America Online, Inc. v. Chris Hoffman

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 Registrar’s 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 Respondent’s 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). Complainant’s 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). Complainant’s "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 registrar’s 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 Complainant’s 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 Complainant’s 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 Gandi’s 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. Parties’ 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 Respondent’s

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 Respondent’s bad faith registration and use of the

infringing domains:

(a) Respondent’s 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) Respondent’s bad faith use of the domains is demonstrated by Respondent’s

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. Respondent’s 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 Respondent’s Web site. Moreover, Respondent’s

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]. Respondent’s

bad faith intent is shown by the fact that he failed to respond to any of AOL’s

letters and Respondent continues to use the infringing domains. Based upon Respondent’s

failure to respond to AOL’s letters, and Respondent’s continued use of the AOL

domain names, AOL had no choice but to file this Complaint in order to terminate

Respondent’s bad faith use of the subject domains.

(e) Respondent’s 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) Respondent’s use of the subject domains to route to a Web site that has

nothing to do with AOL, and (4) Respondent’s history of infringing upon other

entity’s 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 Complainant’s 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 Respondent’s 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) Respondent’s 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) Respondent’s 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) Respondent’s 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) Respondent’s 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 "it’s time for") with Complainant’s 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 Complainant’s "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 Complainant’s 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 Complainant’s 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 Complainant’s rights in its mark,

and this factor contributes to the impression that Respondent in fact has registered

a name that is confusingly similar to Complainant’s mark. The Panel determines

that <aolipc.com> and <ipcaol.com> are confusingly similar to Complainant’s

"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 Respondent’s 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 Respondent’s use of Complainant’s mark for this

purpose. There is no reference to Complainant on Respondent’s 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, … [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 Complainant’s

mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s]

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 Complainant’s 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 Complainant’s 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 Respondent’s website may be relatively modest. However, Respondent is clearly

using Complainant’s mark to take unfair advantage of Complainant’s commercial

interests in its mark, and there is no legitimate or fair use justification

for this conduct. Respondent’s conduct constitutes bad faith within the meaning

of paragraph 4(a)(iii) of the Policy.

Respondent has registered several domain names that directly incorporate Complainant’s

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.

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