The Complainant is Oath Inc., United States of America (“United States”), internally represented.
The Respondent is Adit Gupta, India. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 30, 2020. On September 30, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 1, 2020, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”). In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 5, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 25, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 27, 2020. The Center appointed Steven A. Maier as the sole panelist in this matter on November 3, 2020. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background The Complainant is a corporation organized under the laws of Delaware, United States and headquartered in Virginia, United States. It is a provider of computer network, software, and related services. The Complainant is the proprietor of various trademark registrations for the mark AOL, including for example: - United States trademark number 1977731 for the standard character mark AOL, registered on June 4, 1996, in International Classes 35, 38, and 42; and The disputed domain name was created on June 16, 2019. The disputed domain name has resolved to a website at “www.aolhelp247.com”. The website makes prominent reference to AOL branded products and services and includes general information about the Complainant. It offers support for AOL services, including password changes and reminders, and provides a contact form. The website includes an item headed “Disclaimer” at the end of its home page, which states: “Our technical support company provides support for third party services and products. Support services are available on the manufacturer’s official website. If the product is within the warranty period, please visit the manufacturer’s website.” 5. Parties’ Contentions A. Complainant The Complainant states that it has offered a variety of computer and network services under the AOL mark since 1989 and was one of the key contributors to the rapid expansion of the Internet. It states that it remains a leading brand, with over 154 million unique monthly visitors to its mobile app in 2017, resulting in it being ranked seventh among multi-platform digital properties in the United States. The Complainant states that it has spent billions of dollars over the years in promoting its AOL mark, which has been recognized as a famous or well-known mark in numerous prior proceedings under the UDRP. The Complainant submits that, as a result of these matters, it has substantial unregistered rights in the name and mark AOL in addition to its registered trademark rights. The Complainant submits that the disputed domain name is confusingly similar to its AOL trademark. It contends that the disputed domain name incorporates that trademark in its entirety, together with the addition of two generic terms, “help” and “247” which do nothing to distinguish the disputed domain name from the trademark. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant states that it has never authorized the Respondent to use its AOL mark, that the Respondent has not commonly been known by that name, and that the Respondent is not making legitimate noncommercial or fair use of the disputed domain name. The Complainant denies that the Respondent’s use of the disputed domain name for the purpose of its website gives rise to rights or legitimate interests, because the disclaimer which it includes is neither sufficiently prominent nor clear. The Complainant submits that the disputed domain name was registered and is being used in bad faith. It states that the Respondent obviously had the Complainant’s trademark in mind at the time it registered the disputed domain name as its website refers extensively to the Complainant and its services. Concerning the Respondent’s use of the disputed domain name, the Complainant submits that the Respondent’s website disclaimer is ineffective as it appears at the very bottom of the home page, after extensive marketing and contact links, and is vague and imprecise in nature. The Complainant submits that the Respondent has in fact registered and used the disputed domain name to target its AOL mark and to take unfair advantage of its goodwill in that mark. Specifically, the Complainant submits that the Respondent has used the disputed domain name for commercial gain by attracting Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark (paragraph 4(b)(iv) of the Policy). B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are: (i) that the disputed domain name 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 disputed domain name; and, (iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant has established to the satisfaction of the Panel that it has longstanding registered trademark rights in the term AOL, and that the name and mark AOL is extensively recognized throughout the world as designating the Complainant and its services. The disputed domain name wholly incorporates the Complainant’s mark AOL together with the dictionary term “help” and the number “247”, which does not distinguish the disputed domain name from the Complainant’s trademark. The Panel therefore finds that that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests The Respondent has used the disputed domain name for the purpose of a website, which offers services expressly related to the Complainant’s own products and services. In certain circumstances, it may be permissible for a registrant to use a domain name which incorporates another party’s trademark for these purposes, e.g., of offering independent services in relation to goods or services sold under that mark. The criteria accepted by UDRP panels for such legitimate use are set out in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903, and are further discussed in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.8.1. These criteria include the requirement that the site must accurately and prominently disclose the registrant’s relationship with the trademark holder, with the object that visitors to the website are not misled into believing that the website is operated or authorized by the trademark owner. Having reviewed the placement and content of the Respondent’s website disclaimer in this case, the Panel accepts the Complainant’s contention that the disclaimer is not sufficient to displace the likelihood of confusion caused by the identity of the disputed domain name and the contents of the website. The Panel finds that much of the website content, including general background information about the Complainant, tends to imply an association with the Complainant and that the disclaimer is neither sufficiently prominent nor clearly worded to make clear that there is no connection between the parties. The disclaimer appears at the very end of the home page, after the Respondent’s promotional content and contact links, and does not expressly say that the Respondent is unconnected with the Complainant. In these circumstances, the Panel finds that the Respondent has failed to demonstrate any rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith The Panel repeats its findings in respect of rights and legitimate interests above. In the light of the identity of the disputed domain name, which wholly incorporates he Complainant’s trademark, the contents of the Respondent’s website as described above – that is, heavy use of the Complainant’s marks in the banner and throughout the page that seem geared to giving the false impression that the Respondent is authorized by or affiliated with the Complainant, and its failure to include a satisfactory disclaimer, the Panel concludes on balance that the Respondent both registered and has used the disputed domain name with the intention of taking unfair advantage of the Complainant’s goodwill in its AOL trademark. Specifically, the Panel finds that, by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or of services on that website (paragraph 4(b)(iv) of the Policy). The Panel therefore concludes that the disputed domain name has been registered and is being used in bad faith. 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name Steven A. Maier
- India trademark number 662853 for the mark AOL, registered with effect from April 19, 1995, in International Class 9.
Sole Panelist
Date: November 7, 2020
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