America Online, Inc. v Bongwoo Chun
Claim Number: FA0202000104974
The Complainant is America Online, Inc., Dulles, Virginia, USA (“Complainant”) represented by James R. Davis, of Arent Fox Kintner Plotkin & Kahn. The Respondent is Bongwoo Chun, San Jose, COSTA RICA (“Respondent”).
The domain name at issue is <casinoaol.com>, registered July, 2001, with Network Solutions.
The undersigned panelist, Robert R. Merhige, Jr., 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.
Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on February 21, 2002; the Forum received a hard copy of the Complaint on February 25, 2002.
On February 22, 2002, Network Solutions confirmed by e-mail to the Forum that the domain name <casinoaol.com> is registered with Network Solutions and that the Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions 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 25, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 18, 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 firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on March 11, 2002.
On March 15, 2002, pursuant to the parties’ agreement to have the dispute decided by a single-member Panel, the Forum appointed Robert R. Merhige, Jr. as Panelist.
The Complainant requests that the domain name be transferred from the Respondent to the Complainant.
America Online, Inc. (“AOL”) is the owner of a substantial number of trademark registrations worldwide for the mark “AOL,” at least two of which were registered in June and July 1996, as well as Costa Rican trademark registrations completed in August 1996. It uses its AOL mark in connection with several endeavors including computer services, computerized research and reference materials, computer software, games, including music, theater, movies, travel, education, lifestyles, hobbies and topics of general interest. Included in its services are computer consultation services, shopping via telephone or computer terminals in the fields of computer goods and services and general consumer goods, as well as telecommunications services. Its endeavors are numerous.
Complainant contends that its marks are world-wide known and famous among members of the purchasing public.
Complainant further contends that subsequent to its adoption and first use of the AOL and AOL.COM marks, Respondent registered the domain name in issue, <casinoaol.com> with a bad-faith intent to profit and that the <casinoaol.com> is nearly identical and confusingly similar to the AOL and AOL.COM marks.
Respondent, though not denying any of the Complainant’s asserted facts, admits that he registered the domain name in issue in July, 2001, “through NetSol Inc.,” and asserts that there is “no related issue with America Online, Inc., regarding this Complaint.”
The unrefuted evidence reflects that Complainant herein is the owner of trademark registrations worldwide for the mark AOL, including U.S. trademark registration Nos. 1,977,731 and 1,984,337, which were registered on June 4, 1996, and July 2, 1996, respectively; as well as Costa Rican trademark registration Nos. 956871, 95870, 96050 and 95882, each registered in August 1996.
The evidence reflects as well that Complainant registered and uses its mark in connection with, among other things, computer services, namely leasing access time to computer databases, computer bulletin boards, computer networks, and computerized research and reference materials, in the fields of business, finance, news, weather, sports, computing and computer software, games, music, theater, movies, travel, education, lifestyles, hobbies and topics of general interest. Additionally, Complainant uses its mark AOL.COM as the domain name for its web site.
It is unrefuted, and I find that approximately 8-10 years prior to Respondent’s registration of <casinoaol.com> Complainant had adopted and begun using its marks AOL.COM and AOL in connection with computer-online services and other internet-related services. With over 30,000,000 subscribers, Complainant operates one of the most widely-used interactive online service in the world and its customers, worldwide, obtain services offered under the AOL and AOL.COM marks.
Respondent’s use of the domain name <casinoaol.com> is primarily in connection with a commercial gambling site promoted under the name CasinoAOL. The record establishes that the letters AOL are set aside and used prominently, leading a reasonable person to believe that the services offered are affiliated with or endorsed by Complainant. The conclusion is buttressed by the fact that the font and size of the letters AOL used by Respondent is similar to those used by America Online to promote its AOL service.
Premised upon the fame of the AOL marks, its U.S. and Costa Rican trademark registration, a reasonable conclusion leads one to believe that Respondent had knowledge of Complainant’s rights in its famous AOL and AOL.COM marks.
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
I conclude that Respondent’s <casinoaol.com>, the domain name in issue, is confusingly similar to Complainant’s mark. Indeed, Respondent has simply incorporated the entirety of Complainant’s mark supplemented by the generic term “casino.”
The mere addition of a generic term to a famous mark as in the instant case does not create a distinct mark capable of overcoming Complainant’s claim of identical or confusing similarity. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001). See also Reed Elsevier, Inc., et al. v. Cepeda, No. FAO 106000097689, National Arbitration Forum, July 27, 2001.
It is obvious that the domain name registered by the Respondent is confusingly similar to Complainant’s trademark.
I conclude that Respondent has no rights or legitimate interests in the domain name in issue.
I conclude as well that the Respondent is not using the disputed domain name in a fair manner because it can be inferred that the Respondent is using the domain name in order to attract Complainant’s customers to its website by exploiting the goodwill associated with Complainant’s AOL mark. See Kosmea Pty. Ltd. v. Krpan, D2000-0948 (WIPO Oct. 3, 2000).
The registration of a domain name encompasses an assertion that said registration “would not infringe upon or otherwise violate the rights of any third party.” Under the circumstances existing, it is reasonable to conclude that any such representation by Respondent in the registering of the domain name in issue was erroneous when made and its use of Complainant’s legitimate registered marks constitutes bad faith. See Marcor International v. Langevin, National Arbitration Forum No. FAO 012000096317, 1/12/01. See also WIPO case D2001-0055 (America Online, Inc. v. Yeteck Communication, Inc.), wherein it was held that the unauthorized use of <aolcasino.com> in connection with an online gambling site violates the Uniform Domain Name Dispute Resolution and constitutes wrongful use of the subject domain.
For the reasons heretofore stated, pursuant to the authority vested in the undersigned, it is DIRECTED that the domain name <casinoaol.com> be forthwith transferred to the Complainant.
Robert R. Merhige, Jr., Panelist
Dated: March 22, 2002
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