Claim Number FA 0204000110780
Complainant is America
Online, Inc., Dulles, VA (“Complainant”) represented by James R. Davis
II of Arent, Fox, Kintner, Plotkin & Kahn.
Respondent is Hilton
Lee d/b/a Air On Line Multimedia Television, Vancouver, BC, CANADA,
(“Respondent”), pro se.
The domain name
at issue is <aolmtv.com>, registered with Register.com.
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.
Tom Arnold of
Houston, Texas, serves in this case as a sole Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (“the Forum”)
electronically on April 23, 2002; the
Forum received a hard copy of the Complaint on April 25, 2002.
On April 23,
2002, Register.com confirmed by e-mail to the Forum that the domain name <aolmtv.com>
is registered with Register.com and that the Respondent is the current
registrant of the name. Register.com
has verified that Respondent is bound by the Register.com registration
agreement and has thereby agreed to undertake to resolve domain-name disputes
brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute
Resolution Policy (the “Policy”)
On April 26,
2002, a Notification of Complaint and Commencement of Administrative Proceeding
(the “Commencement Notification”), setting a deadline of May 16, 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 postmaster@aolmtv.com by e-mail.
A Response was
received May 17, 2002, one day late.
Pursuant to
Complainant’s request to have the dispute decided by a single-member Panel, the
Forum appointed the undersigned Tom Arnold of Houston, Texas, as sole Panelist.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
LATE RECEIPT OF RESPONSE; REQUEST FOR
TIME AND LEGAL PROCEDURAL HELP.
Respondent
submitted its Response on May 17, 2002, one day past the deadline of May 16. I
find that whether a default is to be granted or not, that whether or not the
Panel should consider the late file document,
are within the Panel’s discretion. Telstra
Corp. Ltd. v. Chu, D2000-0423 (WIPO June 21, 2000) and other cases.
A conclusion of
striking a Response or of declaring default for being one day late in filing a
response is a harsh remedy in proportion to the magnitude of the one day error
by a pro se party. For this and a
number of other reasons, I elected to consider the Response as readily appears
from other recitations in this award.
Respondent’s
presentation is pro se, apparently without benefit of counsel advising him
before his various practices were undertaken as well as without benefit of
counsel in the preparation of that submission. Unavoidably that is both lawful
and disadvantageous. In a number of places Respondent's Response reflects to
those familiar with trademark/domain-name practice and law, either a bad faith
advocacy or lack of understanding of the context of the law and practice, in
which I must judge the arguments and facts presented and facts not
presented. As it happens I am happy
that I do not have to reach the question of whether Respondent has been guilty
of error or has acted in bad faith in his presentations in this process, for I
come to a conclusion directing that the domain name in issue be assigned to
Complainant in either event.
Respondent has
asked for procedural guidance help because of his lack of experience in the
area of this process, and has asked also for more time for a yet further
submission of papers and evidence now these 40-odd days after the May 16 due
date. Neither the Forum nor the Panel is permitted to be in the business of
providing legal procedural advice to a party—parties must rely basically upon
lawyers for that help. Also, the process of expedited decision making which we
work under does not permit the granting of either of those requests at this
time, now about 40 days after the missed due date. Further, the facts which have been presented to me appear to
provide a clear and convincing proof of Complainant’s right to the award it
seeks, over any likely further evidence I can conceive of Respondent being able
to present and justify the present lateness of, that is consistent with the
Response he has already filed.
The requests for
further time and help is denied.
A. Complainant
I here provide
what is effectively a quote from its AOL's written Complaint, with bracketed
findings and conclusions following each numbered paragraph.
Complainant
contends that :
1. Complainant, America Online, Inc.(“AOL”) is
the owner of numerous trademark registrations worldwide for the mark AOL,
including U.S. trademark registration Nos. 1,977,731 and l.984,337, which were
registered on June 4, l996, and July 2, l996, respectively, and Canadian
trademark registration 493,161 which was registered April 17, l998 (evidence of
trademark registration being filed under Annex B).
AOL registered
and uses its AOL 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; computerized dating services; computer consultation services; computerized
shopping via telephone and computer
terminals in the fields of computer goods and services and general consumer
goods” and
“telecommunications
services, namely electronic transmission of data, images, and documents via
computer terminals; electronic mail services; and facsimile transmission.”
[Respondent has
not meaningfully contested the allegations of Complaint ¶ 1]
2. AOL uses its
mark AOL.COM as a domain name for its web site. AOL
owns federal
trademark registration Nos. 2,325,291 and 2,325,292 for the mark
AOL.Com. The
mark AOL is used extensively at this Web site, which is a significant
method of promoting AOL’s service. As a
result consumers associate the mark AOL, when used in a domain name, with AOL’s
services.
3. Long prior to
Respondent’s registration of the domain name <aolmtv.com>, and at
least as early as l989 for the mark AOL, and l992 for the mark AOL.Com, AOL
adopted and
began using the
marks in connection with computer online services and other Internet-
related services.
The distinctive AOL mark is used and promoted around the world in
connection with providing a broad range of information and services over the
Internet
and at the
proprietary AOL online system. See Identification of Services set forth in
Annex B, as well
as Annexes D and F. AOL has used its
famous and distinctive marks continuously and extensively in interstate and
international commerce in connection with
the advertising
and sale of its Internet and computer-related services.
[Again, no
meaningful contest of these allegations from Respondent.]
4. AOL has
invested substantial sums of money in developing and marketing its services
and marks. As
result the AOL brand is one of the most readily recognized and famous
marks used on
the Internet.
[Again, no
meaningful contest of these allegation.]
5. With over
thirty-four million subscribers, AOL operates the most widely-used interactive
online service in the world and each year millions of AOL customers worldwide
obtain
services offered
under the AOL and AOL.COM marks; millions more are exposed to said marks
through advertising and promotion.
[Again, no
meaningful contest.]
6. The AOL and
AOL.COM marks have been and continue to be widely publicized through
substantial advertising throughout the United States and the world. Many millions of
dollars have
been spent in connection with such advertising, which has been disseminated
through network and cable television programs radio broadcasts, and in print
media including newspapers and periodicals.
[Again, no
meaningful contest.]
7. Sales of
services under the AOL and AOL.COM marks have amounted to many billions
of dollars. As a result the general public has come to
associate the AOL name and marks’
with services of
a high and uniform quality.
[Again, no
meaningful contest.]
8. Because of
these substantial advertising expenditures and sales, the distinctive AOL and
AOL.COM marks have become very well-known and famous among members of the
purchasing public.
[Again, no meaningful
contest.]
9. Many years
after AOL’s adoption and first use of AOL and AOL.COM marks, Respondent
registered the infringing Domains with a bad faith intent to profit from the
confusion that would be generated from these domains.
[Respondent
contests vehemently that its actions were in bad faith, but otherwise presents
no meaningful contest of this allegation.]
10. The
infringing Domains 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 in connection with the MTV mark,
which like AOL,
is used in connection with providing music and shopping services. As
set forth below
Respondent is using the <aolmtv.com> domain to promote
Respondent’s
own Web sites,
some of which provide pornographic content.
Consumers, therefore, are
falsely that AOL
endorses or is affiliated with MTV, Respondent or its online
commercial and
pornographic sites.
[I construe
Respondent's Response to contest either directly or by implication the first
two lines of this allegation, down through "because", but I don't
recall any meaningful contest of the rest of these allegations.]
11. Respondent
registered and used the <aolmtv.com> domain with a bad faith
intent to capitalize on the famous AOL and AOL.COM marks, and profit from the
international
domestic
goodwill AOL as built up in its famous marks.
Respondent also is attempting to mislead consumers by registering and
using a domain name that plays off the very famous AOL name and mark.
[Respondent does
not deny registering and using the <aolmtv.com> domain, but I construe his response to
contest the remainder of these allegations.]
12. Respondent
has no rights or legitimate interests in respect to the infringing
domain.[Contested.]Respondent 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 <aolmtv.com>
domain:
(a)
Respondent’s bad faith registration of the <aolmtv.com> domain is evidenced by the fact that the
domain was registered many years after the AOL marks were
registered, and long
after the AOL marks had become famous and well-known
to
consumers. See Annex E for Whois Records.
Respondent, therefore registered the domain in bad faith and with full
knowledge of AOL’s right to the name and mark.
[Respondent
has not denied that it registered the domain name many years after the AOL
marks were in use and registered, and long after the AOL marks had become
famous and well-know to consumers. To the extent if any that Respondent has
contested whether its domain registration was with full knowledge of AOL's
rights to the name and mark, the contest is either in bad faith or as I would
rather construe it, is in ignorance of the operative law and practice as
applied to the facts he elsewhere admits or does not contest, and so I rule
against that contest.]
(b)
Respondent’s bad faith use of <aolmtv.com> is demonstrated by the fact that
Respondent is using the domain to promote
Respondent’s commercial
Web site, “shopon.net”,
which makes no legitimate reference to AOL and is not
affiliated with
AOL. See Annex G. Respondent,
therefore, registered the
domain
solely to play off the famous AOL name and mark, and to profit from the consumer confusion that is likely to
exist when consumers encounter the AOL mark n the domain <aolmtv.com>. Confusion is particularly likely given that
many of the only shopping services provided by Respondent are similar to those
found in the authentic AOL site and service.
[Respondent
does not really contest the basic elemental facts here recited upon which
Complainant builds its conclusionary arguments of "bad faith",
reasons and intent behind its actions, but Respondent does contest the
allegations of bad faith and wrongful intent or reasons for the actions.]
( c) In an attempt to resolve this
matter amicably, counsel for AOL contacted
Respondent and requested that all
unauthorized use of the AOL mark cease.
See Annex F. Respondent, however, refused to cooperate and claimed that the
commercial
site had been changed into a non-profit site, awkwardly called Air Online
MTV. See Annexes F and G. In fact, however, the “non-profit” site
operated at <aolmtv.com>
still contains links to Respondent’s own commercial sites, including the
<shopon.net> and pornographic sites. See Annex G. Even if
Respondent’s
chosen name were believable, such a strategy is not considered a bona fide or
legitimate use of another’s famous mark.
See America Online,
Inc.
v. Cucamonga Electric Corp., NAF 112000103364 (“I will say only for this
Respondent that it has unlike others spared me the pathetic attempts to suggest
an unrelated origin for its use of AOL”). Respondent’s misleading statements
and his infringing actions show a bad faith intent to continue trading upon the
famous AOL mark, as well s the MTV mark.
Respondent’s claim that AOL is a
coincidental
acronym for Air Online is unpersuasive and a transparent attempt to
justify
bad faith actions.
[Again
the elemental facts, like Complainant’s contacting the Respondent in an effort
to resolve this dispute amicably, Respondent's "non-profit" under the
contested domain name being still linked to Respondent's commercial sites, are
not contested; however, the conclusions such as "such a strategy is not
considered a bona fide or legitimate use of another's famous mark."]
(d) Respondent’s bad faith
intentions and use of the <aolmtv.com> domain is further
demonstrated
by several nearly identical ICANN cases involving similar cybersquatting
motives, e.g.,
America
Online, In. v. Cucamongo Electric Corp., NAF 112000103364
(“in this age it is not a coincidence
when a firm uses the
acronym
AOL in any new setting. In the absence
of a credible explanation I will infer that its purpose is t mislead Internet
users into thinking that what ever activities are carried on on the site, AOL
Inc. has some connection with them” [I regard that quote as fully applicable to
the facts of this present case.]
America Online, Inc., v Yeteck
Communication, Inc., WIPO D2001-
0055,
(Respondent held to have acted in bad faith despite claims that “aolcasin.com”
was an acronym for “Adults On Line Casino”. [Again, a prior case quote could
hardly be imagined
that
more perfectly fit this case.]
America Online Inc. v. East Coast
Exotics, WIPO D2001-0661 (bad
faith
registration and use despite Respondent’s clam that AOL is an acronym for “Amateurs On Line”).
As
with these and many other prior cases, Respondent has superficially attempted
to justify its actions, in this case by claiming that AOL is an acronym for the
awkward and nonsensical name Air On Line.
[While
Respondent does not contest the raw facts of there being such authorities
with
the recitations substantively as there recited, the thrust of the Response is a
challenge to the thrust of those cases as applied to our present dispute.]
(e)
Respondent’s bad faith registration and use of the infringing <aolmtv.com>
domain
is
also evidenced by the bad faith pattern of registering the domain at issue, as
well as the domain “mtv1.com”, which routes to Respondent’s shopon.net site and
infringes upon the MTV mark. See Annex E for Whois records. Respondent’s bad faith pattern of infringing
upon third party marks violates Para 4(b)(ii) of the UDRP.
[Respondent
contests "bad faith registration", "bad faith pattern of
registering" ,
and
"bad faith pattern of infringing upon third party marks". I don't recall a contest of the other
allegations in this paragraph.]
(f)
Based upon (1) the fame of the AOL mark; (2) AOL’s trademark registrations;
(3) correspondence sent by AOL’s counsel;
(4) Respondent’s
unbelievable and transparent attempt to
claim AOL is an acronym for Air On Line; and (5) Respondent’s bad faith pattern
of infringing on the others’ marks, Respondent cannot in good faith claim that
it had no knowledge of AOL’s rights in its very famous AOL and AOL.Com marks. Furthermore, Respondent cannot claim in good
faith that it made a legitimate noncommercial or fair use of the subject
domain, or that it is commonly known as AOL.
[This summation of Complainant's
arguments which is contested in its conclusions, again is not contested as to
its elemental facts like, "Fame of the AOL mark", "AOL's
trademark registrations", "correspondence sent by AOL's
counsel", "Respondent cannot claim in good faith that it had no
knowledge of AOL's . . . very famous AOL and AOL.COM marks" ,
"Respondent cannot claim in good faith that it . . . is commonly known as
AOL". ]
B. Respondent contends:
Respondent’s first language is not
English and his pro-se presentation has a number
of
spelling, grammatical and punctuation errors in it; I quote his text as
presented, without corrections. I believe that none of the errors have left
me
without a satisfactory understanding for purposes of my decision here, of what
he was in fact trying to say, though I of course do not undertake to assume any
evidence or arguments that he did not present.
Respondent contends that:
“For
some reason that I did not receive this notification from my email account (shopon3@hotmail.com which al@shopon.net which forward to) I have just find this notification of
complaint to date May 16, 2002. When I
setting up my pop mail account, Therefore
I need to request an extension for the submission of additional documents.
Furthermore
due to my lack of experience for dealing with such matter and the English is my
second language. I will be needed your
assistant to direct me regarding the rule, action, etc.
My
active communications email is (shopon3@hotmail.com)
In
response to complainant’s accuse.
Due
to the short of times I can only provide a brief list of evidence shown below
that the complainant false accused me.
(Namely Hilton Lee, below refer to me or I,)
Listed
below are the fact demonstrated that I have no intention nor did I infringe
complaint’s right.
[As
recited below, I reach a contrary conclusion based on elemental, basic facts
which I find to be not contested.]
"[1]
It was my interest to develpment online e-commerce and online shopping with
Multi-media content way before l997 and doing so by register the domain
(Shopon.net) on 21-Jan-l998. Then
register mtvl.com On Oct 7, 1999 representing my strong interest in the online
Multi-media (MTV) content development had become my personnel hobby. To further expecting my personnel hobby by
registered <<aolmtv>>.com (Air On Line Multimedia Television) on
Jan 11 2000, then registered Beerdrive.com, Ephotohall.com, Eplhotohall.net,
Mygirl.com on June 2000. Please notice all the registered domains are all
according to the Multi-media only content nature, which has no intent t
resample anybody else. All the domain
registered are in responding to my own personal hobby."
[I
take it that Respondent was in some sort of on-line business and/or hobby in
l997 and l988, but I find no allegation of use of <<aolmtv>> in
commerce that may lawfully be regulated by Congress, prior to his domain name
registration on Jan. 11, 2000, years after AOL's business had already developed
into a gargantuan world-wide proportions.
He
couches his "furtherance" of his personal hobby as
"expecting" at the time of his January 11, 2000 domain
registration, connoting not substantial
use in commerce before 2000. Then he
discusses other domain names he registered , but they are irrelevant to show
rights in <<aolmtv>> prior to knowledge of AOL and MTV and their
famous businesses.
[Respondent's
excuse for using <aolmtv> is that it is an acronym for "Air On Line
Multimedia Television." What he does not
say is perhaps more important; he does not say he had any reason at all
for selecting those words "Air On Line Multimedia Television", other
than , as must be implied in the context here, to create an acronym using the
inherently known famous AOL and MTV marks thereby to trade on their good will
and benefit his own business. He had millions of potential choice words and
acronyms he could have used, but when without other reason he selected
otherwise nonsensical letters to justify use of a compost of two of the best
know marks in all cyberspace commerce, his only driver or reason must have been
the fame of those two marks he obviously knew about.
[In
the context of the admitted or uncontested elemental facts, I can find no
credibility in Respondent's recitation of "no intent to resample
[resemble] anybody else".
[As
to the recitation, "All the domain registered are in responding to my own
personal hobby, . . ." and "in line with my personal
interest." That may be, but if
the hobby and interest was use of two of the world's most famous internet oriented
marks for no reason other than their great fame and value, i.e., to infringe
those marks, the point is meaningless to this case.
Continuing
now with Respondent's submission: ]
* * *
"[2]
Evidence shows that until recently that the complainant’s main business was
internet access serve provider. Web
browser, search engine provider which have
been register hundreds domain yet
show no interest on air only Multi-media TV, which
the
domain I had register obvious in line with my personal interest until the
complainant find that they had developed interest into dominate any business
over the World wild web. It did show
that the complainant act with a bad faith by annoying the solution and the
action that I had took to address the concern of the complaint in good will and
the complainant in return by demanding only thing they went were for me to give
up my right and hand over my domain."
[First,
Respondent alleges that "until
recently" Claimant's uses were limited in scope, and Claimant "showed
no interest in . . . ". To the
contrary the trademark registrations carry Complainant's sworn first uses of
its mark for music and shopping and a very broad scope of other internet
activities back into the mid and early 90's,
long prior to any Respondent's showing of conception or use of
<aolmtv> for those or other internet-associated services.
[
As background and reasons for its allegation of Complainant’s bad faith,
Respondent argues that ". . . the
complainant find that they had developed interest into dominating any business
over the World wild web." But there is absolutely zero evidence of
Complainant's interest or enforcement activities being broader than the lawful
rights it has in its own trademarks--which of course is entirely appropriate
and proper. No basis for a charge of
Complainant bad faith is shown.
[Respondent's
". . . the complainant . . . demanding only thing they want were for me to
give up my right and hand over my
domain." My difficulty with that
argument is that I can not find a right that Respondent has in AOL or <aolmtv.com>. Who granted any such right, or what grounds
or criteria, under what authority? Respondent did not select from the public
domain where it might have perfected rights under the authority of the law, but
from the inventory of already privately developed and owned acronyms. This, the
law forbids. This error of thinking, an
assumption of rights which it does not have,
appears to be a driver for Respondent's advocacy. ]
* * *
"[3]
It shows that the complainant act with a bad faith by falsely accusing me to
intent to capitalize the AOL name, instead the fact was that I had develop
e-commerce and shopping business and selling [under other domain names and
marks] only since the time mention about and have making profit online with m
lst domain Shopon.net, All the other
domains relate t my interest and hobby that I had registered had not been hook
up to an Virtual domain hosting (that
is domain will not) publish until content are fully develop and ready.) Until I have changed only Multi-media
content and service with all my domains.
The fact is since the changed domain hosting that I was so business to
develop content and service that all the advertising And promoting that I did to develop my only shopping business
with shapon.net had been wasted.
I find
that the complaint act with a bad faith and kind of insulting by false accuse
me to intent to capitalize the AOL name while the real fact there where not
even one penny have been make after the change of the host and my decision to
develop only Multimedia content as my personal interest and hobby.
The
fact is during the few months that the domain setup to the Virtual host and
before, all my websites have not been even once to mention the complainant’s
name until the complainant contact and expecting concern then I have put up a
notice indicating that my site are not in any relate to the complainant which
the complainant was not appreciated with my acting in good will."
[Multiple
times Respondent alleges that Complainant acted in bad faith or insultingly in
falsely accusing Respondent "to intent to capitalize the AOL name".
Respondent makes it clear that he is not familiar with the law and practice
involved in acquiring and enforcing rights in trademarks and the scope of
impropriety in connection with domain name registration and use. But since I find that Complainant was fully
within its rights, I must find no bad faith.
[The
allegations of the part of the second thru forth lines of ¶3, constitute a
fairly direct recitation that Respondent's pre-2000 online activities were
"with my lst domain Shopon.net", i.e., not with <aolmtv.com>. Then "All the other domains relate to
my interest and hobby that I had registered had not been hook up to an Virtual
domain hosting (that is domain will not
publish until content are fully develop and read.) " So, as aforesaid, <aolmtv.com>
appears not to have been used prior to 2000. Indeed the next sentence suggests possibly, not used prior to
Oct. 2001, though I do not so find as a fact.
[Respondent
alleges that his various websites "have not be even once to mention the
complainant's name until the complainant contact." So be it. It is the domain name using <aol…>
that is in issue here, a domain with links to Respondent's commercial sites.
That use of the domain name is the seat of the mischief.
[Finally,
Respondent's "I have put up a
notice indicating that my site are not in any relate to the complainant which
the complainant was not appreciated with my acting in good will." But a person familiar with the world famous
AOL mark, seeing a link to <aolmtv.com> experiences his confusion then and responsive to it, clicks to
get a Respondent's commercial site not knowing then of any lack of
relationship. Once there, he reads the offering and may buy at a site he could
not ever found but for the name <aol. . . .]
* * *
I
will need more time to organize and put forward my present of evidence in
relating to the Forum Case.
[End
of Respondent's submission]
Complainant has
provided dates of its trademark uses and detailed lists of the services and
product lines in which it operated under “AOL”, clearly proving a
"AOL" to be extremely famous, very-extremely famous, as a trade and
service mark. Complainant did not
provide evidence of when in point of time the development of the fame was, with
respect to which product and service lines at the time of Respondent’s domain
name registration in issue, and at the
time of his commencement of use of it.
Even so, it seems clear from the evidence and from the fame of AOL that
is and was known two years ago to all people even peripherally involved in
computer oriented business or use, that AOL had become a famous mark before June
of 2000.
Respondent,
however, while talking extensively about his multi-media and hobby intentions
several years ago using various other marks, makes no allegation explicit to
actual use of <aolmtv.com> in commerce which can be lawfully
regulated by Congress at any time prior to June 2000. This June 2000 date is
clearly after the fame of AOL and its market-power had surely reached him as
well as me. The environment of this
dispute puts respondent in an environment where he should have denied knowledge
of AOL and MTV until after his registration of
<aolmtv.com> if he truthfully could have done so, but he
didn’t.
Of course, as a
matter of law preliminary plans, interests and hobbyist activities with marks
other than the one in issue, generates no rights in the planner/hobbyist until
he has commenced use of the specific terms in commerce or registered that
specific term somewhere.
So I find that
the ambiguity in the evidentiary details of which party was first by how much
in the actual use is not fatal to Complainant’s cause.
The unrebutted
evidence supplemented by extreme fame of which I can take judicial notice, is
convincing that AOL had become famous long before Respondent actually used the
mark in commerce, at all.
There is a
further interesting point: The domain name in issue is a composite of not just
one famous mark, AOL, but two of them, AOL and MTV. That composite was no accident of unwitting happening in the
absence of knowledge of either of those marks or their fame. Indeed respondent shows himself to be fairly
sophisticated in making profits out of his internet businesses under other trademarks back until l997. It is therefore difficult to imagine any
circumstance by which Respondent is not properly to be held to have had
knowledge of both AOL and MTV as marks with a good will that he wanted to use
to “ bless” his own activities in the market place, at the time of his
registration of the domain name. I have
not had cited to me, nor am I aware of, any authorities in rebuttal to the
quotes from Complainant’s brief which seem to fit this case so very closely.
The aolmtv
composite mark must be taken also in context that Respondent, though
effectively challenged to do so in the Complaint, did not deny in any explicit
sort of expression, full knowledge of the Complainant’s AOL mark and its fame
before he either commenced use or registered <aolmtv.com>.
And finally, included in the product/service lines recited in the AOL trademark
recitations which go back to l994 and l996 (dates before any dated mentioned by
Respondent for anything), are to be found many product/service activities,
including music and shopping services, the same service activities in the same
internet channels of trade as those covered by the AOL trademark registrations.
Wherefore, I
find as a fact that at the time of first registration or use by Respondent of
<aolmtv.com>, he was well
aware of prior extensive commercial uses and handsome quantities of good will
exemplified in AOL and MTV. The
performance of trademark searches and
rendering of opinions as to the availability of trademarks and/or domain names
is a major industry in the United States and elsewhere. Domain names, which
Respondent has many of, is a place where this activity is most famous.
I am compelled
to find that Respondent either knew or reasonably should have known not only of
the fame of the AOL trademark, but of Respondents legal rights in AOL
sufficient to induce him to ask a lawyer before plagiarizing that mark.
And I find as a
fact that he deliberately selected the composite of these two famous marks in
order to gain a public image benefit from the use of those famous marks.
This was a
legally improper competitive act.
Identical or Confusingly Similar Policy ¶4 (a)( i)
Without much redundancy of what I have
already written, let me now address briefly the style of findings that meet the
provisions of the Policy, starting with ¶4 (a) ( i ).
Yahoo! Inc. v. Zuccarini, D2000-0777 (WIPO Oct. 2, 2000) is an
interesting parallel to our present case. It seems fair to characterize it as
finding the registration and use of multiple domain names incorporating the
distinctive and famous YAHOO! Yahooligans!, and GeoCities marks, together with
generic words such as “chat” and “financial”, is confusingly similar to
Complainant’s marks and likely to mislead Internet users into believing that
products and services offered by Respondents were being sponsored or endorsed
by YAHOO! or GeoCities, given the
similarity of the names and products and services offered in the same channel
of trade, the Internet. See also Space Imaging LLC v. Brownwell, AF-1298 (eResolution Sept. 22, 2000) finding confusing similarity where the
Respondent’s domain name combines the Complainant’s mark with a generic term
that has an obvious relationship to the Complainant’s business; and Am. Online. Inc. v. iDomainNames.com, FA
93766 (Nat. Arb. Forum Mar. 24, 2000, finding that Respondent’s domain name
<go2AOL.com> was confusingly similar to Complainant’s AOL mark--these
being within the meaning of ¶4 (a) ( i ).
Here the added
three letters is MTV, itself a famous mark used in connection with music
services. If any person were to see a "Post/Kellogg's" bran flakes
box on a grocery shelf, or a
"FordBuick" brand automobile in an ad or on a dealers lot, there is
no escaping that (s)he would surely be confused into wondering whether Post and
Kellogg cereal companies had merged, or whether Ford had bought Buick from GM
like Chrysler bought Jeep and in turn Mercedes bought Chrysler, or whatever.
And a party searching for AOL, coming
upon <aolmtv.com> , a composite of two famous marks, is going to
come to the same uncertainty and confusion.
Respondent has
not explicitly and meaningfully addressed this issue; I have no authorities going his way to study and apply.
So, within the
concept of Policy ¶4(a) ( i ) and the established law and precedent, I find
that <aolmtv.com> (with or
without a “.com” added at the end) and
AOL and AOL.COM, are all confusingly similar to one another, particularly as
used in connection with some of the same or similar goods or services, and where both are used in the internet
channel of trade with some overlapping or competing goods/services.
As an aside, it
is also clear that Respondent's use would also dilute the distinctiveness and
value of the AOL mark to American Online.
This is a particularly relevant "dilution" under Policy 4 (a)
(ii) in light of one of Respondent's offerings being pornography which is of course
antithetical to the morally clean image AOL has clothed its mark with.
Rights and Legitimate Interests Policy ¶ 4 (a) (ii)
Complainant
asserts that Respondent has no rights or legitimate interests in respect of the
disputed domain name because Respondent is not named AOL or MTV or both and is
not known by those names. Nor is
Respondent licensed or authorized to use Complainant’s mark. Further Respondent
was not known by AOL or MTV or <aolmtv.com> at registration time.
Think in terms
of a person's choosing a domain name at registration time: that person has at
least 100,000 existing words and 1,000,000 newly crafted words or acronyms to
chose from for its trademark and for its domain name, words which do not
incorporate another person’s famous trademark in its entirety, nor dilute such
a mark’s distinctiveness or quality or wholesome public image. What is the
source of any rights the person might claim to have in the subject term(s)? Who
granted them on what criteria? I can’t
think of any. So how can we find
"legitimate interests" derived from the infringing use.
You see, when a
person
-
is not known by a certain term,
-
does not have a registration of it as a trademark,
-
has not by extensive use of the mark in commerce perfected secondary
(trademark) meaning in the term so as to
obtain common law trademark rights,
-
and somebody else does own the subject term or terms as their common law or
duly
registered trademark(s),
are not those
facts alone sufficient to support a conclusion that the person does not have
rights in that mark under Policy ¶4 (a) (ii) ?
I so find. See Galluop Inc. v. Amish Country Store, FA
96209 (Nat. Arb. Forum, Jan. 23, 2001 finding that a Respondent does not have
rights in a domain name pursuant to Policy ¶ 4 (a) (ii) when the Respondent is
not known by the mark.
At such time and
circumstance without a registration or being known by the subject term and the
term being a registered trademark, perhaps famous, does the person’s use of the disputed domain name constitute a
fair use and bona fide offering of goods or services pursuant to Policy ¶ 4 (c)
(iii).
To permit
that, to respond "yes", would
be to obliterate all of what trademarks are all about.
See Toronto-Dominion Bank v. Karpachev, 118
F.Supp.2d 110, finding that, because the Respondent's sole purpose in selecting
the domain names was to cause confusion with the Complainant's website and
marks, its use of the names was not in connection with the fair use offering of
goods or services under a proper trademark or domain name.
Here, I find
that there was no bona fide or good faith purpose in selecting a business name
inclusive of the famous acronym of AOL and then using the AOL in Respondent's
domain name, other than to benefit from
confusion thereby caused.
I find that the sole reason for that appropriation
of the AOL portion of its domain name, was the fame and good name of
Complainant's AOL mark, and that Respondent has no rights or legitimate
interests in respect of the domain name, within the meaning of ¶ 4 (a) (ii)..
Registration and Use in Bad Faith Policy ¶ 4 (a) (iii)
Complainant
asserts that
-
Respondent's registration of the <aolmtv.com> domain name reflects an attempt to create
the impression that Respondent’s website
is related to Complainant AOL;
- Addition of another well known acronym-mark
in the internet entertainment
industry such as MTV, creates a false
impression in the minds of Internet users
not
only not only as between Respondent and Complainant, but as between Complainant
and the third-party owner of MTV.
Precedents supportive
of these philosophies include Am. Online,
Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000), and Drs. Foster and Smith, Inc., v Lalli, FA
95284 (Nat. Arb. Forum, Aug. 21, 2000).
MatchNet plc v. Mac Trading, D2000-0205. (WIPO May 11, 2000) found
that the association of a confusingly similar domain name with a pornographic
website can constitute bad faith use. Respondent here has not presented any
reason why that concept should not be applied here.
A bad faith
practice appears also in the pattern of registering the domain at issue, as
well as the domain <mtvl.com>, which also routes to Respondent's
<shopon.net> site thereby infringing the MTV mark. Respondent has not rebutted an allegation
that Respondent has attempted to prevent Complainant from registering a domain
name reflecting Complainant's marks. See Armstrong
Holdings, Inc. v. JAZ Asso., FA 95234 (Nat. Arb. Forum Aug. 17, 2000); Am. Online, Inc., v. iDomainNames.comp,
FA 93766 (Nat. Arb. Forum Mar. 24, 2000) ;
Gen. Media Communications, Inc. v.
Vine Ent., FA 96554 (Nat. Arb. Forum Mar. 26, 2001) (finding bad faith
where a competitor of Complaint registered and used a domain name confusingly
similar to Complainant's PENTHOUSE mark to host a pornographic web site).
I find that
Respondent's domain name has been registered and is being used in bad faith,
within the meaning of Policy ¶4 (a) (iii).
Reverse Domain Name Hijacking. See Rule l
"Definitions"
Respondent
alleged "reverse domain name hijacking" by Complainant, that Complainant
is attempting to capitalize on Respondent's efforts to develop its e-commerce
business because it is making a profit, and this is an abuse of the UDRP
procedure.
See Koninklijke KPN N.V. v. Telepathy, Inc., D2001-0217
(WIPO May 7, 2001) (finding that to prevail on a claim of reverse domain name
hijacking, Respondent must show that
Complainant brought the claim in bad
faith
despite
the knowledge that Respondent
had
an unassailable right or legitimate interest
in
the disputed domain name, or
that
Respondent lacked the requisite bad faith registration
and
use of the disputed domain name.
I find that
Complainant brought its Complaint here in a good faith belief that its
Complaint was proper and in accord with law,
that Respondent had no just right to register or use the disputed domain
name, and should be ordered to transfer the disputed registration to Complainant.
Decision
I direct that
the domain registration of <aolmtv.com> be transferred to
Complainant.
Tom Arnold, sole panelist
June 23, 2002
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