WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
America Online, Inc. v. East Coast Exotics
Case No. D2001-0661
1. The Parties
The Complainant is America Online, Inc., 22000 AOL Way, Dulles, Virginia 20166 USA.
The Respondent is East Coast Exotics, 1162 St. Georges Ave., Avenel, New Jersey 07001 USA.
2. The Domain Name and Registrar
The domain name at issue is (the Domain Name). The registrar with which the Domain Name is registered is Tucows, Inc. (the Registrar or Tucows), located in Toronto, Ontario, Canada.
The Registrar provided the following contact details for the Respondent: East Coast Exotics, 1162 St. Georges Ave., PMB 251, Avenel, New Jersey 07001 USA.
Administrative, Technical and Billing Contact is Scott Murphy, 1162 St. Georges Ave., PMB 251, Avenel, New Jersey 07001 USA.
3. Procedural History
The WIPO Arbitration and Mediation Center (the Center) received the Complaint by e-mail on May 16, 2001, and in hardcopy on May 21, 2001. On May 18, 2001, the Center sent the Complainant an Acknowledgment of Receipt of Complaint.
On May 22, 2001, the Center sent to the Registrar a Request for Registrar Verification. On May 22, 2001, the Registrar transmitted to the Center, via e-mail, its response confirming that the Domain Name is registered with Tucows and that the Respondent is the current registrant of the Domain Name.
The Center completed a Formalities Compliance Review on May 23, 2001, and verified that the Complaint satisfied the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the Policy), the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the WIPO Supplemental Rules). Complainant made the required payment to the Center. Upon independent review, the Administrative Panel also finds that the Complaint satisfies the formal requirements of the Policy, the Rules, and the Supplemental Rules.
On May 23, 2001, the Center transmitted to the parties, with copies to the Registrar and ICANN, a Notification of Complaint and Commencement of Administrative Proceeding, setting a deadline of June 11, 2001 by which the Respondent could file a Response to the Complaint. This Notification was sent to the Respondent. The Commencement Notification stated that the Center verified that the Complaint satisfies the formal requirements of the Policy, Rules and Supplemental Rules.
On June 12, 2001, having received no response from Respondent, the Center transmitted to the parties a Notification of Respondent Default. No response or other document has been received by the Center from Respondent since the Notification of Default.
The Administrative Panel finds that Respondent received notice of the Complaint and failed to submit a response as required by Paragraph 5 of the Rules. Accordingly, Respondent is in default and pursuant to Paragraph 14(a) of the Rules, the Administrative Panel shall proceed to a decision based on the allegations in the Complaint, the Rules and the Supplemental Rules, and shall draw such inferences as it considers appropriate.
In view of the Complainant's designation of a single member Administrative Panel, the Center invited Carol Anne Been to serve as the Panelist. On June 20, 2001, Ms. Been submitted a Statement of Acceptance and Declaration of Impartiality and Independence. On June 22, 2001, the Center transmitted to the parties via e-mail a Notification of Appointment of Administrative Panel and Projected Decision Date. The Panel finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and the WIPO Supplemental Rules.
4. Factual Background
The facts as presented in the Complaint are as follows. Complainant America Online Inc. (Complainant) is a Delaware corporation with its principal place of business in Virginia. Complainant is engaged in the business of computer online services and other Internet-related services. Complainant owns several federal registrations for the mark AOL for computer services, including registrations for the mark AOL.COM which Complainant uses as a domain name for its web site. Complainant has used the AOL mark since at least as early as 1989, and the AOL.COM mark since at least as early as 1992, in connection with these services. Complainant has over 28 million subscribers to its interactive online service. Complainant has spent substantial sums of money in advertising and promoting its marks and services, and its sales have reached many billions of dollars.
On April 19, 1999, Respondent registered the Domain Name with the Registrar. The domain name is used for a web site that displays pornographic materials.
5. Parties� Contentions
A. Complainant
Complainant contends that its substantial advertising expenditures and sales have caused the distinctive AOL and AOL.COM marks to become well-known and famous. Complainant alleges that the domain name is nearly identical and confusingly similar to Complainant�s AOL and AOL.COM marks. Complainant further contends that Respondent uses the capital letters AOL, followed by the lower case letters for the generic word "women", to emphasize Complainant�s trademark in Respondent�s web site.
Complainant contends that Respondent registered and uses the Domain Name with a bad faith intent to capitalize on the famous AOL and AOL.COM marks. Complainant alleges that Respondent has no rights or legitimate interest in the Domain Name; that Respondent adopted the Domain Name long after Complainant�s marks had become famous; and that Respondent�s bad faith is shown by its use of the Domain Name for a commercial pornographic web site. Complainant also notes that Respondent failed to answer Complainant�s AOL�s letter requesting that Respondent cease use of the Domain Name, but after receiving the letter exhibited further bad faith by making changes to the web site by adding a reference to "Amateurs On Line" and a disclaimer stating "Aolwomen is in no way associated with AOL (America on Line). Just wanted to point that out�we don�t have JACK to do with AOL."
B. Respondent
Respondent has not filed a response and thus has not contested the allegations of the Complaint.
6. Discussion and Findings
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) 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;
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
A. Similarity of the Domain Name to Complainant�s Trademarks
The domain name incorporates Complainant�s AOL mark and uses it together with the generic term "women." The inclusion of a generic term does not defeat the similarity created by use of Complainant�s mark. See, e.g., Nokia Corp. v. N aka IBCC, Case No. D2000-0102 (WIPO April 18, 2000) (appending the generic term "girls" to the NOKIA trademark was a "rather neutral addition" that would not distinguish the domain name from the trademark). See also Axel Springer Verlag AG v. Fritsche, Case No. D2000-1335 (WIPO January 8, 2001); AT&T Corp. v. WorldclassM, Case No. D2000-0553 (WIPO July 28, 2000). Such has also been the holding of certain cases specifically addressing Complainant�s marks. See, e.g., America Online, Inc v. Miao-qua Wang, Case No. D2001-0115 (WIPO March 4, 2001) (""); American Online Inc. v. Mullen, Case No. D2000-1605 (WIPO January 25, 2001) (""); America Online, Inc. v. Viper, Case No. D2000-1198 (WIPO November 28, 2000) (""). See also America Online, Inc. v. Albanese, Case No. D2000-1604 (WIPO January 25, 2001) ("" confusingly similar, but respondent had legitimate interest).
Thus, the Administrative Panel holds that the Domain Name is confusingly similar to Complainant�s AOL and AOL.COM marks.
B. No Legitimate Interests.
There is no evidence in the record of any legitimate interests of Respondent in the AOL mark or the phrase AOLWOMEN included in the Domain Name. Respondent is not a licensee or other authorized user of complainant�s mark. The inclusion of the generic term "women" in the Domain Name does not create a legitimate interest, nor does Respondent�s later alteration of the site to state "Amateurs Online" or to add a disclaimer of any relationship with Complainant.
Because Respondent had the opportunity to respond to the Complaint and declined to do so, the Administrative Panel may conclude from Respondent�s failure to respond and provide contrary evidence that no evidence of legitimate interests exists. See Mondich v. Brown, WIPO Case No. D2000-0004 (February 16, 2000) ("It is a general principle of United States law that the failure of a party to submit evidence on facts in its control may permit the court to draw an adverse inference regarding those facts."). Thus, the Administrative Panel holds that Respondent has no rights or legitimate interests in respect of the Domain Name.
C. Registration and Use in Bad Faith
Registration of a domain name incorporating another�s mark and use of that domain name for a pornographic website has been widely held to be registration and use in bad faith. Several decisions under the Policy have held that use of another�s mark in a domain name for a pornographic website reflects bad faith. See, e.g., Arizona Board of Regents for and on behalf of Arizona State University v. Value Holdings, Inc., Case No. D2001-0445 (WIPO May 31, 2001); Nokia Corp. v. N aka IBCC, Case No. D2000-0102 (WIPO April 18, 2000); National Football League Properties Inc. v. One Sex Entertainment Co., Case No. D2000-0118 (WIPO April 17, 2000).
Respondent appears to be using Complainant�s mark in the Domain Name "to attract, for commercial gain, Internet users to [Respondent�s] website � by creating a likelihood of confusion with [Complainant�s] mark." Policy, paragraph 4(b)(iv). Thus, the Administrative Panel holds that Respondent has registered and is using the Domain Name in bad faith.
The Panel is aware that since the Complaint was filed, the web site found at the Domain Name has been changed again, this time to post an announcement that "aolwomen is no longer in existence," and indicating that memberships have been moved to another site. A link to that site, which contains pornographic material, is provided on the site. The announcement also includes comments about Complainant. This change in content of the site does not diminish the fact that the Domain Name was registered and is being used in bad faith. See Coral Trademarks, Ltd. v. Eastern Net, Inc., Case No. D2000-1295 (WIPO December 26, 2000) ("[t]he posting of pornographic contents on a web site under a domain name that corresponds to a third party's mark is a bad faith use of the domain name. This Panel�s finding remains even when the content of the web site was changed for convenience after Respondent received notice of the Complaint").
7. Decision
Accordingly, pursuant to Paragraph 4(i) of the Policy and Paragraph 15 of the Rules, the Administrative Panel requires that the Domain Name registered by Respondent East Coast Exotics be transferred to Complainant, America Online, Inc.
Carol Anne Been
Sole Panelist
Dated: July 10, 2001
Full & Egal Universal Law Academy