DECISION

 

America Online, Inc. v Louis Tullo

Claim Number: FA0303000150811

 

PARTIES

Complainant is America Online, Inc., Dulles, VA (“Complainant”) represented by James R. Davis, of Arent Fox Kintner Plotkin & Kahn.  Respondent is Louis Tullo, Hewlett, NY (“Respondent”).

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <3daol.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.

 

Hugues G. Richard as panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on March 20, 2003; the Forum received a hard copy of the Complaint on March 24, 2003.

 

On March 25, 2003, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <3daol.com> is 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 March 25, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 14, 2003 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@3daol.com by e-mail.

 

A timely Response was received and determined to be complete on March 27, 2003.

 

On April 1, 2003 pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hugues H. Richard as Panelist.

 

RELIEF SOUGHT

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

 

PARTIES’ CONTENTIONS

A. Complainant

 

Complainant contends that the <3daol.com> domain name is nearly identical or confusingly similar to Complainant’s “AOL” and “AOL.COM” trademarks.  Complainant submits that consumer confusion is particularly likely because Respondent is using the famous and distinctive mark “AOL” in connection with the prefix “3d” to sell software, monitors and projectors that enable consumers to provide and view three-dimensional images.  Furthermore, Complainant argues that the likelihood of consumer confusion is enhanced by the fact that AOL is world renowned for its software and technology capabilities and sells monitors and projectors similar to those offered by Respondent.

 

Complainant claims that Respondent has no rights or legitimate interests in the domain name.  According to Complainant, Respondent is not named “AOL” and is not licensed or authorized  to use the “AOL” trademark.

 

Complainant contends that Respondent registered and used the <3daol.com> domain name in bad faith.  Complainant argues that: (1) Respondent registered the domain name long after AOL’s adoption and use of the “AOL” and “AOL.COM” trademarks; (2) Respondent uses the <3daol.com> domain name to route Internet users to his commercial website that sells software, monitors, projectors, and other products that allow consumers to create and view three-dimensional objects, and therefore Respondent profits from the consumer confusion that may be created when consumers encounter the famous AOL mark in the domain name <3daol.com>; (3) despite several attempts by Complainant’s counsel to resolve the dispute amicably, a resolution was not reached; (4) Respondent’s contention regarding his use of “AOL” as an acronym for his company constitutes an attempt to play off the famous “AOL” name and mark and would not be a bona fide and legitimate use of the disputed domain name and (5) Respondent cannot in good faith claim that he had no knowledge of Complainant’s rights in its famous “AOL” and “AOL.COM” marks and that he made a legitimate noncommercial or fair use of the disputed domain name, or that he is commonly known as AOL.

 

 

B. Respondent

 

Respondent submits that the Complainant’s contentions constitute non-factual claims and self-serving statements of fact because no evidence to support with proof such contentions was produced.

 

Respondent contends that the disputed domain name <3daol.com> is not identical or confusingly similar to the “AOL” and “AOL.COM” trademarks because the company Airimages Inc., which sells Patented 3D Projectors, has never authorized AOL to sell its products.  Respondent thus submits that it is AOL, in selling its products, that is infringing.  Respondent also argues that Complainant changed the way the disputed domain name <3daol.com> is used (<3daol.com> vs. <AOL.COM>) in order to self-serve and create the necessary confusion required.  Moreover, Respondent contends that Airimages Unlimited Inc. has never experienced any confusion because of the use of the <3daol.com> domain name. 

 

Respondent claims that he has rights and legitimate interests in the domain name.  He states that the domain name <3daol.com> stands for “Three Dimensional Airimages On Line.”  In addition, Respondent explains that the most important use of the <3daol.com> domain name is the e-mail address “ltullo@3daol.com.”  Respondent also argues that Airimages Unlimited, Inc. makes a legitimate commercial and fair use of the domain name, that it is commonly known as “3daol” and that its identity is based on its patented 3D product line.                                    

 

Finally, Respondent submits that he has not registered and is not using the domain name in bad faith.  He explains that the company Airimages Inc., which sells Patented 3D Projectors, has never authorized AOL to sell its products and therefore, submits that it is AOL, in selling its products, that is infringing.  Additionally, Respondent claims that its domain name stands for “Three Dimensional Airimages On Line.”  Furthermore, Respondent contends that Airimages Unlimited, Inc. was willing to settle but that the Complainant was acting in bad faith in attempting to place undue responsibilities on Louis Tullo in the future.

 

FINDINGS

The Complainant, America Online, Inc. (thereafter AOL), is the owner of numerous trademark registrations worldwide for the mark “AOL,” including the following U.S. registrations: 1,977,731 and 1,984,337, registered on June 4, 1996 and July 2, 1996 respectively, as it appears from the produced trademark registrations.

 

AOL has used and is using its “AOL” trademark 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.”

 

AOL also owns the trademark “AOL.COM” (trademark registrations Nos. 2,325,291 and 2,325,292) in connection with, among other things:

 

“Computer services, namely, providing multiple user access to computer networks and bulletin boards for the transfer and dissemination of a wide range of information; providing a wide range of general interest information via computer networks; telecommunications services, namely, electronic transmission of data, images and documents via computer terminals; electronic store-and-forward messaging; electronic mail services, and facsimile transmission.”

 

The Complainant has used the trademarks “AOL” and “AOL.COM” since at least 1989 for “AOL” and 1992 for “AOL.COM.”

 

AOL has used its “AOL” and “AOL.COM” trademarks continuously and extensively in interstate and international commerce in connection with the advertising and sale of its Internet and computer-related services.

 

AOL has spent millions of dollars advertising and promoting its services under the “AOL” marks, resulting in over thirty-five million subscribers worldwide and billions of dollars in sales.

 

On February 2, 2000, the Respondent registered the domain name <3daol.com>.  The domain name is connected to a website at <airimagesinc.com>.

 

On December 17, 2002, the representative of AOL sent a “cease and desist” letter to the Respondent requesting the transfer of the disputed domain name.

 

Having reviewed the evidence submitted by the parties and their written representations, the Panel makes the following findings:

 

1.      The disputed domain name <3daol.com> is confusingly similar to Complainant’s trademarks “AOL” and “AOL.COM.”

 

2.      The Respondent does not have any rights or legitimate interests in respect of the domain name.

 

3.      The domain name has been registered by the Respondent in bad faith.

 

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

 

On this issue, the Panel is of the opinion that the disputed domain name is confusingly similar to Complainant’s registered trademarks for the following reasons.

 

As previously stated, the Complainant has provided evidence to the effect that the trademarks “AOL” and “AOL.COM” have been registered. Those registrations are sufficient to establish prima facie Complainant’s rights over the said trademarks.

 

Previous decisions have recognized that the adaptation of a trademark in a domain name by variation in spelling or by deletion, addition or insertion of letters or numbers does not escape a finding of confusing similarity.  As stated in America Online, Inc. v. Fu, WIPO Case No. D2000-1374 <icq.502.com> <icq520.com>, the addition of the suffixes “502” and “520” to the “ICQ” trademark does little to reduce the potential for confusion.  Also, in America Online Inc. v. Chinese ICQ Network, WIPO Case No. D2000-0808, the Panel found that adding the numeral 4 in the domain name <4icq.com> does nothing to deflect the impact on the viewer of the ICQ mark and is therefore confusingly similar.[1]

 

In the present case, the Respondent has registered the domain name <3daol.com>.  The Panel is of the view that the addition of the prefix “3d” does nothing to “distinguish” Respondent’s domain name from Complainant’s registered trademarks.  This is even more so if one considers that Respondent is providing online services that are very similar or identical to those provided by the Complainant.

 

Respondent argues that the company Airimages Inc., which sells Patented 3D Projectors, has never authorized AOL to sell its products. It therefore submits that AOL, in selling its products, is infringing its rights.  Obviously, the Panel does not see the relevance of this argument in relation to the confusion issue.  If AOL were selling Respondent’s products on its website (which has not been established), supposedly without its authorization, this would not justify the use by the Respondent of the disputed domain name.

 

The acronym “AOL” has acquired, for the public, a distinctive meaning, which points out to Complainant business and services.  Respondent’s use of the prefix “3d” with the distinctive acronym “AOL” to sell software, monitors and projectors that enable consumers to provide and view three-dimensional images makes the association with AOL almost natural.  In fact, AOL, renowned for its software and technology capabilities, also sells monitors and projectors similar to those offered by Respondent at the disputed domain name.  As stated in Société des Bains de Mer Et du Cercle Des Etrangers A Monaco v. Global Productions-Domain For Sale, WIPO Case No. D2000-1332 <monacogambling.com>, “the words (in that case “monaco” and “gambling”) used together create a strong similarity and impression that could easily induce the general public into believing that the domain name, the domain name proprietor and any web site operated from the domain name are associated with the Complainant (owner of the trademark “Casino de Monte-Carlo”)”.

 

The Panel therefore finds that it is perfectly plausible for a consumer to be confused by the terminology used in the Respondent’s domain name.  Any Internet user may be led into thinking that the <3daol.com> web site is provided or endorsed by the Complainant.

 

            Rights or Legitimate Interests

 

Under ICANN Policy ¶ 4 (c), any of the following circumstances, in particular but without limitation, if found by the Panel, shall demonstrate Respondent’s rights or legitimate interests to the domain name:

 

(i)  The use of or demonstrable preparations to use the domain name or a name

corresponding to the domain name in connection with a bona fide offering of goods or services; or

 

(ii)  The fact that the Respondent has been commonly known by the domain name; or

 

(iii) A legitimate non-commercial or fair use of the domain name, without intent for

commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

 

Apart from Respondent’s mere registration of the <3daol.com> domain name, the Panel does not find any evidence of any rights or legitimate interests the Respondent may have with respect to “3daol” or the disputed domain name.  In fact, the Panel undertook to verify whether the domain name <3daol.com> is currently in operation, and it seems that any person visiting this website is immediately redirected to another web site using the domain name <airimages.com>.  Moreover, no goods or services seem to be offered under the name or the mark “3daol”.  Thus, this type of use cannot be said to be a bona fide offering of goods or services within the meaning of the ICANN Policy.  On this point, it has been decided in Vapor Blast Mfg. Co. v. R & S Tech. Inc, FA 96577 (Feb. 27, 2001) <vaporblast.com>, that the commercial use of the domain name to confuse and divert Internet traffic was not a legitimate use of the domain name.  In Kosmea Pty Ltd. v. Krpan, WIPO Case No. D2000-0948 <kosmea.com>, the Panel found that the Respondent had no rights in the domain name because of its intention to divert consumers of Complainant’s products to Respondent’s site by using Complainant’s mark.

 

The Respondent does not dispute the fact that because of the substantial advertising expenditures and sales, the distinctive AOL.COM mark has become very well-known and famous among members of the purchasing public.

 

Furthermore, the Panel accepts Complainant’s contention to the effect that Respondent’s appropriation of the “AOL” mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.  As stated in America Online, Inc. v. Fu, WIPO Case No. D2000-1374 <icq502.com> <icq520.com>, “it would be unconscionable to find a bona fide offering of services in a respondent’s operation of a web site using a domain name which is confusingly similar to Complainant’s mark and for the same business.”[2]

 

Regarding Policy ¶ 4(c)(ii), it is not plausible for Respondent to claim that he has been commonly known by the domain name.  As mentioned above, the Panel finds no evidence that Respondent was commonly known by the disputed domain name.  Besides, the Panel cannot accept Respondent’s assertion that “3daol” in his domain name stands for “Three Dimensional Airimages On Line.”  The acronym “AOL” is now clearly associated in the mind of the public with the marks “AOL” and “AOL.COM,” so it is highly unlikely that Respondent is commonly known as “AOL” or “3daol.”  In fact, the domain name <3daol.com> would naturally point towards Complainant’s business rather than Respondent’s alleged website.  In this regard, see Nike, Inc. v. B. B. de Boer, WIPO Case No. D2000-1397 <nike-shoes.com>, where the Panel found 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.  Also, in Nokia Corp. v. Private, WIPO Case No. D2000-1271 <wwwnokia.com>, the Panel stated that the Respondent was not commonly known by the mark contained in the domain name where Complainant has not permitted Respondent to use the NOKIA mark and no other facts or elements can justify prior rights or a legitimate connection to the names “Nokia.”

 

            In relation to Policy ¶ 4(c)(iii), there is no indication that the Respondent is making a legitimate non-commercial or fair use of the domain name.  Respondent argues that the most important use of the <3daol.com> domain name is by the use of the e-mail address <ltullo@3daol.com>.  However, the Panel is of the opinion that this explanation does not legitimate the use by the Respondent of the disputed domain name.

 

Incidentally, the Panel refers to the decision Pivotal Corporation v. Discovery Street Trading Co. Ltd, WIPO Case No. D2000-0648 <pivotalsoftware.com>.  As referred therein, once lack of legitimate rights or interest has been sufficiently alleged by a Complainant, the failure of Respondent to address this issue adequately may authorize the Panel to draw an adverse inference, as the Panel does in the present case. Having failed to do so, the Panel thus finds that Respondent has no rights or legitimate interests in the domain name.

 

As stated in Charles Jourdan AG v. AAIM, WIPO Case No. D2000-0403 <charlesjourdan.com> “the Panel finds that the Respondent has no legitimate rights or interest in that (i) Respondent is not a licensee of Complainant, nor has he received any permission or consent to use the trademark; (ii) Complainant has prior rights in that trademark which precede Respondent’s registration of the domain name; (iii) Respondent is not (either as an individual, business or other organization) commonly known” by the name used (“3daol”) in the disputed domain name.

 

Registration and Use in Bad Faith

 

Policy ¶ 4(b) states that the following circumstances, in particular but without limitation, shall be evidence of the registration and use of a domain name in bad faith:

 

(i)      Circumstances indicating that the Respondent has registered or has acquired the

domain name primarily for the purpose of selling […] for a valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name; or

 

(ii)    that the domain name has been registered in order to prevent the owner of the

trademark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

 

(iii)  that the domain name has been registered primarily for the purpose of disrupting the

business of a competitor; or

 

(iv)   that the domain is used to intentionally attempt to attract, for commercial gain,

Internet users to respondent’s web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of respondent’s web site or location or of a product or service on respondent’s web site or location.

 

As mentioned above, the Panel finds that the <3daol.com> domain name is so confusingly similar to Complainant’s marks that the Internet user will likely believe that there is an affiliation between Respondent and Complainant or that Complainant has at least endorsed this use of it.  In fact, when the Respondent registered the domain name in dispute, long after the Complainant had adopted and first used its trademarks, AOL already had a worldwide reputation, as alleged by the Complainant and confirmed in a number of decisions.[3]  Thus, the Respondent should have known about Complainant’s trademarks and services at the time he registered the domain name given the “widespread use and fame” of the Complainant’s “AOL” and “AOL.COM” marks.  In fact, with respect to the trademark AOL.COM, this has not been disputed by the Respondent.  In Perot Sys. Corp. v. Perot.net, FA 95312 (NAF August 29, 2000) <perot.net>, the Panel found bad faith where the domain name in question was obviously connected with Complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain.

 

Furthermore, the Panel, following many decisions on this subject,[4] cannot accept the Respondent’s explanation as to the choice of the acronym “3daol” for “Three Dimensional Airimages On Line”. As stated in America Online, Inc. v. Cucamonga Electric Corp. FA 103364 (NAF Feb. 26, 2002) <aolutility.com>, “[I]n this age it is not a coincidence when a firm uses the acronym AOL in any new sitting.  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 the site, AOL Inc. has some connection with them.”   

 

Moreover, the fact that the disputed domain name is used solely to attract attention and then divert traffic to another site, at which there is absolutely no use of or even reference to the disputed domain name, is convincing evidence of bad faith use.[5]  In America Online, Inc. v. Tencent Comm. Corp., FA 93668 (NAF March 17, 2000) <oicq.com> <oicq.net>, it was decided that the fact that Respondent registered and used an infringing domain name to attract users to a website sponsored by Respondent constituted bad faith.

 

Respondent once again argues that the company Airimages Inc., which sells Patented 3D Projectors, has never authorized AOL to sell its products, and therefore submits that AOL, in selling its products, is infringing its rights.  Obviously, as mentioned above, the Panel does not see the relevance of this argument in relation to the bad faith issue.  If AOL were selling Respondent’s products on its website (which has not been established), supposedly without its authorization, it would not justify Respondent’s use of the disputed domain name.

 

Based on the foregoing, the Panel concludes that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to Airimages’ website. 

                 

Consequently, this Panel finds that Respondent has registered and used the disputed domain name in bad faith.

 

DECISION

Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <3daol.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

 

Hugues G. Richard, Panelist
Dated: April 15, 2003

 

 

 

 

 

 

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