its responsibility under Paragraph 2(a), Rules, "to employ reasonably available means calculated to achieve actual notice to Respondent."
On October 21, 2000, having received no Response from the designated Respondent, the WIPO Center transmitted to the parties a Notification of Respondent Default using the same contact details and methods as were used for the Commencement Notification.
On November 9, 2000, the WIPO Center invited Richard Allan Horning to serve as the Sole Panelist in Case No. D2000-1198, and transmitted to him a Statement of Acceptance and Request for Declaration of Impartiality and Independence. Richard Allan Horning’s Statement of Acceptance and Declaration of Impartiality and Independence was received on November 13, 2000. On November 15, 2000, the WIPO Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Richard Allan Horning was formally appointed as the Sole Panelist. The Projected Decision Date was November 29, 2000.
The Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Policy, Rules and WIPO Supplemental Rules.
The Panelist shall issue his Decision based on the Complaint, the Policy, the Rules, the WIPO Supplemental Rules, and without the benefit of any Response from Respondent.
4. Factual Background
Complainant is authorized to use and has used AOL and "aol.com" trade and service marks in connection with, inter alia, electronic storage and retrieval of data and documents, telecommunications services, and computer services, all devoted to the support of its portal Web site, computer online services and other Internet-related services. Complaint, Paragraph 2, 3. The Complainant has provided evidence of the registration of the following marks, which it has adopted and used in this regard:
Goods & Services:
Classes 35, 38 and 42, for inter alia electronic storage and retrieval of data and documents, telecommunications services, and computer services
October 2, 1989
Goods & Services:
Class 9, for inter alia computer operating programs and computer operating systems
October 0, 1989
Goods & Services:
Class 38, for inter alia telecommunications services
October 19, 1992
Goods & Services:
Class 42, for inter alia computer services
October 19, 1992
Complaint, Annexes B, C.
The Complainant has expended substantial sums in developing and marketing its services and mark, and, as Complainant alleges, "AOL operates the most widely-used interactive online service in the world". Complaint, Paragraph 4, 5.
The Respondent registered the domain name "aolgirls.com" on May 21, 2000, many years after the registration of the marks by Complainant and many years after Complainant commenced the operation of its services. Compare Complaint, Annex B and C with Annex A.
5. Parties’ Contentions
Complainant contends that Respondent has registered a domain name which is nearly identical to and confusingly similar to the service marks and trademarks registered and used by Complainant, that Respondent has no rights or legitimate interests in respect to the domain name at issue, and that Respondent has registered and is using the domain name at issue in bad faith.
Respondent has not contested the allegations of the Complaint.entered
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panelist as to the principles the Panelist is to use in determining the dispute: "A Panel shall 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." Since both the Complainant and Respondent are domiciled in the United States, and since United States’ courts have experience with similar disputes, to the extent that it would assist the Panelist in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panelist shall look to rules and principles of law set out in decisions of the courts of the United States.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
1) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,
2) that the Respondent has no legitimate interests in respect of the domain name; and,
3) that the domain name has been registered and used in bad faith.
The domain name "aolgirls.com" is identical or confusingly similar to trademarks or service marks in which the Complainant has rights. Nokia Corporation v. Nokiagirls.com a.k.a IBCC, WIPO Case No. D2000-0102.
The Respondent failed to present any evidence that would tend to establish that Respondent has legitimate interests in respect of the domain names.
The question thus arises whether the domain name at issue has been registered and is being used in bad faith. Paragraph 4.b of the Policy sets forth "in particular but without limitation" circumstances which "shall be evidence of registration and use of a domain name in bad faith." Those circumstances are:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
There being no allegations of conduct falling within Paragraphs 4.b (i)-(iii) of the Policy, the question presented is whether Complainant has met its burden in proving that Respondent intentionally attempted to attract for commercial gain Internet users to Respondent's site by creating a likelihood of confusion with Complainant's mark. Policy, Paragraph, 4.(b)(iv).
There is no question that Respondent endeavored to derive commercial gain from those who arrive at "aolgirls.com", as the site offers subscription services to various pornographic materials as well as links to other sites which may or may not result in the sharing of revenue.
An Internet user entering "aolgirls.com" is more likely than not expecting to arrive at a web site hosted by Complainant. Complainant’s Web site "aol.com" is well known, and widely advertised, and it is well past the day when Internet users would not make the assumption that use of AOL as part of a domain name links that site in the mind of the user to Complainant. Complainant's marks were registered as early as 1989, 11 years before Respondent registered the domain names at issue. Complaint, Annexes A, B and C. Respondent is thus on constructive if not actual notice of Claimant’s rights in the registered marks. These facts suggest that the domain name at issue was selected with an intent to attract users to Respondent’s site by creating a likelihood of confusion.
Respondent has established a web site at "aolgirls.com" to offer pornographic materials. Complaint, Annex D. The fact that the site operated by Respondent is pornographic in nature has been found in prior decisions to be evidence of bad faith. See, e.g., CCA Industries, Inc. v. Bobby R. Dailey, WIPO Case No. D2000-0148, § 3; see also Nokia Corporation v. Nokiagirls.com a.k.a IBCC, WIPO Case No. D2000-0102.
The use of AOL as part of a domain name offering pornographic products and services certainly "tarnishes" Complainant’s existing marks, which is also evidence of bad faith. Lucent Technologies, Inc. v. Johnson, 2000 U.S. Dist. LEXIS 16002; 56 U.S.P.Q.2D (BNA) 1637 (C.D.Cal. 2000)); Mattel, Inc. v. Internet Dimensions, Inc., 2000 U.S. Dist. LEXIS 9747, 2000 WL 973745, *5 (S.D.N.Y. July 13, 2000); Hasbro Inc. v. Internet Entertainment Group, Ltd., 1996, U.S. Dist. LEXIS 11626, 40 U.S.P.Q.2D (BNA) 1479, 1480 (W.D. Wash. 1996); Travel Services, Inc. v. Tour COOP of Puerto Rico, NAF Case No. 0001000092524.
The fact that Complainant notified Respondent on September 7, 2000, that Respondent's registrations were confusingly similar to Complainant's marks (Complaint, Annex E), that Respondent failed to respond to the referenced notice and cease and desist demand, and that the Respondent failed to respond to this Complaint, also suggests that Respondent was aware that it has no rights or legitimate interests in the domain name at issue, and that the domain name has been registered and is being used in bad faith. Uniform Rules, Rule 14(b). See, Mondich and American Wine Biscuits, Inc. v. Brown, d/b/a Big Daddy's Antiques, WIPO Case No. D00-0004, § 6, at 4; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, § 7.12 at 10-11; Alcoholics Anonymous World Services, Inc. v Raymond, WIPO Case No. D2000-0007
For all of the foregoing reasons, the Panelist decides that the domain name registered by Respondent is identical or confusingly similar to the trademarks and service marks in which the Complainant has rights, that Respondent has no rights or legitimate interests in respect of the domain name, and that the Respondent's domain name has been registered and is being used in bad faith.
Accordingly, pursuant to Paragraph 4.i of the Policy, the Panelist requires that the registration of the domain name "aolgirls.com" be transferred to the Complainant.
Richard Allan Horning
Dated: November 28, 2000