America Online, Inc. v. Adrian Paul Miles d/b/a AD2000D.com
Claim Number: FA0203000105890
The Complainant is America Online, Inc., Dulles, VA (“Complainant”) represented by James R. Davis, of Arent Fox Kintner Plotkin & Kahn. The Respondent is Adrian P. Miles d/b/a AD2000D.com, Wolverhampton WM, UK (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <aim5.com>, <aolcybercafe.com>, <aolinternetcafe.com>, and <aolnetcafe.com>, registered with BulkRegister.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
M. Scott Donahey, as Panelist.
Hon. James A. Carmody, as Panelist.
Milton Mueller, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on March 14, 2002; the Forum received a hard copy of the Complaint on March 15, 2002.
On March 17, 2002, BulkRegister confirmed by e-mail to the Forum that the domain names <aim5.com>, <aolcybercafe.com>, <aolinternetcafe.com>, and <aolnetcafe.com> are registered with BulkRegister and that the Respondent is the current registrant of the names. BulkRegister has verified that Respondent is bound by the BulkRegister 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 March 18, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 8, 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, firstname.lastname@example.org, email@example.com, and firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on April 29, 2002.
Respondent submitted a timely additional submission pursuant to Forum Supplemental Rule 7 on May 3, 2002.
On May 20, 2002, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the Forum appointed M. Scott Donahey, the Hon. James A. Carmody, and Milton Mueller as Panelists.
Complainant requests that the domain names be transferred from Respondent to Complainant.
Complainant contends that the domain names at issue are confusingly similar to Complainant's trademarks, that Respondent has no right or legitimate interests in respect of the domain names at issue, and that Respondent has registered and is using the domain names at issue in bad faith.
Respondent effectively admits the allegations as to all domain names except <aim5.com>. As to that domain name, Respondent contends that the domain name is not confusingly similar to Complainant's mark, that Respondent has rights or interests in respect of the domain name at issue, and that Respondent has registered and is using the domain name at issue in good faith.
C. Additional Submissions
Respondent has submitted a Supplemental Response pursuant to NAF Supplemental Rule 7 that provides in pertinent part as follows:
a. A party may submit additional written statements and documents to the Forum and the opposing party(s) within five (5) calendar days after the date the Response was submitted or the last date the Response was due to be submitted to the Forum, whichever occurs first.
b. Each submission must
i. be timely received by the Forum;
ii. be accompanied by an additional submission fee of $250;
iii. include proof of service of these submissions upon the opposing party(s);
iv. be submitted in either hard copy or electronic form.
Some decisions have apparently held that such submissions become part of the record and must be considered by the Panel. See, e.g., The Prudential Insurance Company of America v. Rich Arzaga Marketing Company, FA 106104 (Nat. Arb. Forum May 13, 2002). However, the Panel believes that Supplemental Rule 7 is inconsistent with the Policy, that it goes beyond what has been mandated and defined in the Policy, and that no provider can encroach upon the broad discretion given to the Panel by the Policy and the Uniform Rules.
Rule 1 of the Uniform Rules, adopted by all of the registrars of names within the generic Top Level Domains (gTLDs) and included in every registration agreement, provides the definition of "Supplemental Rules." "Supplemental Rules means the rules adopted by the provider administering a proceeding to supplement these Rules. Supplemental Rules shall not be inconsistent with the Policy or these Rules and shall cover such topics as fees, word and page limits and guidelines, the means for communicating with the Provider and the Panel, and the form of cover sheets." The matters to be governed by the Supplemental Rules are ministerial in nature. Nowhere in the definition is a provision for permitting additional pleadings to be filed upon a payment to the provider.
The Panel is directed to conduct the proceeding "in accordance with the Policy and these [Uniform] Rules." Uniform Rules, Rule 10(a). The Uniform Rules provide only for the filing of a Complaint and a Response. Uniform Rules, Rules 3 and 5. Regarding further written statements, the Uniform Rules could not be more clear: "In addition to the complaint and the response, the Panel may request, in its sole discretion, further statements or documents from either of the Parties." The Panel is to decide the submitted cases "on the basis of the statements and documents submitted and in accordance with the Policy, these [Uniform] Rules and any rules and principles of law that it deems applicable." Uniform Rules, Rule 15(a).
The Uniform Rules contemplate an expeditious procedure and impose on the Panel duties to see that this is achieved. "The Panel shall ensure that the administrative proceeding takes place with due expedition." Uniform Rules, Rule 10(c). "In the absence of exceptional circumstances, the panel shall forward its decision on the complaint to the Provider within fourteen (14) days of its appointment . . . ." Uniform Rules, Rule 15(b). Every lawyer wants the last word. If a lawyer could pay to get the last word, he or she would gladly do so. But such a procedure is clearly contrary to the expedition contemplated under the Uniform Rules.
The Supplemental Rules were never intended to provide a vehicle for permitting additional pleadings or for circumventing the discretion vested in the Panel. The Panel has an affirmative duty to see that it exercises its unfettered discretion in calling for additional submissions and to insure that the matter proceeds expeditiously. No Supplemental Rule can override this discretion and obligation. Accordingly, the Panel will not accept the Respondent's additional Response, for which no permission was sought from the Panel.
The Panel makes the following findings.
Complainant registered the mark AIM in conjunction with multiple user access to computer networks for the transfer and dissemination of information with the United States Patent and Trademark Office ("USPTO"), by application dated February 15, 2000, which registration issued on January 23, 2001. Complaint, Annex B. AIM is an acronym for AOL Instant Messenger. Complaint, Annex E. The name was first used in commerce in April 1997.
Complainant has invested substantial sums in the promotion and advertisement of its AIM mark. Sales of services under Complainant's various AOL and AIM marks have been in the billions of dollars.
Respondent registered the domain name <aim5.com> on June 17, 2000, more than three years after the first use in commerce. The domain name which remains at issue resolves to a website that features prominently Complainant's trademarks and that sells advertising. Complaint Annex F.
Complainant and Respondent had a dispute over domain names previously registered by Respondent. On February 9, 2002, Complainant sent Respondent a cease and desist letter concerning the allegedly infringing names. Complaint, Exhibit G. That dispute was eventually resolved. By email dated March 9, 2002, Respondent offered to sell the domain name still at issue for $5,000.
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 Panel finds that the sole domain name at issue is confusingly similar to Complainant's mark. See, American Online Inc. v. Chinese ICQ Network, D2000-0808 (WIPO Aug. 31, 2000) (addition of numeral "4" to ICQ mark in <4icq.com> does not defeat a finding of confusing similarity). The mere fact that the domain name string AIM5 includes a trademarked acronym is not, in the Panel's opinion, sufficient to establish confusing similarity. "AIM" is both a widely used acronym and a common English word that appears in more than 200 U.S. trademark registrations and applications. There are hundreds of conceivable uses of the domain name that would not be confusingly similar to the AOL mark. Rather, it is the particular use to which the Respondent put the name that makes the domain name confusingly similar to the Complainant's mark. Specifically, Respondent's website refers to AOL's Instant Messenger and incorporates the visual symbols of AIM in ways that are likely to mislead a casual observer. The Respondent has explicitly indicated his intention to target AIM users with his website. Respondent has also registered <aol.instantmessenger.name>, indicating clearly his intent to link his web-based activity to the Complainant's product. Under these conditions, the domain name <aim5.com> as registered and used by this particular Respondent can be considered confusingly similar to Complainant's trademark.
Rights or Legitimate Interests
The Panel finds that Respondent is using the domain name at issue to resolve to a website at which Complainant's marks are prominently displayed. America Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000). Thus, the Panel finds that Respondent has no rights or legitimate interests in respect of the domain name remaining at issue.
Registration and Use in Bad Faith
Respondent is using the domain name at issue to resolve to a website at which Complainant's trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant's business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy. Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2001). The Panel also finds that Respondent's offer to sell the domain name remaining at issue for US $5,000 is conduct that demonstrates bad faith registration and use under Paragraph 4(b)(i) of the Policy.
For all the foregoing reasons, the Panel finds that in accordance with Paragraph 4(i) of the Policy the domain names <aim5.com>, <aolcybercafe.com>, <aolinternetcafe.com>, and <aolnetcafe.com> shall be transferred to the Complainant.
M. Scott Donahey,
Hon. James A. Carmody Milton Mueller
Dated: May 31, 2002
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