DECISION

 

America Online, Inc. v. Anytime Online Traffic School

Claim Number: FA0302000146930

 

PARTIES

Complainant is America Online, Inc., Dulles, VA (“Complainant”) represented by James R. Davis, of Arent Fox Kintner Plotkin & Kahn.  Respondent is Anytime Online Traffic School, Sebastopol, CA (“Respondent”).

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <aoltrafficschool.com>, <aoldefensivedriving.com>, and <aoldriverimprovement.com>, registered with Network Solutions, Inc.

 

PANEL

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.

 

Petter Rindforth as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on February 26, 2003; the Forum received a hard copy of the Complaint on February 28, 2003.

 

On February 28, 2003, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain names <aoltrafficschool.com>, <aoldefensivedriving.com>, and <aoldriverimprovement.com> are registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name.  Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 February 28, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 20, 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@aoltrafficschool.com, postmaster@aoldefensivedriving.com, and postmaster@aoldriverimprovement.com by e-mail.

 

A timely Response was received and determined to be complete on March 20, 2003.

 

On March 28, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Mr. P-E Petter Rindforth as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A.     Complainant

           

            The Complainant is the owner of numerous trademark registrations worldwide for the mark AOL, including U.S. trademarks registered since 1996 (copies of registration details from the USPTO website are provided as Annex B of the Complaint). Complainant is also the owner of the U.S. trademark registration AOL.COM.

 

            Long prior to Respondent’s registration of the disputed domain names, and at least as early as 1989 for the mark AOL, the Complainant adopted and began using its marks in connection with computer online services and other Internet-related services, including providing information regarding driver’s licenses and tickets.  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. 

 

            The Complainant has invested substantial sums of money in developing and marketing its services and marks.  As a result, the AOL brand is one of the most readily recognized and famous marks used on the Internet. With over thirty-four million subscribers, the Complainant operates the most widely used interactive online service in the world.

 

            The AOL marks have been and continue to be widely publicized through substantial advertising throughout the United States and the world.  Sales of services under the AOL 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.

 

The Respondent, which had knowledge of the AOL marks by the time of the registration of the disputed domain names, registered the domain names with a bad faith intent to profit from the confusion that would be generated from these domains. The disputed domains are nearly identical and confusingly similar to the AOL and AOL.COM marks. Consumer confusion is particularly likely because Respondent is using the famous and distinctive mark AOL as a prefix to generic words like “traffic” “school” and “driving.” 

 

 

            Respondent has no rights or legitimate interests in respect to the domain names. Respondent is not licensed or authorized to use the AOL mark. 

 

Respondent initially used the domain names in connection with a website that used the name “AOL TrafficSchool.com” and the AOL mark in the HTML code (copy of the HTML version of the website is provided as Annex G of the Complaint).  Respondent has since renamed the website, but continues to use AOL in the domain names and HTML code. 

 

            Respondent’s bad faith registration and use of the domain names is shown by the pattern of registering three AOL-based domain names. 

 

            In an attempt to resolve the matter amicably, counsel for the Complainant contacted

            Respondent and requested that all unauthorized use of the AOL mark cease (copy of letter provided as Annex F of the Complaint).  Despite several attempts by the counsel to resolve the dispute amicably, Respondent refused to cease using and to transfer the domain names.

 

Respondent claims he uses “AOL” as an acronym for Anytime Online Traffic School.  This overused excuse is a transparent attempt to play off the famous AOL name and mark and is not a bona fide or legitimate use of the domains. 

 

            Respondent cannot in good faith claim that he had no knowledge of AOL’s rights in its famous AOL and AOL.COM marks.  Furthermore, Respondent cannot claim in good faith that he made a legitimate noncommercial or fair use of the subject domains, or that he is commonly known as AOL.

           

            The Complainant’s contentions are supported by a number of prior UDRP cases, referred to in the Complaint.

 

B. Respondent

 

Anytime OnLine Traffic School is an Internet based company offering an alternative to traditional “Traffic School.” This web-based course enables students to completed traffic school, “anytime & on-line.”

 

The disputed domain names are not identical or confusingly similar to the Complainant’s mark. The Complainant is relying on a “likelihood” of dilution. In a recent decision (Mosley et al., d/b/a Victor’s Little Secret v Victoria’s Secret Catalogue, Inc., et. al., decided March 4, 2003 – US Supreme Court) the United States Supreme Court made it very clear that the Federal Trademark Dilution Act requires proof of actual dilution, not a “likelihood” of dilution. It is the plaintiff’s obligation to demonstrate that there has in fact been a reduction in the capacity of the famous mark to identify goods or services.

 

The Complainant lists a wide range of business activities (Section 1 of Factual and Legal Grounds of the Complaint”), but “traffic school” is not among them. Unlike the Complainant, Respondent is an on-line traffic school and is straightforward in its mission.

 

Complainant’s statement that customers may believe that “AOL endorses or is affiliated with the services sold at the site” is not true. On the contrary, Respondent is using the following disclaimer at the website:  “Anytime Online is not affiliated with, sponsored by, or associated with America Online, Incorporated” (copy of the website provided as Annex D of the Response).

 

Respondent has not received any complaints about confusion or connections with the Complainant.

 

Respondent has legitimate interests in the domain names. Prior to notice to Respondent of this dispute, Respondent used the domain names in connection with a bona fide offering of services.

 

The Complainant is not remotely involved in providing traffic school instruction. The Respondent conducted thorough research including consultations with experts in the field of traffic school programs and Internet providers. The experts agree that the domain names are an appropriate marketing strategy and that “shorter names attract a larger percentage of the lazier customers who would otherwise look for a competitors website with a shorter web address when presented with multiple opinions” (Expert Testimony from Scott Nader provided as Annex E of the Response). Based upon this expert analysis, the Respondent followed the advice and used the letters “a”, “o”, “l,” as well as “trafficschool” in the website address. The practice of using short addresses is commonly accepted and widely used in the Internet industry, even if it means that parts of the web address would include other’s trademarks as acronyms (examples of similar web addresses provided as Annex F of the Response).

 

The disputed domain names differ from the three lettered trademark of the Complainant. Complainant has no rights to all other names including the letters AOL or for all services.

 

The Complainant has failed to prove that the disputed domain names are registered and used in bad faith. Respondent has placed a disclaimer on its home page in good faith.

 

The reason for registering the three domain names and not only one is that not all states in the USA recognize and/or categorize traffic school programs. In California, this type of program is called “Traffic School”; in Virginia “Driver Improvement”; in New Jersey and Colorado it is called “Defensive Driving.” Three different addresses are therefore necessary for marketing reasons.

 

            The Respondent’s contentions are supported by a number of prior UDRP cases, referred to in the Response.

 

 

 

DISCUSSION AND FINDINGS

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

 

Complainant holds numerous registrations for its AOL mark throughout the world.  Complainant asserts that its mark is famous and recognized globally as indicative of Complainant’s Internet services, and this Panel agrees that the AOL trademark is indeed well known.

 

The disputed domain names are not identical to Complainant’s marks AOL or AOL.COM; however, they are confusingly similar to the AOL mark, because they incorporate Complainant’s entire mark and merely add the descriptive terms “traffic school,” “defensive driving,” and “driver improvement.” These additional terms do not add any distinctive features capable of overcoming a claim of confusing similarity (see Arthur Guinness Son & Co. (Dublin) Ltd.  v. Healy/BOSTH, D2001-0026, WIPO; Mar. 23, 2001, finding confusing similarity where the domain name in dispute contains the identical mark of the Complainant combined with a generic word or term).

 

The Panel finds that <aoltrafficschool.com>, <aoldefensivedriving.com>, and <aoldriverimprovement.com> are confusingly similar to (at least) the Complainant’s AOL trademark and accordingly finds for Complainant under Paragraph 4 (a) (i) of the Policy.

 

Rights or Legitimate Interests

 

It is an undisputed fact that the Respondent is not licensed or authorized by the Complainant to use the AOL trademark. Nor has the Respondent proved that he is commonly known by the domain names. The disputed domain names were registered in September/October 2002 and the websites seem to have been created in 2003 (according to copyright notices, Annex G of the complaint and Annex D of the Response).

 

However, the Panel accepts the fact that Respondent, before any notice of this dispute, has used the domain names in connection with a bona fide offering of services, namely, traffic school services. Even if such services seem to have been advertised on the Complainant’s website, Complainant cannot reasonably claim that the AOL trademark also covers traffic school services.

 

The Panel also notes that the Respondent’s business name is Anytime OnLine Traffic School and that it is therefore not far-fetched to use <aoltrafficschool.com> as a domain name for Respondent’s business. The fact that Respondent is using the abovementioned visible disclaimer on its website further indicates a bona fide offering of the traffic school services (See Realmark Cape Harbour L.L.C. v. Lewis, D2000-1435; WIPO Dec. 11, 2000).

 

Accordingly, this Panel finds that, prior to notice to Respondent of the dispute, Respondent used the domain names in connection with a bona fide offering of services, within the meaning of Paragraph 4 (c) (i) of the Policy.

 

Registration and Use in Bad Faith

 

The Complainant states that Respondent initially used the domain names in connection with a website that used the name “AOL TrafficSchool.com” and the AOL mark in the HTML code. The Panel has carefully viewed the HTML code in Annex G of the Complaint, but could only find references to “aoltrafficschool,” “AOLTSB.jpg” and “AOL Traffic School.” The Panel therefore concludes that the Respondent has not used the AOL mark alone within the HTML code.

 

The Complainant further states that Respondent’s bad faith registration and use of the domain names is shown by the pattern of registering three AOL-based domain names. It is the opinion of this Panel, however, that the Respondent has provided an acceptable explanation for the three registrations (see above). 

 

Respondent argues that its use of a disclaimer on its website is evidence of good faith.  The Panel concludes that the said disclaimer is at least evidence of good faith use of the domain names. (See Al-Anon Family Group Headquarters Inc. v. Reid, D2000-0232; WIPO June 5, 2000).

 

The Panel is therefore not convinced by the Complainant’s argument that the Respondent “registered the domain names with a bad faith intent to profit from the confusion that would be generated from these domains.”

 

The Panel concludes that the Complainant has failed to prove that the domain names were registered and used in bad faith.

 

 

DECISION

 

The Panel concludes (a) that the disputed domain names are confusingly similar to Complainant’s trademark AOL,  (b) that the Respondent has rights and/or legitimate interests in the domain names, and (c) that the Complainant has failed to prove that the Respondent registered and used the domain names in bad faith.

 

Therefore, as the Complainant has failed to prove all three elements under Section 4(a) of the policy, the Complainant’s request to transfer the domain names <aoltrafficschool.com>, <aoldefensivedriving.com>, and < aoldriverimprovement.com> to the Complainant America Online, Inc. is DENIED.

 

 

 

Petter Rindforth, Panelist
Dated: April 11, 2003

 

 

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