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 email@example.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.
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
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 (firstname.lastname@example.org which email@example.com 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 (firstname.lastname@example.org)
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.]
" 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: ]
* * *
" 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. ]
* * *
" 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
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.
I direct that the domain registration of <aolmtv.com> be transferred to Complainant.
Tom Arnold, sole panelist
June 23, 2002
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