America Online, Inc. v. Adrian Paul Miles
d/b/a AD2000D.com
Claim Number: FA0203000105890
PARTIES
The
Complainant is America Online, Inc.,
Dulles, VA (“Complainant”) represented by James
R. Davis, of Arent Fox Kintner
Plotkin & Kahn. The Respondent
is Adrian P. Miles d/b/a AD2000D.com, Wolverhampton WM, UK
(“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <aim5.com>,
<aolcybercafe.com>, <aolinternetcafe.com>, and <aolnetcafe.com>, registered with
BulkRegister.
PANEL
The
undersigned certify that they have acted independently and impartially and to
the best of their knowledge have no known conflict in serving as Panelists in
this proceeding.
M.
Scott Donahey, as Panelist.
Hon.
James A. Carmody, as Panelist.
Milton
Mueller, as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (“the Forum”)
electronically on March 14, 2002; the Forum received a hard copy of the
Complaint on March 15, 2002.
On
March 17, 2002, BulkRegister confirmed by e-mail to the Forum that the domain
names <aim5.com>, <aolcybercafe.com>, <aolinternetcafe.com>, and <aolnetcafe.com> are registered
with BulkRegister and that the Respondent is the current registrant of the
names. BulkRegister has verified that
Respondent is bound by the BulkRegister registration agreement and has thereby
agreed to resolve domain-name disputes brought by third parties in accordance
with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On
March 18, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of April 8,
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@aim5.com, postmaster@aolcybercafe.com, postmaster@aolinternetcafe.com,
and postmaster@aolnetcafe.com by e-mail.
A
timely Response was received and determined to be complete on April 29, 2002.
Respondent
submitted a timely additional submission pursuant to Forum Supplemental Rule 7
on May 3, 2002.
On May 20, 2002, pursuant to Complainant’s request to
have the dispute decided by a three-member
Panel, the Forum appointed M. Scott
Donahey, the Hon. James A. Carmody, and Milton Mueller as Panelists.
RELIEF SOUGHT
Complainant
requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant
contends that the domain names at issue are confusingly similar to
Complainant's trademarks, that Respondent has no right or legitimate interests
in respect of the domain names at issue, and that Respondent has registered and
is using the domain names at issue in bad faith.
B.
Respondent
Respondent
effectively admits the allegations as to all domain names except <aim5.com>. As to that domain name, Respondent contends
that the domain name is not confusingly similar to Complainant's mark, that
Respondent has rights or interests in respect of the domain name at issue, and
that Respondent has registered and is using the domain name at issue in good
faith.
C.
Additional Submissions
Respondent
has submitted a Supplemental Response pursuant to NAF Supplemental Rule 7 that
provides in pertinent part as follows:
a.
A party may
submit additional written statements and documents to the Forum and the
opposing party(s) within five (5) calendar days after the date the Response was
submitted or the last date the Response was due to be submitted to the Forum,
whichever occurs first.
b.
Each
submission must
i.
be timely
received by the Forum;
ii.
be
accompanied by an additional submission fee of $250;
iii.
include
proof of service of these submissions upon the opposing party(s);
iv.
be
submitted in either hard copy or electronic form.
Some
decisions have apparently held that such submissions become part of the record
and must be considered by the
Panel. See, e.g., The Prudential Insurance Company of America v. Rich Arzaga
Marketing Company, FA 106104 (Nat. Arb. Forum May 13, 2002). However, the Panel believes that
Supplemental Rule 7 is inconsistent with the Policy, that it goes beyond what
has been mandated and defined in the Policy, and that no provider can encroach
upon the broad discretion given to the Panel by the Policy and the Uniform
Rules.
Rule
1 of the Uniform Rules, adopted by all of the registrars of names within the
generic Top Level Domains (gTLDs) and included in every registration agreement,
provides the definition of "Supplemental Rules." "Supplemental Rules means the rules
adopted by the provider administering a proceeding to supplement these Rules. Supplemental
Rules shall not be inconsistent with the Policy or these Rules and shall
cover such topics as fees, word and page limits and guidelines, the means for
communicating with the Provider and the Panel, and the form of cover
sheets." The matters to be
governed by the Supplemental Rules are ministerial in nature. Nowhere in the definition is a provision for
permitting additional pleadings to be filed upon a payment to the provider.
The
Panel is directed to conduct the proceeding "in accordance with the Policy and these [Uniform] Rules." Uniform Rules, Rule 10(a). The Uniform Rules provide only for the
filing of a Complaint and a Response.
Uniform Rules, Rules 3 and 5.
Regarding further written statements, the Uniform Rules could not be
more clear: "In addition to the
complaint and the response, the Panel
may request, in its sole discretion, further statements or documents from
either of the Parties." The
Panel is to decide the submitted cases "on the basis of the statements and
documents submitted and in accordance
with the Policy, these [Uniform] Rules and any rules and principles of law that
it deems applicable." Uniform
Rules, Rule 15(a).
The
Uniform Rules contemplate an expeditious procedure and impose on the Panel
duties to see that this is achieved.
"The Panel shall ensure that the administrative proceeding takes place
with due expedition." Uniform
Rules, Rule 10(c). "In the absence
of exceptional circumstances, the panel shall forward its decision on the
complaint to the Provider within fourteen (14) days of its appointment . . .
." Uniform Rules, Rule 15(b). Every lawyer wants the last word. If a lawyer could pay to get the last word,
he or she would gladly do so. But such
a procedure is clearly contrary to the expedition contemplated under the
Uniform Rules.
The
Supplemental Rules were never intended to provide a vehicle for permitting
additional pleadings or for circumventing the discretion vested in the
Panel. The Panel has an affirmative
duty to see that it exercises its unfettered discretion in calling for additional
submissions and to insure that the matter proceeds expeditiously. No Supplemental Rule can override this
discretion and obligation. Accordingly,
the Panel will not accept the Respondent's additional Response, for which no
permission was sought from the Panel.
FINDINGS
The Panel makes the following findings.
Complainant registered the mark AIM in
conjunction with multiple user access to computer networks for the transfer and
dissemination of information with the United States Patent and Trademark Office
("USPTO"), by application dated February 15, 2000, which registration
issued on January 23, 2001. Complaint,
Annex B. AIM is an acronym for AOL
Instant Messenger. Complaint, Annex
E. The name was first used in commerce
in April 1997.
Complainant has invested substantial sums
in the promotion and advertisement of its AIM mark. Sales of services under Complainant's various AOL and AIM marks
have been in the billions of dollars.
Respondent registered the domain name
<aim5.com> on June 17, 2000, more than three years after the first
use in commerce. The domain name which
remains at issue resolves to a website that features prominently Complainant's
trademarks and that sells advertising.
Complaint Annex F.
Complainant and Respondent had a dispute
over domain names previously registered by Respondent. On February 9, 2002, Complainant sent
Respondent a cease and desist letter concerning the allegedly infringing
names. Complaint, Exhibit G. That dispute was eventually resolved. By
email dated March 9, 2002, Respondent offered to sell the domain name still at
issue for $5,000.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a
complaint on the basis of the statements and documents submitted in accordance
with the Policy, these Rules and any rules and principles of law that it deems
applicable.”
Paragraph
4(a) of the Policy requires that the Complainant must prove each of the
following three elements to obtain an order that a domain name should be cancelled
or transferred:
(1)
the domain name registered by the Respondent is identical or confusingly
similar to a trademark or service mark in which the Complainant has rights;
(2)
the Respondent has no rights or legitimate interests in respect of the domain
name; and
(3)
the domain name has been registered and is being used in bad faith.
Identical and/or Confusingly Similar
The Panel finds that the sole domain name
at issue is confusingly similar to Complainant's mark. See,
American Online Inc. v. Chinese ICQ Network, D2000-0808 (WIPO Aug. 31,
2000) (addition of numeral "4" to ICQ mark in <4icq.com> does
not defeat a finding of confusing similarity).
The mere fact that the domain name string AIM5 includes a trademarked
acronym is not, in the Panel's opinion, sufficient to establish confusing
similarity. "AIM" is both a
widely used acronym and a common English word that appears in more than 200
U.S. trademark registrations and applications.
There are hundreds of conceivable uses of the domain name that would not
be confusingly similar to the AOL mark.
Rather, it is the particular use to which the Respondent put the name
that makes the domain name confusingly similar to the Complainant's mark. Specifically, Respondent's website refers to
AOL's Instant Messenger and incorporates the visual symbols of AIM in ways that
are likely to mislead a casual observer.
The Respondent has explicitly indicated his intention to target AIM
users with his website. Respondent has
also registered <aol.instantmessenger.name>, indicating clearly his
intent to link his web-based activity to the Complainant's product. Under these conditions, the domain name <aim5.com>
as registered and used by this particular Respondent can be considered
confusingly similar to Complainant's trademark.
Rights or Legitimate Interests
The Panel finds that Respondent is using
the domain name at issue to resolve to a website at which Complainant's marks
are prominently displayed. America Online, Inc. v. Fu, D2000-1374
(WIPO Dec. 11, 2000). Thus, the Panel
finds that Respondent has no rights or legitimate interests in respect of the
domain name remaining at issue.
Registration and Use in Bad Faith
Respondent is using the domain name at
issue to resolve to a website at which Complainant's trademarks and logos are
prominently displayed. Respondent has
done this with full knowledge of Complainant's business and trademarks. The Panel finds that this conduct is that
which is prohibited by Paragraph 4(b)(iv) of the Policy. Busy
Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2001). The Panel also finds that Respondent's offer
to sell the domain name remaining at issue for US $5,000 is conduct that
demonstrates bad faith registration and use under Paragraph 4(b)(i) of the
Policy.
DECISION
For all the foregoing reasons, the Panel
finds that in accordance with Paragraph 4(i) of the Policy the domain names
<aim5.com>, <aolcybercafe.com>, <aolinternetcafe.com>,
and <aolnetcafe.com> shall be transferred to the Complainant.
M. Scott Donahey,
Presiding Panelist
Hon. James A. Carmody Milton
Mueller
Dated: May 31, 2002
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