START-UP TRADEMARK OPPOSITION POLICY
America Online, Inc. v. N/A a/k/a Matthew Prince
Claim Number: FA0204000110800
The Complainant is America Online, Inc., Dulles, VA (“Complainant”) represented by James R. Davis, of Arent Fox Kintner Plotkin & Kahn. The Respondent is N/A a/k/a Matthew Prince, Mitcham, AUSTRALIA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <aol.biz>, registered with Blueberry Hill Communications, Inc.
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.
Honorable Paul A. Dorf, (Ret.) as Panelist.
Complainant has standing to file a Start-up Trademark Opposition Policy (“STOP”) Complaint, as it timely filed the required Intellectual Property (IP) Claim Form with the Registry Operator, NeuLevel. As an IP Claimant, Complainant timely noted its intent to file a STOP Complaint against Respondent with the Registry Operator, NeuLevel and with the National Arbitration Forum (the “Forum”).
Complainant submitted a Complaint to the Forum electronically on April 23, 2002; the Forum received a hard copy of the Complaint on April 25, 2002.
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 in compliance with paragraph 2(a) of the Rules for the Start-up Trademark Opposition Policy (the “STOP Rules”).
A timely Response was received and determined to be complete on May 6, 2002.
On May 23, 2002, pursuant to STOP Rule 6(b), the Forum appointed Honorable Paul A. Dorf, (Ret.) as the single Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
The Complainant contends that the domain name at issue is identical to the Complainant’s trademark; that the Respondent has no legitimate or good faith basis on which to claim rights to the Claimant’s mark; and that the Respondent registered the domain name at issue in a bad faith attempt to play off the fame of that mark and confuse consumers into believing falsely that Respondent is endorsed by or affiliated with Complainant or it’s service.
The Respondent contends that no disagreement exists that the domain name at issue is identical to the Complainant’s trademark; however states that the domain name at issue reflects the acronym for Respondent’s business - Australian Organisational Leverage - and had been operating the business well before the domain name at issue was registered, and that it was not registered in bad faith as it was not Respondent’s contention to prevent Complainant from using its mark in the domain name at issue, as Complainant is not a massive or prolific company in Australia, and that the Respondent was not interested in selling, renting or otherwise transferring the domain name to the Complainant or any of its competitors for any consideration.
The Complainant is the owner of the mark AOL, and owns numerous trademark registrations worldwide for the mark including U.S. and Australian registrations. This mark was first used in commerce in October, 1992, and the trademark applications were filed in October, 1994. Additionally, Complainant holds a U.S. federal trademark registration for the AOL.COM mark, which was filed in April, 1998. The Complainant has invested substantial amounts of money developing and marketing its services. Due to these substantial expenditures, the Complainant’s mark has become well known in the consumer market.
The Respondent registered the domain name at issue on March 27, 2002. Respondent’s business plan states that the business began operation in February 2002. The founder, Matthew Prince, claims to work for a former online marketer of businesses and organizations. The Respondent’s services include business and market development, expense reduction, profit-center exploiting, training and business to business training. The Respondent’s sales strategy as stated in the business plan, involves using the internet extensively to market its services, to include the registration of generic, dictionary and other .biz domain names to be used to target specific industries.
Paragraph 15(a) of the STOP 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 STOP Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be transferred:
(1) the domain name is identical to a trademark or service mark in which the Complainant has rights; and
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Due to the common authority of the ICANN policy governing both the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and these STOP proceedings, the Panel will exercise its discretion to rely on relevant UDRP precedent where applicable.
Under the STOP proceedings, a STOP Complaint may only be filed when the domain name in dispute is identical to a trademark or service mark for which a Complainant has registered an Intellectual Property (IP) claim form. Therefore, every STOP proceeding necessarily involves a disputed domain name that is identical to a trademark or service mark in which a Complainant asserts rights. The existence of the “.biz” generic top-level domain (gTLD) in the disputed domain name is not a factor for purposes of determining that a disputed domain name is not identical to the mark in which the Complainant asserts rights.
Complainant’s Rights in the Mark
Complainant has established rights in the AOL Mark through continuous use of the mark, as well as the registration of the mark in the U.S. and throughout the world. Complainant also owns a U.S. trademark registration for the AOL.COM mark, which is used in connection with the Complainant’s Internet website.
The Respondent does not disagree that the domain name at issue is identical to the Complainant’s famous mark.
Rights or Legitimate Interests
The Complainant is known world-wide by its famous mark. Respondent should have constructive knowledge of Complainant’s existence. See Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the world-wide prominence of the mark and thus Respondent registered the domain name in bad faith); see also Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one “would be hard pressed to find a person who may show a right or legitimate interest” in a domain name containing Complainant's distinct and famous NIKE trademark).
Further, registering and attempting to use the domain name at issue demonstrates the Respondent’s attempt to take advantage of and trade on the goodwill and fame of Complainant’s famous marks, with little regard for principals or consequences See America Online, Inc. v. Cucamonga Elec. Corp., FA 103364 (Nat. Arb. Forum Feb. 26, 2002) (“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 to mislead Internet users into thinking that whatever activities are carried on on the site, AOL Inc. has some connection with them”).
Also, Respondent has failed to provide sufficient proof of its alleged business venture. See Gene Logic Inc. v. Bock, FA 103042 (Nat. Arb. Forum Mar. 4, 2002) (finding that in order to show rights or legitimate interests in the disputed domain name Respondent must establish with valid evidence “a course of business under the name, or at least significant preparation for use of the name prior to learning of the possibility of a conflict” with an IP Claimant); see also Twentieth Century Fox Film Corp. v. Benstein, FA 102962 (Nat. Arb. Forum Feb. 27, 2002) (finding the Respondent’s assertion that she registered the domain name <foxstudios.biz> in order to get a website address for her planned dance studios, without evidentiary support, was insufficient to establish that she had rights or interests in respect to the domain name at issue).
Registration or Use in Bad Faith
Respondent registered the domain name at issue attempting to benefit from the goodwill and fame associated with Complainant’s famous marks. Use of the domain name at issue by Respondent appears to be a deliberate attempt to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source of the website. See Red Bull GmbH v. Gutch, D2000-0766 (WIPO Sept. 21, 2000) (finding that Respondent’s expected use of the domain name <redbull.org> would lead people to believe that the domain name was connected with Complainant, and thus is the equivalent to bad faith use); see also Fluor Corp. v. Song, FA 102757 (Nat. Arb. Forum Jan. 31, 2002) (finding that, where the Respondent’s <fluor.biz> domain name was identical to the Complainant’s FLUOR mark, Internet users would likely believe an affiliation between the Respondent and Complainant).
The Respondent’s registration of the domain name at issue has prevented Complainant from reflecting its mark in a corresponding domain name. See Toyota Jidosha Kabushiki Kaisha v. S&S Enter. Ltd., D2000-0802 (WIPO Sept. 9, 2000) (finding that “Registration of a domain name goes further than merely correctly using in an advertisement the trade mark of another in connection with that other’s goods or services: it prevents the trade mark owner from reflecting that mark in a corresponding domain name”); see also Peachtree Software v. Scarponi, FA 102781 (Nat. Arb. Forum Jan. 23, 2002) (finding bad faith under STOP Policy ¶ 4(b)(ii), noting that it was reasonable to conclude Respondent registered <peachtree.biz> with the intent to prevent Complainant from reflecting its PEACHTREE mark in a corresponding domain name, given Respondent's knowledge of Complainant's mark and Respondent's lack of rights or interests in the mark).
Having established all three elements required under the Start-up Trademark Opposition Policy, this Panelist concludes that the relief shall be granted.
Therefore, it is Ordered that <AOL.BIZ> be transferred from Respondent to Complainant and subsequent challenges under the STOP Policy against this domain name shall not be permitted.
A. Dorf (Ret.), Panelist
Dated: June 6, 2002
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