WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
America Online, Inc. v. Stephen Williams
Case No. D2001-0114
1. The Parties
The Complainant is America Online, Inc. ("AOL"), a Delaware corporation with a principal place of business in Virginia, USA.
The Respondent is identified as Stephen Williams of Bridgeport, Connecticut, USA.
2. The Domain Name and Registrar
The disputed domain name is <africanaol.com>, registered with Innerwise, Inc., d/b/a Itsyourdomain.com, of Schaumburg, IL 60193, USA.
3. Procedural Background
The Complaint was received by the World Intellectual Property Organization Arbitration and Mediation Center ("the Center") on January 22, 2001.
After acknowledging its receipt, the Center requested and obtained from the Registrar a confirmation identifying the named Respondent, Stephen Williams, as the current Registrant, as well as the Administrative, Technical and Billing Contact for this domain name. The Registrar also provided the mailing and e-mail addresses and fax number Mr. Williams had given with his registration and advised the Center that the same information was also available through the WHOIS database.
The Center then verified that the Complaint conformed with the technical requirements of the Uniform Domain Name Dispute Resolution Policy ("Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy ("Rules"), and the Centerís Supplemental Rules for Uniform Domain Dispute Resolutions Policy.
On January 26, 2001, the Center sent Notification of Complaint and Commencement of Administrative Proceeding to the Respondent by courier, fax and e-mail. The fax report showed that the number provided by the Registrar and available in the WHOIS database was no longer valid and the e-mail was returned with a report that both of the e-mail addresses had permanent fatal errors. However, the mailing by courier was not returned. The Panelist is satisfied that the Center has employed all reasonably available means calculated to achieve actual notice to the Respondent in accordance with its obligations under the Rules 2 and 4.
On February 15, 2001, having received no response from the Respondent, the Center sent to the parties a Notification of Respondent Default and on March 1, 2001, having still not heard from the Respondent, notified the parties of the appointment of the undersigned as the Sole Panelist to decide the case.
4. Factual Background
The allegations and evidence submitted by the Complainant show as follows:
AOL is the owner of numerous trademark registrations worldwide for the mark "AOL," including registrations in the United States in existence since 1996. AOL uses this mark in connection with a variety of computer and Internet services, including, most notably for purposes of this case, online shopping, Web site hosting, and related online information and services for its subscribers. As a result of AOLís very substantial and successful investments in developing and promoting marketing its services and marks, it has over twenty six million subscribers around the world and the number of people who are familiar with AOL and its mark is even greater. AOLís use of "AOL.COM" as a domain name for its portal Web site has created a strong association between the mark "AOL," when used in a domain name, with AOLís services. The "AOL" and "AOL.com" marks are distinctive and famous.
The Respondent registered the disputed domain name, <africanaol.com>, on February 18, 2000 and has been using it (as recently as January 19, 2001) in connection with a commercial website that provides shopping, web site hosting and related services that are identical to those provided by AOL.
On May 11, 2000, AOL sent a cease-and-desist letter by certified mail to the Respondent, at the address shown in the registration of the disputed domain name and in the WHOIS data base, and followed up with a letter by regular mail on August 2, 2000. AOL received no response to these letters; however, AOL neither alleges nor provides evidence of the actual delivery of either of them.
5. The Partiesí Contentions
AOL contends that <africanaol.com> is nearly identical and confusingly similar to its marks and that the confusing effect is compounded by the fact that the services offered on the Respondentís Website are identical to AOLís. AOL further contends that the Respondent has no rights or legitimate interests in this domain name and has registered and been using it in bad faith, as demonstrated by the facts that his registration significantly post-dated the establishment of AOLís famous marks, he is using it for commercial purposes identical to those of AOL, and has ignored AOLís cease-and-desist letters.
Due to the Respondentís failure to submit a response as required by Paragraph 5 of the Policy, his contentions are unknown.
6. Discussion and Findings
Pursuant to Paragraph 4(a) of the Policy, in order to prevail, the Complainant must prove each of the following elements:
(i) that the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect to the domain names; and
(iii) that the disputed domain names were registered and are being used in bad faith.
Identity of Confusing Similarity
The panelist finds that the disputed domain name, <africanaol.com>, though not literally identical to AOLís marks, is confusingly similar to them both on its face and in its likely effect on persons utilizing the Internet. Given how long, widely, and well the famous AOL marks are known, a reasonable Web user is likely to think that <africanaol.com> is a domain name for an African branch or subsidiary of AOL.
Rights or Legitimate Interest
This element of AOLís case presents some difficulty because AOL only makes a conclusory assertion that the Respondent has no rights or legitimate interest in respect to the disputed domain name but proffers no evidence, direct or circumstantial, to support this assertion. This gap, however, is not fatal to AOLís case because, in this Panelistís view, while a Complainant in a UDRP proceeding has the ultimate burden of proof, with respect to elements (ii) and (iii) it does not have the burden of going forward with the relevant evidence. Since that evidence is typically in the Respondentís, not the Complainantís, possession, and the UDRP affords no discovery, it is the former who should bear the initial burden of proffering it and the latter should only have the burden of rebuttal.
This allocation of the initial burden is consistent with Paragraph 5 of the Policy, which does not permit the Respondent to merely deny the allegations of the Complaint but, rather, affirmatively obligates him to respond specifically and to lay out all bases for retaining the registration and use of the disputed domain name. The propriety of this allocation is further reinforced in Paragraph 4(c) of the Policy, which instructs respondents on "how to demonstrate your rights to and legitimate interests" in their responses (emphasis supplied). Thus, where, as here, the Respondent breaches his obligation to respond and thus fails to discharge his burden of going forward on an issue relating to the second or third element of the Complainantís case, it is appropriate to accept even an unsupported allegation of the Complainant on that issue as true. Therefore, the Panelist finds that the Respondent has no rights or legitimate interests in respect of the domain name.
With respect to this element, AOL was able to find, and has proffered sufficient evidence to support a finding of bad faith, namely the content of the Website to which the disputed domain name resolves. This evidence shows that the Respondent is a commercial competitor of AOL and permits an inference of one of the circumstances set forth in Paragraph 4(b) of the Policy as evidence of bad faith. This circumstance is that "by using the domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [his web site Ö] by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of [his] web site .. or product or service on [his] web siteÖ." (Footnote 1)
In sum, the Panelist concludes that the Complainant has discharged its burden of proof as to all three elements of its case.
For the reasons set forth above, it is hereby ordered that the domain name <africanaol.com> be transferred to the Complainant.
Natasha C. Lisman
Dated: April 4, 2001
Since a finding of this circumstance is sufficient, there is no need to decide whether, in view of AOLís failure to produce evidence of delivery of at least its certified cease-and-desist letter, any finding of failure to respond by the Respondent can be made, much less relied on as evidence of bad faith.