WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

America Online, Inc. v. Chris Hoffman

Case No. D2001-1184

 

1. The Parties

The Complainant is America Online, Inc., a corporation organized in the State of Delaware, United States of America (USA), with place of business in Dulles, Virginia, USA.

The Respondent is Chris Hoffman, with address in Pacific Palisades, California USA.

 

2. The Domain Names and Registrar

The disputed domain names are <timeforaol.com>, <itstimeforaol.com>, <aolipc.com>, and <ipcaol.com>.

The registrar of the disputed domain name is Gandi, with business address in Paris, France.

 

3. Procedural History

The essential procedural history of the administrative proceeding is as follows:

(a) The Complainant initiated the proceeding by the filing of a Complaint via e-mail, received by the WIPO Arbitration and Mediation Center ("WIPO") on September 28, 2001, and by courier mail received by WIPO on September 28, 2001. Payment by Complainant of the requisite filing fees accompanied the courier mailing. On October 3, 2001, WIPO transmitted a Request for Registrar Verification to the registrar, Gandi (with the Registrarís Response received by WIPO on October 3, 2001).

(b) On October 5, 2001, WIPO transmitted Notification of the Complaint and Commencement of Administrative Proceeding to Respondent via e-mail and courier mail. Such notification indicated that the deadline for filing a response was October 25, 2001.

(c) By e-mail dated October 25, 2001, Respondent requested an extension of the deadline for filing a response on grounds that he had just received the notification of Complaint and that his attorney was on a cruise. By e-mail dated October 25, 2001, Complainant objected to the granting of an extension. By e-mail dated October 26, 2001, WIPO denied Respondentís request for an extension and indicated that the request also would be furnished to the panel appointed in this matter.

(d) On October 29, 2001, WIPO notified Respondent by e-mail of his default in replying to the Complaint.

(e) On November 1, 2001, WIPO invited the undersigned to serve as panelist in this administrative proceeding, subject to receipt of an executed Statement of Acceptance and Declaration of Impartiality and Independence ("Statement and Declaration"). On November 3, 2001, the undersigned transmitted via telefax the executed Statement and Declaration to WIPO.

(f) On November 5, 2001, Complainant and Respondent were notified by WIPO of the appointment of the undersigned sole panelist as the Administrative Panel (the "Panel") in this matter. WIPO notified the Panel that, absent exceptional circumstances, it would be required to forward its decision to WIPO by November 19, 2001. The Panel received a hard copy of the file in this matter by courier from WIPO.

The Panel has not received any requests from Complainant or Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties. The proceedings have been conducted in English.

 

4. Factual Background

Complainant has registered the typed-drawing service mark "AOL" on the Principal Register of the U.S. Patent and Trademark Office ("USPTO"), Reg. No. 1977731, dated June 4, 1996, covering, inter alia, telecommunications services, computer services and electronic storage and retrieval of data and documents (Complaint, para. V.1 & Annex B). Complainant has also registered the typed-drawing service mark "AOL" on the Principal Register of the USPTO, Reg. No. 1984337, dated July 2, 1996, covering, inter alia, computer operating programs and computer operating systems (id.). Complainant has registered the typed-drawing service mark "AOL.COM" on the Principal Register of the USPTO, Reg. No. 2325291, dated March 7, 2000, covering, inter alia, computer services (id., para V.2 & Annex C). Complainant has also registered the typed-drawing service mark <aol.com> on the Principal Register of the USPTO, Reg. No. 2325292, dated March 7, 2000, covering, inter alia, telecommunications services (id.).

Use of the "AOL" mark was initiated by Complainant at least as early as 1989, and use of the "AOL.COM" mark was initiated at least as early as 1992 (id., para. V.3). Complainantís services are advertised and sold in the United States and elsewhere under the "AOL" and "AOL.COM" marks, and Complainant maintains a website at <aol.com>. Complainant operates the most widely-used interactive online service in the world (id., para. V.5). Complainantís "AOL" and "AOL.COM" marks are widely used and well known among Internet users throughout the world.

As part of its information services, Complainant maintains on its commercial website a section concerning religion and spirituality (id., para. V.3 & Annex J).

Complainant merged with Time Warner in a transaction that was completed on January 11, 2001 (id., para. V.3 & Annex G). The proposed merger was publicly announced on January 10, 2000 (id.). The combined business entity is known as AOL Time Warner.

This sole panelist has in previous administrative proceedings involving Complainant determined that Complainant holds rights in the service mark "AOL", that said mark is used in commerce and well-known among consumers and users of the Internet throughout the world [1].

According to the registrarís verification response to WIPO, dated October 3, 2001, "Chris Hoffman" is the listed registrant of each of the disputed domain names. According to the verification response, the record of registration for the disputed domain name <timeforaol.com> was created on May 26, 2000, and was last updated on July 28, 2001. According to the verification response, the record of registration for the disputed domain name <itstimeforaol.com> was created on January 12, 2001, and was last updated on August 21, 2001. According to the verification response, the record of registration for the disputed domain name <aolipc.com> was created on July 13, 2001, and was last updated on July 13, 2001. According to the verification response, the record of registration for the disputed domain name <ipcaol.com>was created on July 13, 2001, and was last updated on July 13, 2001.

According to Complainantís undisputed submission, each of the disputed domain names has been used to direct Internet users to a website identified by the address <goblessyourself.com>. The home page of this website is headed with the words "Jesus Isreal.com ™", and the web pages are largely devoted to negative portrayal, among other things, of the United Nations, the U.S. government and pornography. (Complaint, Annex D)

According to Complainantís undisputed submission, Respondent in an earlier administrative proceeding was found to have engaged in abusive domain name registration and use on the basis of having registered the trademark of a third party, "Women on Waves" (<womenonwaves.com>), and having used that name to host a website providing anti-abortion information. Women on Waves Foundation v. Chris Hoffman, WIPO Case No. D2000-1608, decided January 29, 2001.

Complainant on several occasions sent cease and desist letters together with transfer demands to Respondent regarding the disputed domain names. Respondent did not reply to this correspondence.

The Service Agreement in effect between Respondent and Gandi subjects Respondent to Gandiís dispute settlement policy, the Uniform Domain Name Dispute Resolution Policy, as adopted by ICANN on August 26, 1999, and with implementing documents approved by ICANN on October 24, 1999. The Uniform Domain Name Dispute Resolution Policy (the "Policy") requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which WIPO is one, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).

 

5. Partiesí Contentions

A. Complainant

Complainant states that it has rights in the service marks "AOL" and "AOL.COM", and that such marks are well known among Internet users (see Factual Background, supra).

Complainant in its own words then argues:

"9. During the period between May 26, 2001, and July 13, 2001, many years after AOL's adoption and first use of the AOL and <aol.com> marks, and just a few months after AOL publicly announced its intent to merge with Time Warner, Respondent registered the domain names <aolbuyingtime.com> <aolbuyingtimewarner.com> <timeforaol.com> <itstimeforaol.com> <aolipc.com> and <ipcaol.com> with a bad faith intent to profit from those domain names. Respondent subsequently deleted his registrations for <aolbuyingtimewarner.com> and <aolbuyingtime.com> (AOL is now the registrant of those domains).

"10. The domains registered by Respondent are nearly identical and confusingly similar to the AOL and <aol.com> marks. Consumer confusion is particularly likely because Respondent is using the very famous and distinctive mark AOL with the generic words "Its Time For" and "Time For," as well as the acronym "IPC." Consumers are likely to recognize the famous AOL mark in these domains and believe that the Web sites were created or endorsed by America Online, Inc. Moreover, some of the content provided at Respondentís site discusses different religious and spiritual beliefs. As noted, AOL also provides information services and chat rooms on these same topics. See Annex [hereto].

"11. Respondent registered and uses the subject domains with a bad faith intent to capitalize on the famous AOL and <aol.com> marks, and profit from the international and domestic goodwill AOL has built up in its famous marks. Respondent also is attempting to mislead consumers by registering and using domains that play off the very publicized AOL Time Warner merger.

"12. Respondent has no rights or legitimate interests in respect to <timeforaol.com> <itstimeforaol.com> <aolipc.com> and <ipcaol.com>. Respondent is not named AOL and is not licensed or authorized to use the AOL mark. The following is evidence of Respondentís bad faith registration and use of the infringing domains:

(a) Respondentís bad faith registration of the subject domains is evidenced by the fact that he registered several AOL/Time domains shortly after the two companies announced their planned merger. For example, the domains <aolbuyingtime.com> <aolbuyingtimewarner.com> <timeforaol.com> and <itstimeforaol.com> were all registered on January 11, 2000, within just a few hours of the public announcement of the planned AOL/Time Warner merger. As noted above, Respondent eventually deleted his registrations for the first two domains, and AOL is now the registrant. Respondent also has changed his mailing address over the years; however, the same registrant name and e-mail address have been used throughout. The Whois records indicate that Respondent also has deleted and reregistered the subject domains.

(b) All of the subject domains were registered many years after AOL's adoption and first use of the AOL and <aol.com> marks, and long after the mark AOL had become famous and well-known in connection with Internet-related services.

(c) Respondentís bad faith use of the domains is demonstrated by Respondentís use of the domain names to point to a Web site called <goblessyourself.com>. See Annex [hereto]. The GoBlessYourself Web site also contains numerous links to other commercial web sites that are not affiliated with or endorsed by AOL. Because AOL has no control over the content that is posted at GoBlessYourself, or the other sites promoted at GoBlessYourself, AOL is concerned about the confusion or complications that could occur if consumers were to believe falsely that AOL is affiliated with, or endorses, those sites. Respondentís bad faith is further shown by the fact that the GoBlessYourself site makes no reference whatsoever to AOL or AOL Time Warner. The use of the famous AOL mark in this manner shows that the domain names were registered and used solely in an effort to confuse consumers and divert Internet traffic to Respondentís Web site. Moreover, Respondentís pattern of registering AOL-based domains shows a bad faith intent to deny AOL the opportunity to use its mark in certain domain names to promote its services.

(d) Counsel for AOL sent Respondent several letters and e-mails to the different addresses he listed in the Whois database. In those letters, AOL set forth its rights in its AOL marks and requested that Respondent cease using any domain names that are confusingly similar to the AOL mark. See Annex [hereto]. Respondentís bad faith intent is shown by the fact that he failed to respond to any of AOLís letters and Respondent continues to use the infringing domains. Based upon Respondentís failure to respond to AOLís letters, and Respondentís continued use of the AOL domain names, AOL had no choice but to file this Complaint in order to terminate Respondentís bad faith use of the subject domains.

(e) Respondentís bad faith intent is further evidenced by a prior ICANN proceeding that held Chris Hoffman is a bad faith cybersquatter. See Annex I. In that proceeding, Respondent used a different mailing address than the addresses used for the AOL domains. The similarities between the actions taken by Respondent, the registrar that was used, and the types of Web sites used, lead AOL to believe that the Respondent in the prior ICANN proceeding is the same person identified as the registrant in this case.

(f) Based upon (1) the fame of AOL's marks, (2) AOL's trademark registrations, (3) Respondentís use of the subject domains to route to a Web site that has nothing to do with AOL, and (4) Respondentís history of infringing upon other entityís marks, Respondent cannot, in good faith, claim that he had no knowledge of AOL's rights in its very famous AOL and <aol.com> marks. Furthermore, Respondent cannot claim, in good faith, that he made a legitimate noncommercial or fair use of the domain names, or that he is commonly known by the name AOL."

Complainant requests the Panel to direct the registrar to transfer the disputed domain name to it.

B. Respondent

Respondent did not reply to Complainantís contentions.

 

6. Discussion and Findings

The is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.

It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy, and the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), establish procedures intended to assure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., paragraph 2(a), Rules).

In this case, the Panel is satisfied that WIPO took all steps reasonably necessary to notify the Respondent of the filing of the Complaint and initiation of these proceedings.

The Panel is also satisfied that WIPO acted within its discretion when it declined, at Respondentís request, to extend the deadline for submitting a response. Following its receipt and review of the file, the Panel concurs that there was inadequate basis for extending to Respondent an additional opportunity to reply. The Panel determined not to grant Respondent an extension to file a response at a late date.

Paragraph 4(a) of the Policy sets forth three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:

(i) Respondentís domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) Respondentís domain name has been registered and is being used in bad faith.

Each of the aforesaid three elements must be proved by a Complainant to warrant relief.

Paragraph 4(a) of the Policy sets forth three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:

(i) Respondentís domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) Respondentís domain name has been registered and is being used in bad faith.

Each of the aforesaid three elements must be proved by a Complainant to warrant relief.

Complainant has established rights in the "AOL" and "AOL.COM" marks as evidenced by registration and extensive use. Such marks are well known among Internet users (see Factual Record, supra).

Respondent has registered the disputed domain names <timeforaol.com>, <itstimeforaol.com>, <aolipc.com>, and <ipcaol.com>.

Two of the disputed domain names combine the equivalent of short phrases ("time for" and "itís time for") with Complainantís well-known mark. Complainant has suggested that Respondent sought to combine its mark with the word "time" to signify an association with the "AOL Time Warner" merged business entity. Regardless of this particular association, the Panel considers that the disputed domains <timeforaol.com> and <itstimeforaol.com> are confusingly similar to Complainantís "AOL" mark. The combined terms suggest that Complainant has sponsored or is associated with an Internet location that would be identified by the names.

Two of the disputed domain names combine Complainantís mark with the letters "ipc". Although Complainant has indicated that "ipc" is an acronym, it has not suggested what that acronym might be intended to represent. The domain name <aolipc.com> begins with Complainantís mark, and clearly conveys the visual impression of association with Complainant. The domain name <ipcaol.com> begins with "ipc". The visual impression conveyed by the name somewhat less directly associates it with Complainant. The totality of the evidence presented by Complainant indicates that Respondent adopted the name with the intention of taking advantage of Complainantís rights in its mark, and this factor contributes to the impression that Respondent in fact has registered a name that is confusingly similar to Complainantís mark. The Panel determines that <aolipc.com> and <ipcaol.com> are confusingly similar to Complainantís "AOL" mark.

Complainant has met the burden of proving that Respondent is the registrant of domain names that are confusingly similar to a service mark in which the Complainant has rights, and it has thus established the first of the three elements necessary to a finding that Respondent has engaged in abusive domain name registration and use.

The second element of a claim of abusive domain name registration and use is that the respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:

"Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii)

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue." (Policy, paragraph 4(c))

There is no evidence on the record of this proceeding that Respondent used or prepared to use the disputed domain names to make a bona fide offering of goods or services, or was commonly known by the domain names.

Respondent is not making a legitimate noncommercial use of Respondentís mark by diverting Internet users to a website that is a platform for his political views. There is no asserted or plausible relationship between Respondent and Complainant that might justify Respondentís use of Complainantís mark for this purpose. There is no reference to Complainant on Respondentís website.

Respondent has failed to establish rights or legitimate interests in the disputed domain names. Complainant has established the second element necessary for a determination that Respondent has engaged in abusive domain name registration and use.

The Policy indicates that certain circumstances may, "in particular but without limitation", be evidence of bad faith (Policy, paragraph 4(b)). Among these circumstances are (1) that a respondent has registered the domain name "in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct" (id., paragraph 4(b)(ii)), and (2) that a respondent "by using the domain name, Ö [has] intentionally attempted to attract, for commercial gain, Internet users to [its] web site or other on-line location, by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of [respondentís] web site or location of a product or service on [its] web site or location" (id., paragraph 4(b)(iv)).

The Panel has determined that the disputed domain names are confusingly similar to Complainantís mark. Respondent registered and has used the disputed domain names for the purpose of directing Internet users to his politically-motivated website by creating confusion regarding Complainantís sponsorship of or affiliation with his site. Respondent does not appear to be making direct commercial use of his website, although such website does provide a number of links to other websites that include substantial commercial activities. The commercial aspects of Respondentís website may be relatively modest. However, Respondent is clearly using Complainantís mark to take unfair advantage of Complainantís commercial interests in its mark, and there is no legitimate or fair use justification for this conduct. Respondentís conduct constitutes bad faith within the meaning of paragraph 4(a)(iii) of the Policy.

Respondent has registered several domain names that directly incorporate Complainantís well-known mark. Respondent has thereby prevented Complainant from registering its mark in those several disputed domain names. Respondent has evidenced a pattern of conduct through the multiple registrations. This constitutes bad faith registration and use of the domain names under paragraph 4(b)(ii) of the Policy.

Complainant has established the third and final element necessary for a finding that the Respondent has engaged in abusive domain name registration and use.

The Panel will therefore request the registrar to transfer the domain names <timeforaol.com>, <itstimeforaol.com>, <aolipc.com>, and <ipcaol.com> to the Complainant.

 

7. Decision

Based on its finding that the Respondent, Chris Hoffman, has engaged in abusive registration and use of the domain names <timeforaol.com>, <itstimeforaol.com>, <aolipc.com>, and <ipcaol.com> within the meaning of paragraph 4(a) of the Policy, the Panel orders that the domain names <timeforaol.com>, <itstimeforaol.com>, <aolipc.com>, and <ipcaol.com> be transferred to the Complainant, America Online, Inc.

 


 

Frederick M. Abbott
Sole Panelist

Dated: November 19, 2001

 


Footnotes:

1. America Online, Inc. v. Dolphin@Heart, Case No. D2000-0713, decided August 24, 2000; America Online, Inc. v. John Zuccarini, also known as Cupcake Message, Cupcake Messenger, The Cupcake Secret, Cupcake Patrol, Cupcake City, and The Cupcake Incident, WIPO Case No. D2000-1495, decided January 22, 2001, and; America Online, Inc. v. Steven S. Lalwani, WIPO Case No. D2001-0835, decided September 2, 2001.