Aolnasties.com

The timeline behind aolnasties.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

DECISION America Online, Inc. v. Phat Nasty Productions Claim Number: FA0302000146940 PARTIES Complainant is America Online, Inc., Dulles, VA (“Complainant”) represented by James R. Davis, of Arent Fox Kintner Plotkin & Kahn. Respondent is Phat Nasty Productions, Orlando, FL (“Respondent”). REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <aolnasties.com>, registered with Dotster. 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. Judge Harold Kalina (Ret.) as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on February 27, 2003; the Forum received a hard copy of the Complaint on March 3, 2003. On March 3, 2003, Dotster confirmed by e-mail to the Forum that the domain name <aolnasties.com> is registered with Dotster and that Respondent is the current registrant of the name. Dotster has verified that Respondent is bound by the Dotster 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 March 3, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 24, 2003 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@aolnasties.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 March 27, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Judge Harold Kalina (Ret.) 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 <aolnasties.com> domain name is confusingly similar to Complainant’s AOL mark. 2. Respondent does not have any rights or legitimate interests in the <aolnasties.com> domain name. 3. Respondent registered and used the <aolnasties.com> domain name in bad faith. B. Respondent failed to submit a Response in this proceeding. FINDINGS Complainant, American Online, Inc., owns numerous trademark registrations worldwide for the AOL mark, including trademarks registered with the United States Patent and Trademark Office (Reg. No. 1,977,731, registered on June 4, 1996 and Reg. No. 1,984,337, registered on July 2, 1996). Complainant uses the AOL mark in the online industry, providing services such as access time to computer databases, computerized research and reference materials, and computer bulletin boards. Complainant also offers online shopping services under the AOL mark in fields of computer goods and services and general consumer goods (e.g., movies). Complainant holds a trademark registration for the AOL.COM mark (Reg. No. 2,325,291, registered on March 7, 2000). This mark represents Complainant’s primary website where the AOL mark is used extensively and Complainant’s wide array of services may be accessed. Complainant has over thirty-five million subscribers, making its AOL online services the most widely used in the world. In addition, each year millions of non-subscribers access Complainant’s AOL services on the Internet. Since initiating its online business, Complainant has actively invested substantial sums of money to develop and market its AOL services. In an effort to strengthen AOL services Complainant widely publicizes through a worldwide advertising campaign, investing millions of dollars in advertising through many media outlets. Because of Complainant’s continuous promotional efforts and resultant business success in connection with its AOL online services, the AOL mark has become very well-known and famous among members of the purchasing public. Respondent registered the <aolnasties.com> domain name on October 30, 2002. Respondent uses the domain name for a website that solicits sales of pornographic videos. 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 demonstrated rights in the AOL mark through proof of trademark registration with the U. S. Patent and Trademark Office. Respondent’s <aolnasties.com> domain name incorporates Complainant’s entire AOL mark. Complainant’s AOL mark is distinctive and carries a significant amount of goodwill stemming from Complainant’s highly successful online services. The AOL mark is predominantly displayed in the <aolnasties.com> domain name. The second level domain name is comprised of two parts: the first is the AOL mark; and the second is the slang word “nasties.” Taken together “aolnasties” has no source identifying significance and neither does the slang word “nasties.” However, the distinctiveness of the AOL mark signifies Complainant’s online services and as a consequence the AOL mark is the focal point of the <aolnasties.com> domain name. Therefore, the Panel finds that Respondent’s <aolnasties.com> domain name is confusingly similar to Complainant’s famous AOL mark. See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied); see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the Complainant combined with a generic word or term). The Panel finds that Policy ¶ 4(a)(i) has been satisfied. Rights or Legitimate Interests Respondent has not come forward to challenge the Complainant, which establishes a case against Respondent’s rights or legitimate interests in the <aolnasties.com> domain name. In the absence of a Response contesting Complainant’s allegations, those allegations will be accepted as true. Moreover, the Panel will draw all reasonable inferences in Complainant’s favor. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw adverse inferences from Respondent’s failure to reply to the Complaint). Respondent uses the <aolnasties.com> domain name in association with a website that sells pornographic videos. Since the <aolnasties.com> domain name displays Complainant’s famous AOL mark and Respondent has no apparent interest in the AOL mark or in the “aolnasties” second level domain, such use is disruptive of Complainant’s online video shopping services. Respondent uses the <aolnasties.com> domain name to offer a similar service, in that Respondent sells videos at the resulting website but the videos contain pornographic content. Respondent’s active use is unpleasant by nature and does not constitute rights or legitimate interests under Policy ¶¶ 4(c)(i) or (iii). See MBS Computers Ltd. v. Workman, FA 96632 (Nat. Arb. Forum Mar. 16, 2001) (finding no rights or legitimate interests when Respondent is using a domain name identical to Complainant’s mark and is offering similar 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 the Complainant’s mark by redirecting Internet traffic to its own website). Furthermore, no rights or legitimate interests in favor of Respondent, pursuant to Policy ¶ 4(c)(ii), are palpable given the facts before the Panel. Complainant claims that Respondent is known as Phat Nasty Productions, which is the name listed under the Registrant, Administrative Contact and Technical Contact sections on the WHOIS information page. There is no evidence to warrant a finding that Respondent is commonly known by the <aolnasties.com> domain name and Complainant has never licensed or authorized Respondent to use the AOL mark. Therefore, Policy ¶ 4(a)(ii) will not work in Respondent’s favor. See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name). Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the <aolnasties.com> domain name and that Policy ¶ 4(a)(ii) has been satisfied. Registration and Use in Bad Faith Respondent uses the <aolnasties.com> domain name to sell pornographic videos, which is likely to tarnish the AOL mark’s goodwill by way of source confusion. The Panel presumes that Respondent profits from this venture due to the commercial sale of the pornographic videos. Furthermore, nothing on record suggests that Respondent has an interest in the AOL mark, and the AOL moniker has no logical connection with Respondent’s adult-related content at the resulting website. The Panel thus concludes that Respondent registered and uses the <aolnasties.com> domain name to profit from the goodwill associated with the AOL mark in bad faith under Policy ¶ 4(b)(iv). See 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 Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 WIPO Apr. 22, 2000) (finding bad faith where Respondent attempted to attract customers to its website, <efitnesswholesale.com>, and created confusion by offering similar products for sale as Complainant). Moreover, due to the notoriety of the AOL mark, the Panel presumes that Respondent was aware of the significant value the AOL mark holds for Complainant. Respondent failed to seize the opportunity to explain its connection with the AOL mark, and its justification for registering a domain name that incorporates the famous trademark. Thus, the Panel infers that Respondent registered the <aolnasties.com> domain name in an attempt to capitalize on the AOL mark’s goodwill. Registering a domain name with knowledge of Complainant’s rights in a mark reflected in the domain name is evidence of bad faith under Policy ¶ 4(a)(iii). See Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the worldwide prominence of the mark and thus Respondent registered the domain name in bad faith); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration). The Panel finds that Policy ¶ 4(a)(iii) has been satisfied. DECISION Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED. Accordingly, it is Ordered that the <aolnasties.com> domain name be TRANSFERRED from Respondent to Complainant. Judge Harold Kalina (Ret.), Panelist Dated: April 1, 2003 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.