America Online, Inc. v. Informatics, Inc.
Claim Number: FA0202000104570
The Complainant is America Online, Inc., Dulles, VA (“Complainant”) represented by James R. Davis, II, of Arent, Fox, Plotkin & Kahn. The Respondent is Informatics, Inc., Potomac, MD (“Respondent”) James E. Morgan, of Startec Global Operating Company.
REGISTRAR AND DISPUTED DOMAIN-NAME
The domain-name at issue is <iaol.com>, registered with Go Daddy Software, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Charles A. Kuechenmeister is the Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on February 8, 2002; the Forum received a hard copy of the Complaint on February 8, 2002.
On February 8, 2002, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the domain-name <iaol.com> is registered with Go Daddy Software, Inc. and that Informatics, Inc., the Respondent, is the current registrant of the name. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, 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 11, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 4, 2002 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 email@example.com by e-mail.
A document entitled SUGGESTION OF BANKRUPTCY filed by Startec Global Operating Company ("Startec"), alleging inter alia that Startec is the successor in interest of Respondent to <iaol.com> was received on March 1, 2002. The Respondent has not filed a Response or any other pleading in this proceeding.
On March 6, 2002, Complainant timely filed an additional submittal.
On March 11, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister as Panelist.
The Complainant requests that the domain-name be transferred from the Respondent to the Complainant.
Complainant (AOL) is the owner of numerous trademark registrations for the mark AOL, including U.S. Trademark Registration Nos. 1,977,731 and 1,984,337, which were registered in June and July of 1996, respectively.
AOL uses its mark AOL.COM as a domain-name for its website and owns U.S. Trademark Registration Nos. 2,325,291 and 2,325,292 for that mark.
AOL adopted and began using its AOL mark as early as 1989 and its AOL.COM mark as early as 1992 in connection with computer online services and other internet‑related services, including e‑mail services and providing access to the internet.
AOL has more than 30 million subscribers, operates the most widely-used interactive online service in the world. Each year millions of AOL customers worldwide obtain services offered under the AOL and AOL.COM marks. Millions of additional people are exposed to those marks from advertising and promotion.
The general public has come to associate the AOL name and mark with services of a high and uniform quality. The distinctive AOL and AOL.COM marks have become well known and famous among members of the purchasing public.
Many years after AOL's adoption and first use of the AOL and AOL.COM marks, Respondent registered the domain-name <iaol.com> with a bad faith intent to profit from the domain.
The domain <iaol.com> is nearly identical and confusingly similar to the AOL and AOL.COM marks. Customer confusion is particularly likely because Respondent is using the mark AOL with the descriptive prefix letter "i" which has become widely recognized as a symbol for Internet e‑commerce.
Respondent is using the <iaol.com> domain-name to promote e‑mail and Internet connectivity services, which are specifically identified in the Federal Registrations for AOL and AOL.COM.
As further evidence of bad faith use, Respondent makes no reference whatsoever to "IAOL" at the <iaol.com> site, but is merely using <iaol.com> to play off the famous AOL mark and attract consumers who falsely believe that AOL endorses or is affiliated with Respondent's services.
Respondent has no rights or legitimate interest with respect to <iaol.com>. Respondent is not licensed or authorized by AOL to use the AOL or AOL.COM mark, and Respondent is not known by the name AOL or IAOL.
Respondent uses <iaol.com> to route to an e‑mail and Internet service provider's site called "StarTec." At that site, Respondent provides services that compete directly with those offered by AOL, near the AOL name and mark. Respondent's website makes no reference to AOL or IAOL itself.
Respondent has not filed a Response or any other pleading in this matter. Startec filed a Suggestion of Bankruptcy in which it alleges that the Respondent effected a sale, transfer and assignment of <iaol.com> to it on December 21, 1999. The Suggestion of Bankruptcy further alleges (1) that Startec and affiliated entities (not including the Respondent) filed voluntary petitions for relief under Chapter 11 of the U.S. Bankruptcy Code, (2) that an order for relief under Chapter 11 was entered by the Bankruptcy Court on December 20, 2001, (3) that Startec's Chapter 11 cases have not been dismissed, (4) that the Complainant's challenge to Respondent's interest in <iaol.com> is a pre-petition claim against the bankruptcy estates of Startec, and (5) that this Administrative Proceeding is subject to the automatic stay under the U.S. Bankruptcy Code, 11 U.S.C. §362.
Startec filed copies of its bankruptcy petitions (without including any schedules of its assets), and the order of the Bankruptcy Court dated December 20, 2001 confirming Startec's authority to operate its businesses and implementing the automatic stay.
Startec did not offer any documentary evidence of the alleged sale or assignment of <iaol.com> to it by the Respondent, of any corporate or other restructuring of Respondent that would effect a transfer of Respondent's interest in <iaol.com> to Startec, or of any re-registration or attempt to re-register the said domain in its own name. It did not respond to the merits of AOL's Complaint herein.
C. Additional Submissions
On March 6, 2002, AOL filed an additional submittal addressing the issues raised by Startec's Suggestion of Bankruptcy, asserting that the Suggestion of Bankruptcy cannot be considered as a Response because only the registrant of a domain-name has standing to file a Response in this type of proceeding, and that Startec is not the registrant. This submittal complies with the requirements of Rule 7, Forum Supplement Rules for the Policy. Because it addresses the special issues raised by the Suggestion of Bankrupcty, the Panel considered it.
FINDINGS AND DISCUSSION
Before addressing the claims of Complainant and Respondent in respect of <iaol.com> ("the disputed domain-name"), the Panel first addresses the issues whether Startec may appear herein to assert, without credible evidence, an interest in <iaol.com> and based thereon to stay these proceedings pursuant to 11 U.S.C. §362. The Panel answers both questions in the negative. As shown by the Go Daddy registration records, current as of February 4, 2002 and last updated November 1, 2001 (Complaint Annex E), the registrant is Informatics, Inc. For the purposes of these proceedings, which are concerned solely with the registration, registration is conclusive evidence of interest in the domain-name as between Startec and Respondent. Having failed to demonstrate that it holds the registration for <iaol.com> or offer evidence that it is entitled to do so, Startec has no right to claim benefit in these proceedings of any interest in that domain-name. If some right or interest in respect of <iaol.com> exists for Startec apart from the registration and is an asset of one or more of its bankruptcy estates, Startec (or its bankruptcy trustee) has ample opportunity within the ten days following the filing of this Decision to demonstrate and protect that interest in another forum. Policy Paragraph 6(k)
Paragraph 15(a) of the Rules for Uniform Domain-name Dispute Resolution Policy (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.”
Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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
The disputed domain-name is confusingly similar to Complainant's AOL and AOL.COM marks because it incorporates the entirety of Complainant's mark and merely adds the letter "i" at the beginning. The addition of a single letter does not create a distinct mark capable of overcoming a claim of confusing similarity. See Canadian Tire Corp. v. 849075 Alberta Ltd., D2000-0985 (WIPO Oct. 19, 2000) (finding that the domain-names <ecanadiantire.com> and <e-canadiantire.com> are confusingly similar to Canadian Tire’s trademarks); see also America Online Inc. v. Chinese ICQ Network, D2000-0808 (WIPO Aug. 31, 2000) (finding that the addition of the numeral 4 in the domain-name “4icq.com” does nothing to deflect the impact on the viewer of the mark "ICQ" and is therefore confusingly similar). As Complainant points out, the use of <iaol.com> clearly implies at a minimum that the domain and its user are affiliated with AOL or that AOL endorses this use of its mark. Complaint §10. This is sufficient to demonstrate confusing similarity.
Rights or Legitimate Interests
Apart from the mere registration of <iaol.com> by Respondent, the record before the Panel is devoid of evidence of any right or legitimate interest Respondent may have in respect of IAOL or the disputed domain-name. While use of a name or a mark may give rise to a common law trademark right, the disputed domain-name in this case is used solely to attract the attention of Internet users. Any person visiting the <iaol.com> website is immediately redirected to another website using the names "eStart Internet" and "Startec," at which goods and services are offered under those names. No goods or services are ever offered under the name or mark IAOL. Complaint Annex G. This type of use, as a mere attention grabber, is not a bona fide offering of goods or services within the meaning of Policy §4(c)(i). See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (commercial use of the domain-name to confuse and divert Internet traffic is not a legitimate use of the domain-name). Kosmea Pty Ltd. v. Krpan, D2000-0948 (WIPO Oct. 3, 2000) (finding no rights in the domain-name where Respondent has an intention to divert consumers of Complainant’s products to Respondent’s site by using Complainant’s mark).
Because Complainant is and, prior to Respondent's registration of <iaol.com> in 1996, already was clearly and unmistakably associated in the mind of the public with the marks AOL and AOL.COM, it is highly unlikely if not impossible for Respondent to be commonly known as AOL or IAOL. Respondent cannot have become commonly known by those names and thus cannot have acquired any right or legitimate interest in them or in <iaol.com>. See Victoria’s Secret et al v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (finding sufficient proof that Respondent was not commonly known by a domain-name confusingly similar to Complainant’s VICTORIA’S SECRET mark because of Complainant’s well established use of the mark).
Finally, Complainant, which clearly does have rights in the mark AOL, has not granted Respondent any right to use it as part of <iaol.com>, and indeed has commenced these proceedings to prevent that use.
Complainant has met its burden to prove that Respondent has no right or legitimate interest in respect of the disputed domain-name.
Registration and Use in Bad Faith
Because of the fame of Complainant's mark, even in 1996 when Respondent first registered<iaol.com>, Respondent was reasonably on notice of Complainant's rights in the AOL mark. Respondent's registration of a domain-name so confusingly similar to Complainant's mark is evidence of bad faith. Policy Paragraph 4(b)(iv). 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 Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the world-wide prominence of the mark and thus Respondent registered the domain-name in bad faith).
Much of the evidence supporting the confusingly similar and no right or legitimate interest elements, as set forth above, also supports the bad faith use element. The <iaol.com> domain-name is so confusingly similar to Complainant's marks that the Internet user will likely believe that there is an affiliation between Respondent and Complainant or that Complainant has at least endorsed this use of it. Moreover, the fact that the disputed domain-name is used solely to attract attention and then divert traffic to another site, at which there is absolutely no use of or even reference to the disputed domain-name, is convincing evidence of bad faith use. Kosmea Pty Ltd. v. Krpan, D2000-0948 (WIPO Oct. 3, 2000) (finding no rights in the domain-name where Respondent has an intention to divert consumers of Complainant’s products to Respondent’s site by using Complainant’s mark). It may be argued that it is Startec and not Respondent who is making the actual use in this case, but for the purposes of these proceedings, which are directed toward and affect only the registration, as the registrant, Respondent is responsible for this use.
Complainant has met its burden to prove that Respondent registered and is using the disputed domain-name in bad faith.
Based upon the foregoing Findings and Discussion, the relief sought in the Complaint is granted. The disputed domain-name <iaol.com>is ordered transferred to Complainant.
Charles A. Kuechenmeister
Dated: March 25, 2002
 See, definitions of Complainant ("concerning a domain-name registration") and Respondent ("holder of a domain-name registration") in Paragraph 1, Rules for Uniform Domain-name Dispute Resolution Policy. See also, Policy Paragraph 1: ". . . [the Policy governs] disputes over the registration and use of an Internet domain-name registered by you,. . . ." and Policy Paragraph 4(i) Remedies: "The remedies available to a complainant pursuant to any proceeding before an Administrative Panel shall be limited to requiring cancellation of your domain-name or the transfer of your domain-name registration."
 Even apart from the registration, Startec offered no evidence from Informatics, Inc. and no documentary evidence of any other kind to support its claimed interest in <iaol.com>.
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