Aolcybersex.com

The timeline behind aolcybersex.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.

NATIONAL ARBITRATION FORUM DECISION America Online, Inc. v. Alliance for Online Living Claim Number: FA0502000414567 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 Alliance for Online Living (“Respondent”), PO Box 51, Tuckerton, NJ 08087. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <aolcybersex.com>, registered with Tucows Inc. PANEL The undersigned certifies that he or she has acted independently and impartially and to the best of his or her 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 electronically on February 2, 2005; the National Arbitration Forum received a hard copy of the Complaint on February 7, 2005. On February 3, 2005, Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the domain name <aolcybersex.com> is registered with Tucows Inc. and that Respondent is the current registrant of the name. Tucows Inc. has verified that Respondent is bound by the Tucows Inc. 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 February 8, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 28, 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@aolcybersex.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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default. On March 8, 2005, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) as Panelist. Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the National Arbitration 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 National Arbitration 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 <aolcybersex.com> domain name is confusingly similar to Complainant’s AOL mark. 2. Respondent does not have any rights or legitimate interests in the <aolcybersex.com> domain name. 3. Respondent registered and used the <aolcybersex.com> domain name in bad faith. B. Respondent failed to submit a response in this proceeding. FINDINGS Complainant, a global provider of Internet services and general interest information, holds numerous worldwide trademark registrations for the AOL mark, including U.S. Reg. Nos. 1,977,731 and 1,984,337 (issued June 4, 1996 and July 2, 1996, respectively), which are on file at the United States Patent and Trademark Office. Complainant has used its mark in connection with its services since at least as early as 1989. Complainant has invested millions of dollars to promote and advertise its services under the AOL mark. Complainant claims tens of millions of subscribers for its services, making it the most widely used interactive online service in the world. Respondent registered the <aolcybersex.com> domain name on December 15, 2004. The domain name resolves to a website that provides commercial pornographic online services. Respondent is not licensed or authorized by Complainant to use its mark for any purpose. 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 established that it has rights in the AOL mark through registration with the United States Patent and Trademark Office and through the use of the mark in commerce since 1989. 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’s <aolcybersex.com> domain name is confusingly similar to Complainant’s AOL mark because the domain name fully incorporates the mark while merely adding the generic words “cyber sex” and the “.com” generic top-level domain. The addition of generic words and a generic top-level domain do not distinguish the disputed domain name from Complainant’s AOL mark under Policy ¶ 4(a)(i). Thus, the Panel finds that the domain name is confusingly similar to the mark. See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (“Neither 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.”); see also Am. Online Inc. v. Neticq.com Ltd., D2000-1606 (WIPO Feb. 12, 2001) (finding that the addition of the generic word “net” to the complainant’s ICQ mark made the <neticq.com> domain name confusingly similar to the complainant’s mark); see also 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). The Panel finds that Policy ¶ 4(a)(i) has been satisfied. Rights or Legitimate Interests Complainant is able to establish a prima facie case by showing that Respondent does not qualify for the three “safe harbors” provided under Policy ¶¶ 4(c)(i)-(iii). Such a showing shifts Complainant’s burden to Respondent, who must come forward with evidence rebutting Complainant’s allegations in order to prevail on this element. In this case, Complainant has made a prima facie showing that Respondent does not have any rights or legitimate interests in the disputed domain name. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative . . . . [I]t is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted [to the] Respondent.”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where a complainant has asserted that a respondent has no rights or legitimate interests with respect to the domain name it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”). Because Respondent has failed to submit a response in this proceeding, the Panel may accept as true all reasonable allegations submitted by Complainant in the Complaint. Furthermore, since Complainant has made a prima facie showing that Respondent does not have any rights or legitimate interests in the disputed domain name, the burden is shifted to Respondent to demonstrate that it has rights or legitimate interests in the domain name. In this proceeding, Respondent has not submitted a response. Thus, Respondent has failed to present any circumstances under which it could substantiate rights or legitimate interests in the disputed domain name. See Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that the respondent had no rights or legitimate interests in the domain name because it never submitted a response or provided the panel with evidence to suggest otherwise); see also Bayerische Motoren Werke AG v. Bavarian AG, FA 110830 (Nat. Arb. Forum June 17, 2002) (finding that in the absence of a response the panel is free to make inferences from the very failure to respond and assign greater weight to certain circumstances than it might otherwise do). Respondent is using the <aolcybersex.com> domain name to direct Internet users to a website that provides adult-oriented and pornographic material. The Panel infers that Respondent commercially benefits from its use of the disputed domain name. Respondent’s use of a domain name that is confusingly similar to Complainant’s AOL mark dilutes Complainant’s mark by diverting Internet users to a website unrelated to that mark and is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because the respondent’s sole purpose in selecting the domain names was to cause confusion with the complainant’s website and marks, its use of the names was not in connection with the offering of goods or services or any other fair use); 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 the respondent attempted to profit using the complainant’s mark by redirecting Internet traffic to its own website); see also Pfizer, Inc. v. Internet Gambiano Prods., D2002-0325 (WIPO June 20, 2002) (finding that because the VIAGRA mark was clearly well-known at the time of the respondent’s registration of the domain name it can be inferred that the respondent was attempting to capitalize on the confusion created by the domain name’s similarity to the mark). Respondent dilutes Complainant’s valuable trademark by redirecting Internet users searching under Complainant’s mark to Respondent’s pornographic website. The Panel finds that Respondent’s tarnishing use of the disputed domain name evidences that Respondent lacks rights and legitimate interests in the domain name under Policy ¶ 4(a)(ii). See ABB Asea Brown Boveri Ltd. v. Quicknet, D2003-0215 (WIPO May 26, 2003) (stating that the fact that the “use of the disputed domain name in connection with pornographic images and links tarnishes and dilutes [Complainant’s mark]” was evidence that the respondent had no rights or legitimate interests in the disputed domain name); see also McClatchy Mgmt. Serv., Inc. v. Carrington, FA 155902 (Nat. Arb. Forum June 2, 2003) (holding that a respondent’s use of confusingly similar domain names to divert Internet users to websites that feature pornographic material had been “consistently held” to be neither a bona fide offering of goods or services . . . nor a legitimate noncommercial or fair use). No evidence before the Panel suggests Respondent is commonly known by the <aolcybersex.com> domain name under Policy ¶ 4(c)(ii). Respondent’s WHOIS information indicates that the registrant of the disputed domain name is known as “Alliance for Online Living” and is not known by the confusingly similar second-level domain that infringes on Complainant’s AOL mark. Moreover, Respondent is not authorized or licensed to use Complainant’s mark for any purpose. Thus, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); 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”); see also Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that Respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”). The Panel finds that Policy ¶ 4(a)(ii) has been satisfied. Registration and Use in Bad Faith Respondent’s domain name diverts Internet users wishing to search under Complainant’s well-known mark to a website providing adult-oriented and pornographic material, which results in Internet user confusion. The Panel infers that Respondent commercially benefits from its use of the disputed domain name by receiving click-through fees from its diversion of Internet users to pornographic websites. Respondent’s practice of diversion, motivated by commercial gain, through the use of a confusingly similar domain name evidences bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. 2002) (“While an intent to confuse consumers is not required for a finding of trademark infringement, intent to deceive is strong evidence of a likelihood of confusion.”); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the domain name in question was obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Wells Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (finding that the respondent’s tarnishing use of the disputed domain names to redirect Internet users to adult-oriented websites was evidence that the domain names were registered and used in bad faith). Furthermore, while each of the four circumstances listed under Policy ¶ 4(b), if proven, evidences bad faith use and registration of the domain name, additional factors can also be used to support findings of bad faith. 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) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”). Respondent’s registration of the disputed domain name, a domain name that incorporates Complainant’s well-known mark in its entirety and simply adds generic words, suggests that Respondent knew of Complainant’s rights in the AOL mark. Additionally, Complainant’s trademark registrations on file at the United States Patent and Trademark Office gave Respondent constructive notice of Complainant’s mark. Thus, the Panel finds that Respondent chose the <aolcybersex.com> domain name based on the distinctive and well-known qualities of Complainant’s mark, which evidences bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the “domain names are so obviously connected with the Complainants that the use or registration by anyone other than Complainants suggests ‘opportunistic bad faith’”); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”); see also Reuters Ltd. v. Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000) (finding that the respondent demonstrated bad faith where the respondent was aware of the complainant’s famous mark when registering the domain name and was aware of the deception and confusion that would inevitably follow if it used the domain name); 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); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO, a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof.”). The Panel finds that Policy ¶ 4(a)(iii) has been satisfied. 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 <aolcybersex.com> domain name be TRANSFERRED from Respondent to Complainant. Judge Harold Kalina (Ret.), Panelist Dated: March 22, 2005 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page NATIONAL ARBITRATION FORUM

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