AOL LLC v. Joe DiMarco
Claim Number: FA0907001275978
Complainant is AOL LLC (“Complainant”), represented by James
R. Davis, of Arent Fox LLP,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <autoblogreviews.com>, <autoblogreviews.net>, <autoblogreviews.org>, and <autoblogreviews.info>, registered with Godaddy.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Paul M. DeCicco as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 28, 2009; the National Arbitration Forum received a hard copy of the Complaint on July 30, 2009.
On July 28, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <autoblogreviews.com>, <autoblogreviews.net>, <autoblogreviews.org>, and <autoblogreviews.info> domain names are registered with Godaddy.com, Inc. and that the Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 31, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 20, 2009 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to email@example.com, firstname.lastname@example.org, email@example.com, and firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on August 18, 2009.
Complainant’s Additional Submission was received in a timely manner pursuant to Supplemental Rule #7, on August 24, 2009
On August 26, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
Complainant contents in part as follows:
Complainant AOL owns the marks AUTOBLOG and AUTOBLOG GREEN and uses such marks in connection with, among other things, providing services and information via the Internet at www.AutoBlog.com and www.AutoBlogGreen.com.
AOL and its predecessor-in-interest have used the AUTOBLOG mark continuously and extensively since at least as early as 2004 in connection with providing services and information via the Internet. One UDRP panel has found that AOL has established common law rights in AUTOBLOG.
The mark AUTOBLOG is used extensively at as part of a Complainant owned website, which is a significant method of promoting Complainant’s services. As a result, consumers associate the mark AUTOBLOG, when used in a domain name, with Complainant and its services.
Since at least 2006, AOL and its predecessor-in-interest have owned and used “AutoBlogGreen.com” with a Web site dedicated to environmental issues affecting the car and vehicle industry.
AOL has used its AUTOBLOG mark continuously and extensively in interstate commerce in connection with the advertising and sale of its Internet-based services. AOL has invested significant amounts of money and resources to develop and market the AUTOBLOG service and Web sites. As a result, the AUTOBLOG Web site is readily identified by consumers as a leading source of industry information.
The AUTOBLOG brand is an important component of AOL’s online suite of services.
Because of AOL’s substantial advertising and promotional activities, the AUTOBLOG mark has become very well-known among members of the purchasing public.
Approximately four years after the AUTOBLOG service was launched, and more than three years after AOL’s highly-publicized acquisition of Weblogs, Respondent registered the infringing domain names “AutoBlogReviews.com” “AutoBlogReviews.net” “AutoBlogReviews.org” and “AutoBlogReviews.info” with a bad faith intent to profit from the goodwill that AOL had created in the AUTOBLOG brand and Web presences at “AutoBlog.com” and “AutoBlogGreen.com.”
The AUTOBLOGREVIEWS domain names at issue in this UDRP are nearly identical to AOL’s marks AUTOBLOG and AUTOBLOGGREEN and domain names “AutoBlog.com” and “AutoBlogGreen.com.” The likelihood of consumer confusion is enhanced in this case because Respondent’s domain names add only the generic word “reviews” to AOL’s AUTOBLOG trademark. AOL provides reviews and other commentary at its AUTOBLOG sites. Consumers therefore are likely to be confused into believing that a domain name comprised of AUTOBLOG and reviews is affiliated with, endorsed or operated by AOL.
Respondent registered and is using the at-issue domain names with a bad faith intent to capitalize on AOL’s AUTOBLOG mark, and profit from the traffic that Respondent gets when consumers unwittingly visit Respondent’s Web sites while attempting to visit AUTOBLOG sites operated by AOL.
Respondent has no rights or legitimate interests in the at-issue domain names. Respondent is not named or commonly known as AutoBlog or AutoBlogReviews, nor is Respondent licensed or authorized to use AOL’s AUTOBLOG mark.
Respondent’s bad faith registration of the disputed domain name is evidenced by the fact that Respondent registered the infringing domain names in November 2008, several years after AOL and its predecessor-in-interest began using AUTOBLOG and creating substantial goodwill in that mark. Moreover, Respondent would have been aware of AOL’s very popular AUTOBLOG Web site when he registered the infringing domain names.
Respondent’s bad faith use of the domain names is shown by Respondent’s commercial Web sites. At his “AutoBlogReviews.com” Web site, Respondent provides the same types of information and services that AOL provides at its AUTOBLOG sites. Respondent is using the other three infringing domain names to route to pay-per-click Web sites that provide links to various third party companies and sites.
Respondent’s counsel offered to sell the four infringing domain names to AOL for $2,000 each, or a total of $8,000. This is clearly well in excess of Respondent’s actual out-of-pocket registration fees for the domain names, which probably totaled $40. Respondent’s offer is even more egregious given that it was made in May 2009, fewer than seven months after Respondent registered the domain names. AOL rejected this bad faith offer and counsel responded with an offer of $2,800 for all four domain names. These unsolicited offers to sell $10 domain names to AOL for thousands of dollars a few months after their registration is further evidence of Respondent’s bad faith intent to profit from the domain names and his lack of legitimate rights to the domain, in violation of Para. 4(b)(i) of the UDRP.
Based upon (1) AOL’s prior high-profile use and ownership of the AUTOBLOG and AUTOBLOGGREEN trademarks and Web sites; (2) Respondent’s commercial Web site; and (3) Respondent’s offer to sell the domain names to AOL for thousands of dollars; Respondent cannot in good faith claim that he had no knowledge of AOL’s AUTOBLOG mark, service or Web site. Furthermore, Respondent cannot claim in good faith that he made a legitimate noncommercial or fair use of the subject domain name, or that he is commonly known as AUTOBLOG or AUTOBLOG reviews.
Respondent contents in part as follows:
Complainant AOL LLC (“AOL”) does not own (or appear to have applied for) any federal trademark registration for the AUTOBLOG mark (also referred to as “MARK”). This is due to the generic nature of the Mark. The AUTOBLOG mark is not distinct, and is instead generic or, at best descriptive. The AUTOBLOG mark contains two common words, “auto” and “blog.” The terms are commonly used, as evidenced by the almost 70 million Google hits for “auto blog.” The phrase “auto blog” is also used in a non-trademark manner in numerous third party websites. For example, the phrase “Auto Blog News” is featured at AUTOBLOGNEWS.COM as an automotive blog. Similarly, the phrase “Rocket Punch Auto Blog” is featured at ROCKETPUNCHAUTOBLOG.COM, another auto blog. The phrase “Bush’s Auto Blog” is also featured at BUSHAUTOBLOG.COM to provide “daily car news and reviews.” These are just a few of many examples of similar uses of the Mark. There is also a commercially available browser plug-in called “AUTOBLOG,” which is available at AUTOBLOGGED.COM. The Mark is clearly generic and is used extensively by third parties. As such, it is entitled to little, if any, protection. The generic nature of the Mark, in conjunction with the extensive third party usage of the Mark, contradicts AOL’s claim that it owns exclusive, protectable rights in the Mark, or that the Mark is famous, or that the Mark functions as a source identifier for AOL’s products or services.
Respondent created and published
Web Site without the prior knowledge of or, having viewed Complainant’s Web
Site. Respondent, via counsel, immediately and in good faith, upon receiving
AOL’s counsel’s first demand letter, offered to place disclaimers on every page
of Respondent’s Web Site. This offer was never acknowledged or responded to by
Respondent utilized GoDaddy’s “Smart Search” domain name generator (as instructed by GoDaddy) by inputting a serious of descriptive, plain, common, English words with respect to the subject matter at hand such as; automobiles, reviews, blogs, cars, races, auctions, etc. Respondent’s use of “Auto,” “Blogs,” and “Reviews” in no way constitutes infringement on Complainant, just as Hemmings Auto Blog or India Auto Blog do not
Respondent was not aware of the AUTOBLOG Web Site at the time of
registration with GoDaddy.com. Various
combinations of the generic terms “Auto,” “Blog,” “Reviews” “Car,” etc., are so
pervasive and totally unremarkable that Complainant knew that Web sites with
similar names already existed, and future sites would continue to populate the
Web, given the plain English use of the words in any number of combinations.
Respondent has not willingly or, in bad faith, produced or caused to be produced PPC parking pages for .net, .org or, .info with links to websites selling products. These are default pages and ads are produced by GoDaddy and are the default agreed upon by customers of GoDaddy upon registering a domain name(s).
Respondent instructed counsel to offer the domain names for sale to Complainant and to seek compensation for monies and time spent on registration, travel, event ticket and entrance fees, many hours of content development and editing and goodwill associated with the Web Site, as well as, the cost of registering a new domain names. This amount was allocated over the four domain names registered to Respondent ($2,000/name) versus assigning the entire value to the .com name which, in fact, is the only site that Respondent has invested time, effort and monies into. Respondent could have just as well offered the .com site for $7,997 and $1 each for the .org, .net and .info names. While offers to sell a contested domain name may in certain circumstances be probative evidence of bad faith, such an offer coming from an attorney in the context of settlement negotiations is not.
The gross number of hits on Respondent’s site, (828), in no way represents a threat to Complainant’s websites. Respondent claims legitimate, non-commercial use of the properly registered domain name AUTOBLOGREVIEWS and Respondent had not in the past, nor has any intentions in the future, to claim to be known as “AUTOBLOG” or “AUTOBLOG reviews.” Respondent has repeatedly, in good faith, offered to place disclaimers on Respondent’s Web Site to alleviate Complainant’s concerns.
B. Additional Submissions
Complainant in its Additional Submission contends in part as follows:
Respondent’s Web sites incorporate numerous third party advertisements and links. Moreover, Respondent contradicts his own claims by admitting that he registered multiple domain names to (a) keep his competition from registering them, (b) drive more traffic to his sites, (c) enjoy more opportunities to market - and be listed in - search engines, (d) create distinct advertising strategies to reach different target markets, etc.
AOL requests the panelist to disregard Respondent’s claim that his site is non-commercial and, therefore, not in violation of the UDRP rules.
GoDaddy's automated system does not discriminate between infringing and non-infringing domain names and it is disingenuous to feign ignorance of this fact. GoDaddy's system adds prefixes and suffixes to a proposed domain name.
Respondent therefore cannot claim that the subject domain names do not violate AOL's trademark rights, or acted in good faith, merely because the domain names allegedly were recommended by GoDaddy's automated system.
Respondent does not deny that he offered to sell the infringing domain names to AOL for $8,000 and then $2,800. Rather, he claims the $2,800 offer was an estimate of actual expenses related to the domain names (he does not clarify why he initially sought $8,000).
Exhibits show that Respondent is trying to get AOL to reimburse him for attendance at car shows and auctions. The types of expenses are unrelated to his registration of the disputed domain names. Even if the panelist were to accept these receipts as evidence of his relevant costs, they do not come close to the $8,000 that Respondent originally requested.
Complainant fails to demonstrate trademark rights in the descriptive mark AUTOBLOG or the descriptive mark AUTOBLOGGREEN.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant claims common law trademark rights in AUTOBLOG, a descriptive mark. In a peripheral manner it also claims rights in AUTOBLOGGREEN, although it is unclear whether or not the Complaint is also based on the AUTOBLOGGREEN mark. For the purpose of the Panel’s analysis we address only AUTOBLOG as AUTOBLOGGREEN is nearly identical, adding one additional descriptive word to the primary mark and such word is not contained in the domain name. Therefore, what is discussed below with regard to AUTOBLOG likewise holds for AUTOBLOGGREEN.
The AUTOBLOG mark is not registered, nor does the record show that Complainant has attempted to register the mark federally or otherwise. A party claiming trademark rights in a generic or descriptive mark must show that such mark has acquired secondary meaning through use. “Secondary meaning" is acquired when "in the minds of the public, the primary significance of a product feature . . . is to identify the source of the product rather than the product itself." Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 163 (U.S. 1995) In its papers, Complainant presents only “bare bones” assertions to show that the public identifies the AUTOBLOG mark with the source of Complainant’s services rather than as merely a phrase describing those services. Therefore, as discussed below, the record does not support a finding that Complainant has rights in AUTOBLOG pursuant to Policy 4(a)(i) and accordingly relief must be denied.
In determining whether or not a mark has acquired secondary meaning, tribunals consider several factors. Direct evidence of secondary meaning includes: (a) direct consumer testimony; and (b) consumer surveys. Circumstantial evidence of secondary meaning includes: (c) exclusivity, length, and manner of use; (d) amount and manner of advertising; (e) amount of sales and number of customers; (f) established place in the market; and (g) proof of intentional copying. See Echo Travel, Inc. v. Travel Associates, Inc., 870 F.2d 1264, 1267 (7th Cir. Wis. 1989) citing Vaughan Manufacturing Co. v. Brikam International, Inc., 814 F.2d 346, 349 (7th Cir. 1987); Gimix, Inc. v. JS & A Group, Inc., 699 F.2d 901, 907 (7th Cir. 1983); Union Carbide Corp. v. Ever-Ready Inc., 531 F.2d 366, 380 (7th Cir. 1976); American Scientific Chemical, Inc. v. American Hospital Supply Corp., 690 F.2d 791, 793 (9th Cir. 1982); see also McCarthy §§ 15:9-15:20.
The factors considered … [in] determining whether a mark has acquired secondary meaning include: "(1) whether actual purchasers of the product bearing the claimed trademark associate the trademark with the producer, (2) the degree and manner of advertising under the claimed trademark, (3) the length and manner of use of the claimed trademark, (4) whether use of the claimed trademark has been exclusive," Levi Strauss & Co. v. Blue Bell, Inc., 778 F.2d 1352, 1357, 228 U.S.P.Q. (BNA) 346, 350 (9th Cir. 1985) (en banc), (5) whether defendant engaged in "exact copying" of plaintiff's purported mark, see Committee for Idaho's High Desert, Inc. v. Yost, 92 F.3d 814, 822, 39 U.S.P.Q.2D (BNA) 1705, 1711 (9th Cir. 1996), and (6) whether defendant's use of the purported mark has led to actual [*14] consumer confusion, see Adray v. Adry-Mart, Inc., 76 F.3d 984, 987, 37 U.S.P.Q.2D (BNA) 1872, 1875 (9th Cir. 1995).
Riggs Mktg., Inc. v. Mitchell,
UDRP panels have likewise urged that particular evidence rather than mere conclusory allegations is required to show that an otherwise generic or descriptive mark has acquired distinctiveness and is a trademark for the purposes of Policy 4(a)(i). See Occidental Hoteles Mgmt., S.A., & Corictal II, S.A. v. Hargrave Arts, LLC, FA 959645 (Nat. Arb. Forum May 21, 2007) (finding that the complainant did not submit sufficient evidence showing that its OCCIDENTAL mark had acquired the necessary secondary meaning for it to establish common law rights pursuant to UDRP ¶ 4(a)(i); see also Telecom Italia S.p.A. v. NetGears LLC, FA 944807 (Nat. Arb. Forum May 16, 2007) (finding that when a disputed domain name, such as <187.com>, is made up entirely of generic or common terms, “good evidence will be needed to show a significant secondary meaning and, above all, one associated with Complainant.”).
Therefore, it is Complainant’s burden to not only plead, but also prove that that its descriptive mark has acquired distinctiveness and thereby is a protectable trademark under Policy ¶4(c)(i). There is no presumption in Complainant’s favor. Complainant must prove the status of its mark via competent evidence, not by conjecture or innuendo. Furthermore, the degree of burden to prove that a mark has acquired distinctiveness should not be attenuated because of the abbreviated nature of the instant proceeding. Nor should it be increased. To do either would indicate an arbitrary predisposition in favor the benefited party’s alignment. Expedience should not be served at the cost of fairness. There is no authority that the Panel is aware of that stands for the proposition that sufficient evidence of secondary meaning requires either volumes or even pages to present. But to the extent that it does in particular cases, the requirement is independent of the nature of the proceedings or forum.
In the instant case, Complaint
alleges by way of the body of its Complaint that the AUTOBLOG mark has acquired
secondary meaning because the mark has been used continuously and extensively
since 2004 or before in connection with providing services and information via
the Internet. Complainant claims the
mark is used to advertise and promote its AUTOBLOG service and is used in
conjunction with an array of Complainant sponsored websites. Complainant further alleges that it has
invested significant sums of money and resources to develop, advertise, and
market the services and websites. Complainant also presents a smattering of
press clippings that reference AUTOBLOG in a trade name sense rather than in a
descriptive sense. Given these alleged facts, Complainant concludes that it
follows that consumers readily identify AUTOBLOG as a leading source of
industry information. But these contentions and clippings shine little light on
whether or not "in the minds of the public, the primary significance of a
product feature . . . is to identify the source of the product rather than the
Importantly, Complainant proffers no direct evidence, such as consumer testimony or consumer surveys, showing that AUTOBLOG has acquired secondary meaning. There is neither a shred of evidence of actual consumer confusion nor any evidence that consumers identify AUTOBLOGS as a source of information rather than merely a description of a type of information.
While advertising amount and manner may suggest secondary meaning, evidence of the actual advertising amount and manner of advertising promoting the AUTOBLOG mark is not offered outside of the conclusory statements presented in the body of the Complaint. Absent are Complainant’s declarations from its marketing management or other knowledgeable person supporting the raw advertising claims made in the Complaint. Also absent is any documentation of the amount, extent and kind of advertising.
As noted above, Complainant offers the AUTOBLOG mark’s continuous use in support of secondary meaning. It is axiomatic that the mere continued use of a descriptive mark cannot, in and of itself, demonstrate that such mark has acquired distinctiveness or secondary meaning. Moreover, the AUTOBLOG mark was used for only a relatively short time (4 years) before Respondent registered the at-issue domain names.
There is only trace circumstantial evidence tending to prove that Respondent intentionally “copied” Complainant’s mark in its domain name. Respondent’s explanation of how and why he came to pick and register the at-issue domain names is far more plausible than Complainant’s demonizing account that characterizes Respondent, a full time college student, as one willing and wanton to capitalize on Complainant AOL’s goodwill. Since it does not appear that Respondent set out to copy Complainant’s claimed mark, “copying” is not a factor favoring a finding of secondary meaning.
Furthermore, Complainant is not the exclusive user of the AUTOBLOG mark. Many others appear to be using the mark in a descriptive manner. The lack of exclusivity cuts against finding secondary meaning. Similarly, the articles (clippings) presented by Complainant reference the AUTOBLOG mark only in a nominal sense doing little to suggest secondary meaning.
As additional support to establish that it has trademark rights in the AUTOBLOG mark, Complainant cites a prior UDRP decision wherein the panel found the very same AUTOBLOG mark to have acquired secondary meaning. see AOL LLC v. Andy Balasis, FA0905001261562 (Nat. Arb. Forum, June 22, 2009). As a general matter a panel is not strictly bound by a prior panel’s legal or factual findings. The full record leading to the Balasis decision is not before the Panel. Indeed, it would be unfair to impose a collateral finding upon Respondent based upon the finding in Balais, a case in which Respondent was not a party and where Complainant’s claims were unopposed.
Complainant is legally sophisticated and with substantial resources. There is no obvious reason that can be gleaned from the record, or otherwise, explaining why Complainant apparently has not sought and does not seek federal registration for the AUTOBLOG mark. Notably, evidence of a valid trademark registration generally avoids the necessity to prove-up secondary meaning within a UDRP proceeding since rights are presumed, although rebuttable. See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive and that a respondent has the burden of refuting this assumption).
The burden required to prove that a complainant has trademark rights in a domain name under Policy 4(a)(i) is not trivial since in effect such rights predicate a complainant’s ability to bring an action under the UDRP. Choosing a descriptive mark and choosing not to seek registration of such mark increases Complainant’s burden to demonstrate that its descriptive mark had acquired protectable trademark rights. For the reasons discussed herein Complainant fails to establish rights in the AUTOBLOG mark as required under Policy 4(a)(i). The foregoing discussion is not to say that Complainant might not have produced compelling evidence of secondary meaning and thereby trademark rights in AUTOBLOG had it properly endeavored to, only that it did not do so here.
Because Complainant has not established rights in the AUTOBLOG mark, we need not analyze the other two elements of the Policy. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the UDRP, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of UDRP ¶ 4(a)(i)).
Having failed to establish rights under the ICANN Policy 4(a)(1), the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <autoblogreviews.com>, <autoblogreviews.net>, <autoblogreviews.org>, and <autoblogreviews.info> domain names remain with Respondent.
Paul M. DeCicco, Panelist
Dated: September 9, 2009
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National Arbitration Forum