WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AOL, Inc. v. freelancer
Case No. DCO2010-0005
1. The Parties
The Complainant is AOL, Inc., VA of United States of America, represented by Arent Fox LLP, United States of America.
The Respondent is freelancer, Jiangsu of People’s Republic of China.
2. The Domain Name and Registrar
The disputed domain name <aolmail.co> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 11, 2010. On August 12, 2010, the Center transmitted by email a request for registrar verification in connection with the disputed domain name. On August 13, 2010, GoDaddy.com, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 19, 2010, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on August 20, 2010.
The Center verified that the Complaint together with the amendment to 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 24, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was September 13, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 17, 2010.
The Center appointed Anthony R. Connerty as the sole panelist in this matter on October 7, 2010. 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 AOL Inc. (formerly Online America Inc.), the owner of numerous trademarks worldwide for the mark AOL. These include various Chinese registrations issued in 1997. According to the WhoIs records, the Respondent is based in Jiangsu Province, China.
The mark AOL was registered by 1989 and AOL.COM by 1992. The disputed domain name
<aomail.co> was registered in July 2010.
5. Parties’ Contentions
The evidence submitted by the Complainant shows that the Respondent registered the disputed domain name <aolmail.co> on July, 20, 2010, long after the AOL marks were registered; that the disputed domain name is a misspelling of the Complainant’s domain name <aolmail.com>; that the disputed domain name is used to route to a commercial website that provides access to third party sales, which process is believed to provide commission; and that the Respondent has sought to sell the domain name <aolmail.co> to the Complainant.
The Complainant’s contention is therefore that:
- The disputed domain name is confusingly similar to its mark;
- The Respondent has no rights or legitimate interest in the disputed domain name;
- The Respondent registered and is using the disputed domain name in bad faith;
- The Complainant seeks the transfer of the disputed domain name to itself.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Requirements of the Policy and the Rules
The Rules state that the Panel is required to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems appropriate: paragraph 15 of the Rules. Paragraph 4(a) of the Policy requires the Complainant to prove all three of the following elements in order to be entitled to the relief sought:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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.
Paragraph 4(c) of the Policy sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all the evidence presented, shall demonstrate that the Respondent has rights and legitimate interests in the disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy. The list of circumstances is non-exhaustive.
For the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances that shall be evidence of the registration and use of a domain name in bad faith.
A. Identical or Confusingly Similar
The services provided by the Complainant include those relating to computer services, telecommunications and electronic mail. The Complainant uses the AOL mark in connection with its official AOL Internet website. “Many millions of dollars” have been spent by the Complainant on advertising its services.
There are “tens of millions of users” of these services, and sales of the AOL services amount to “many billions of dollars”. As a result of this substantial advertising and considerable sales, the Complainant says that the distinctive AOL marks have become well known to the general public: “The AOL mark is one of the most readily recognised and famous marks on the Internet.”
As mentioned earlier, the mark AOL was registered by 1989 and AOL.COM by 1992. The disputed domain name <aolmail.co> was registered many years later in 2010, and is a misspelling of the Complainant’s domain name. The Respondent has asked the Complainant to make an offer to purchase that disputed domain name, seeking a sum in the region of “thousands of dollars”.
The Panel finds the disputed domain name to be confusingly similar to the Complainant’s Trademark. The Panel further notes that the spelling of the disputed domain name <aolmail.co> is a misspelling of, and is one letter different from, the Complainant’s domain name <aolmail.com>. That misspelling does not alter the fact that the disputed domain name is confusingly similar. See for example Washington Mutual, Inc. v. Phayze Inc., Peter Carrington and Party Night Inc., WIPO Case No. D2003-0283: “A slight difference in spelling between a trademark and a domain name does not reduce the confusing similarity.”
In all the circumstances, the Panel further accepts the Complainant’s contention that the disputed domain name is likely to mislead and confuse consumers, particularly given the fact that the Respondent’s website makes prominent reference to AOL.
The Respondent had the opportunity to challenge the Complainant’s case but has not done so.
The Panel is therefore satisfied that the Complainant has brought itself within the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant’s case is that the Respondent is not named or commonly known as AOL, is not licensed or authorized to use the AOL mark, and has no rights or legitimate interests in the disputed domain name.
Once a Complainant has made out a prima facie case, it is for the Respondent to answer that case: Paragraph 4(c) of the Policy sets out circumstances which, without limitation, may demonstrate a right or legitimate interest in a domain name. The Respondent was entitled to answer the Complainant’s allegations against him, and was entitled to demonstrate any right or interest in the domain name by, for example, reference to the circumstances listed in paragraph 4(c) of the Policy. The Respondent has not done so.
The Panel, also in view of the Panel’s findings below, is therefore satisfied that the Complainant has shown its compliance with the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The misspelling of the disputed domain name seems clearly aimed at creating confusion.
The commercial content of the Respondent’s website, and the fact that the Respondent is reasonably believed to be receiving “click-through” commissions from use of that website, are both factors pointing to bad faith: generating “click through” revenue may be evidence of bad faith. See for example MasterCard International Incorporated v. Hector Cancel, WIPO Case No. D2007-1121.
Further, the Respondent has offered to sell the disputed domain name to the Complainant for “thousands of dollars”.
The Complainant’s evidence shows bad faith registration and use for the purposes of the circumstances set out in paragraph 4(b)(i) and 4(b)(iv).
Again it is relevant to stress that the Respondent had the opportunity to respond to the Complainant’s case but has not done so.
In all the circumstances Panel finds that the Complainant has satisfied the bad faith requirements of paragraph 4(a)(iii) of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <aolmail.co> be transferred to the Complainant.
Anthony R. Connerty
Dated: October 19, 2010