America Online, Inc. v. Am Tech Video, Inc.
Claim Number: FA0203000105931
The Complainant is America Online, Inc., Dulles, VA (“Complainant”) represented by James R. Davis, of Arent Fox Kintner Plotkin & Kahn. The Respondent is Am Tech Video, Inc., Brooke Park, OH (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <aolvoices.com> and <aolvideos.com>, registered with Network Solutions.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on March 18, 2002; the Forum received a hard copy of the Complaint on March 20, 2002.
On March 20, 2002, Network Solutions confirmed by e-mail to the Forum that the domain names <aolvoices.com> and <aolvideos.com> are 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 March 20, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 9, 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 and firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on April 5, 2002.
On April 11, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson as Panelist.
The Complainant requests that the domain names be transferred from Respondent to Complainant.
Complainant owns the marks “AOL” and “AOL.COM” in connection with its Internet service business. Complainant asserts that it has invested “substantial sums of money” in developing its services and marks and that the “distinctive” “AOL” and “AOL.COM” marks “have become very well-known and famous.” Complainant claims that the disputed domain names are nearly identical and confusingly similar to its marks. Complainant states that Respondent is unfairly profiting from consumer confusion caused by the alleged unauthorized use of the AOL’s names and marks. Finally, Complainant contends that that Respondent has no rights or legitimate interests in the disputed domain because, among other things, Respondent’s use of the domain names came many years after the mark “AOL” had become “famous and well-known to consumers.”
Respondent contends that there is little danger of consumer confusion as consumers would not associate the domain names with AOL because Respondent offers audio and voice production, and encoding services for commercial web sites, and it is not an Internet service provider. Respondent states that it has also placed a disclaimer on it site to clarify that its business is not affiliated with AOL. Respondent denies that it has acted in bad faith.
Complainant is the owner of the numerous AOL family of marks. Complainant first began using its service mark “AOL” in commerce in 1989 and registered AOL on June 4, 1996 and registered AOL.COM on March 7, 2000. Complainant has used these marks in connection with computer online services and other Internet related services and has subsequently invested substantial sums in developing and marketing its services and marks. Respondent Am Tech Video, Inc. first used the service mark “Audio on Line & Videos” in November 2001.
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 domain names in dispute incorporate Complainant’s mark in its entirety and add only the generic terms “voices” and “videos.” Such a minor difference does not distinguish the domain names from Complainant’s AOL mark; thus, the disputed domain names are confusingly similar to the mark. E.g., America Online, Inc. v. Cucamonga Electric Corp., FA 103364 (Nat. Arb. Forum Feb. 26, 2002) (<aolutility.com> is confusingly similar to “AOL”); America Online, Inc. v. Tella, FA 101820 (Nat. Arb. Forum Dec. 28, 2001) (<aol.box> and AOL are confusingly similar); America Online, Inc. v. Viper, D2000-1198 (WIPO Nov. 28, 2000) (<aolgirls.com> is confusingly similar to “AOL”).
Rights or Legitimate Interests
Respondent has not demonstrated rights or legitimate interests in the disputed domain names. Respondent has failed to come forward with facts demonstrating that it is known in its industry by the acronym “aol.” Indeed, nothing in Respondent’s web site refers to “aol” except the disclaimer stating that Respondent is not affiliated with “America On Line.” Although Respondent uses the service mark “Audio On Line & Videos,” the documentation submitted by Respondent makes no reference to “AOL” as used by anyone to identify Respondent’s business. In fact, it appears that Respondent begin using the mark “Audio On Line & Videos,” only after this dispute began, as it had formerly used the mark “VIDEOONTHE WEB.NET.”
Thus, Respondent has not demonstrated rights or legitimate interests in its use of “AOL.”
Registration and Use in Bad Faith
Under the circumstances, there is a strong inference that Respondent’s purpose in using the disputed domain names, knowing that the Complainant’s “AOL mark was already considered famous before Respondent registered the disputed domain” names, America Online, Inc. v. TouchTone Pictures, LLC, FA 105776 ( Nat. Arb. Forum April 11, 2002), was to create a likelihood of confusion with the Complainant’s mark, thereby using the Complainant’s goodwill associated with its mark to attract business to Respondent’s web site. See America Online, Inc. v. Cucamonga Elec. Corp.; America Online, Inc. v. Yeteck Communication, Inc., D2001-0055 (WIPO April 23, 2001); America Online, Inc. v. Viper.
The domain names <aolvoices.com> and <aolvideos.com> are hereby transferred to Complainant.
Bruce E. Meyerson, Panelist
Dated: April 22, 2002
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