America Online, Inc. v. Edward Tapia
Claim Number: FA0409000328159
PARTIES
Complainant
is America Online, Inc. (“Complainant”),
represented by James R. Davis, of Arent Fox PLLC, 1050
Connecticut Avenue, NW, Washington, DC 20036.
Respondent is Edward Tapia (“Respondent”),
42263 50th West PMB #814, Quartz Hill, CA 93536.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <aol.tv>,
registered with The .tv Corporation.
PANEL
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.
Barry
Schreiber as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on September 15, 2004; the Forum received a hard copy of the
Complaint on September 17, 2004.
On
September 15, 2004, The .tv Corporation confirmed by e-mail to the Forum that
the domain name <aol.tv> is
registered with The .tv Corporation and that the Respondent is the current
registrant of the name. The .tv
Corporation has verified that Respondent is bound by the The .tv Corporation
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
September 17, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of October 7, 2004 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@aol.tv by e-mail.
A
timely Response was received and determined to be complete on October 27, 2004.
Respondent
initially sent electronically additional material for the panelist to
consider. For whatever reason, this
material would not open. At the Panelist
request, Respondent sent the material, via hard copy, directly to the NAF, who
then sent it to the Panelist and to the Complainant. The Panelist received the material in the time requested and
therefore this material has been considered by the Panelist in arriving at the
Panelist’s decision in this matter.
On November 9, 2004, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the Forum appointed Barry Schreiber
as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
This Complaint is based on
the following factual and legal grounds:
1. Complainant
America Online, Inc. ("AOL") is the owner of numerous trademark registrations
worldwide for the mark AOL and other marks that incorporate AOL, including U.S.
trademark registration Nos. 1,977,731 and 1,984,337 for AOL and 2,472,041 for
AOLTV, which were registered on June 4, 1996, July 2, 1996, and July 24, 2001,
respectively. Evidence of trademark
registrations is included under Annex B.
AOL registered and uses its AOL mark 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.”
2. AOL
uses the registered mark AOL.COM in connection with providing services on the
Internet. See Annex D. AOL owns federal trademark registration Nos.
2,325,291 and 2,325,292 for the mark AOL.COM.
See Annex D. The mark AOL is
used extensively at this Web site, which is a significant method of promoting
AOL's services. As a result, consumers
associate the mark AOL, when used in a domain name, with AOL's services.
3. Long
prior to Respondent’s registration of the domain name <aol.tv> and
at least as early as 1989 for the mark AOL, and 1992 for the mark AOL.COM, AOL
adopted and began using its marks in connection with computer online services
and other Internet-related services.
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, including the provision on
online news services. AOL has used its
famous and distinctive marks continuously and extensively in interstate and
international commerce in connection with the advertising and sale of its
Internet and computer-related services.
4. AOL
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.
5. With
tens of millions of subscribers, AOL operates the most widely-used interactive
online service in the world and each year millions of AOL customers worldwide
obtain services offered under the AOL and AOL.COM marks; millions more are
exposed to said marks through advertising and promotion.
6. The
AOL marks have been and continue to be widely publicized through substantial
advertising throughout the United States and the world. Many millions of dollars have been spent in
connection with such advertising, which has been disseminated through network
and cable television programs, radio broadcasts, and in print media including
newspapers and periodicals.
7. 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.
8. Because
of these substantial advertising expenditures and sales, the distinctive AOL
marks have become very well known and famous among members of the purchasing
public.
9. Many
years after AOL's adoption and first use of its AOL marks, Respondent
registered the infringing <aol.tv> domain name with bad faith
intent to profit from the confusion that would be generated from this domain.
10.
The
infringing domain is nearly identical and confusingly similar to the AOL and
AOL.COM marks. But for the “.tv” top
level domain, which is irrelevant for purposes of considering a likelihood of
confusion, Respondent’s domain name is identical to the AOL mark. Am. Online, Inc. v. Hieke, FA 154097
(Nat. Arb. Forum May 20, 2003). Consumer
confusion is particularly likely because Respondent is using the very famous
and distinctive mark AOL in connection with a Web site that provides online
news services and provides links to general interest information like sports,
entertainment and health. AOL provides
the identical services under its famous AOL brand. Given the similarities between the marks, domain names, and
services provided, consumers are likely to recognize the famous AOL mark in the
subject domain and believe falsely that AOL endorses or is affiliated with
Respondent or his services.
11. Respondent
registered and uses the <aol.tv> domain with bad faith intent to
capitalize on the famous AOL and AOL.COM marks, and profit from the
international and domestic goodwill AOL has built up in its famous marks. Respondent also is attempting to mislead
consumers by registering and using a domain name that plays off the very famous
AOL name and mark.
12. Respondent
has no rights or legitimate interests in respect to the infringing domain. Respondent (Edward Tapia) is not named AOL
and is not licensed or authorized to use the AOL mark. The following is evidence of Respondent’s
bad faith registration and use of the infringing domain:
(a)
Respondent’s
bad faith registration is evidenced by the fact that the domain was registered
on January 31, 2004, many years after the AOL Marks were registered, and long
after the AOL Marks had become famous and well-known to consumers around the
world. See Annex E for Whois
Records. Respondent presumably is a US
resident and, therefore, is deemed to have at least constructive knowledge of
AOL’s nationwide trademark rights based upon the numerous federal trademark
registrations owned by AOL for its AOL mark and issued prior to January 31,
2004. Given the fame of the AOL mark,
it is inconceivable that Respondent did not have actual knowledge of the AOL
service, otherwise, Respondent would have had no reason to register a domain
name utilizing the highly-distinctive AOL mark. Accordingly, Respondent registered the domain name in bad faith
with knowledge that his actions violated AOL’s intellectual property rights.
(b)
Respondent’s
bad faith use of <aol.tv> is demonstrated by the fact that
Respondent is using the domain to promote commercial Web sites that provide various
online services. See Annex G. As noted, AOL provides identical services at its <aol.com> site and
through its proprietary AOL service. Respondent’s blatant attempt to attract
Internet users to Respondent’s site for commercial purposes violates Paragraph
4(b)(iv) of the UDRP. Confusion is
particularly likely given that Respondent is providing online services that are
identical to those provided by AOL and set forth in the federal trademark
registrations for the AOL mark.
(c)
In an
attempt to resolve this matter amicably, counsel for AOL sent the registrant a
letter seeking a transfer of the domain.
See Annex F. Respondent failed
to reply and, instead, began routing the infringing <aol.tv>
domain to the Google news Web site. See
Annex G. As a result, AOL had no option
but to initiate this proceeding to resolve this matter.
(d)
Respondent’s
bad faith use of the domain is further shown by the fact that Respondent’s use
of the AOL mark in the <aol.tv> domain name is completely
unjustified. Respondent’s commercial
Web site makes no reference whatsoever to AOL or its services. See Annex G. Respondent clearly is using the AOL brand solely in a bad faith
attempt to confuse consumers and attract traffic to Respondent’s Web site based
upon Internet users that erroneously visit the site believing that it is
affiliated with or endorsed by AOL. Am.
Online, Inc. v. Cucamonga Elec. Corp., FA 103364 (Nat. Arb. Forum Feb. 26,
2002) (“[I]n 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 the site, AOL Inc.
has some connection with them.”); Am. Online, Inc. v. Viper, D2000-1198
(WIPO Dec. 4, 2000) (“[I]t is well past the day when Internet users would not
make the assumption that use of AOL as part of a domain name links that site in
the mind of the user to Complainant.”).
As with these and many of prior cases, Respondent’s actions demonstrate
a knowing and willful infringement of the famous AOL brand.
(e)
Based upon
(1) the fame of the AOL mark; (2) AOL’s trademark registrations; (3)
correspondence sent by AOL; (4) Respondent’s personal use of the AOL service
for e-mail and other services; and (5) the unnecessary and gratuitous use of
the AOL mark, 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 domain, or that he is
commonly known as AOL.
B.
Respondent
Respondent, in its Response, has submitted a collage of
images and text. As the images will not properly translate in the published
decision, the Panel attempts to capture Respondent’s argument in these
findings.
1.
Respondent
states the following in its Response:
Respondent
believes
1.)
He registered domain name because it was available.
2.)
He purchased domain name at 10 times the regular price of regular “.tv”
domains. Complainant says their host inadvertently sold domain name, was the
price inadvertently raised also?
3.)
He purchased domain as an investment for family’s future.
4.)
Many Possibilities.
Respondent
believes in no possible way, can by him positioning his domain name to where it
is at right now would tarnish the trademark or service mark at issue
1.) Actually
Respondent believes the contrary, if anything greatly added value.
2.) Respondent
believes consumers will be able to distinguish the difference, and not be
confused.
3.) [Respondent
attached the AdSense affiliate program agreement from Google].
2.
Respondent includes various images including a stylized image of
“aol.tv.” Respondent uses the stylized
image of “aol.tv” throughout its Complaint.
In one instance, below the image of “aol.tv,” Respondent states the
following:
This is one of my domains
Can you please show this to Larry Page and Sergey Brin.
I also like helping people.
3.
Respondent includes components of other websites, including a MSN webpage
banner and entire pages of Google’s AdSense affiliate program online submission
form.
4.
Respondent submits evidence of an inquiry to Yahoo! AdWords, an online
marketing service. Respondent also
submits a form email response from Yahoo! AdWords.
Respondent’s
additional submission consists of copies of domain names that the Respondent
claimed to own, including the <aol.tv> domain name, the subject of
the herein dispute, correspondence between the Respondent and Yahoo and
Microsoft, an Internet article entitled “America On Line confirms the end of
AOLTV.” a CNET news article dated 2/18/03 and a second Internet article
entitled, “The Impact of Reverse Domain Name Hijacking”, by Jay Hollander.
FINDINGS
The Panelist finds that Complainant has
clearly and unequivocally proved each of the required three elements of Policy
¶ 4(a), subsections (1), (2) and (3), to wit: (1) Respondent’s domain name, <aol.tv> is identical or
confusingly similar to the Complainant’s trademark; (2) Respondent has no legitimate interests with respect
to the domain name; and (3) Respondent registered the domain name in bad faith
and hence the relief sought by Complainant should be granted.
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.
Complainant,
America Online, Inc., may bring a claim under the UDRP because it has
appropriate rights in the AOL mark. 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. Respondent has the burden
of refuting this assumption.).
Respondent’s
<aol.tv> domain name is identical to Complainant’s AOL
mark. The only difference is the
addition of the “.tv” country code top-level domain, which does not
significantly distinguish the domain name from the mark. See World Wrestling Fed'n Entm't, Inc. v. Rapuano, DTV2001-0010 (WIPO
May 23, 2001) (“The addition of the country code top level domain (ccTLD) designation
<.tv> does not serve to distinguish [the disputed domain] names from
Complainant’s marks since ‘.tv’ is a common Internet address identifier that is
not specifically associated with Respondent.”); see also Clairol Inc. v. Fux, DTV2001-0006 (WIPO
May 7, 2001) (finding that the domain name <clairol.tv> is identical to
Complainant’s CLAIROL marks).
Complainant
alleges that Respondent is using the disputed domain name to direct Internet
traffic to promote commercial websites that provide Internet services. Complainant now alleges that the disputed
domain points to its competitor’s site.
The Panel finds that appropriating the AOL mark to promote Internet
services or to link to Complainant’s competitor is not a bona fide offering of
goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or
fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11,
2002) (finding that Respondent’s use of the disputed domain name to redirect
Internet users to a financial services website, which competed with
Complainant, was not a bona fide offering of goods or services); see also Avery Dennison
Corp. v. Steele, FA
133626 (Nat. Arb. Forum Jan 10, 2003) (finding
that Respondent had no rights or legitimate interests in the disputed domain
name where it used Complainant’s mark, without authorization, to attract
Internet users to its business, which competed with Complainant).
The Panel finds
that Respondent has not demonstrated that it is commonly known by the <aol.tv> domain name. See Medline, Inc. v. Domain Active
Pty. Ltd., FA 139718 (Nat. Arb. Forum Feb.
6, 2003) (“Considering the nonsensical nature of the [<wwwmedline.com>]
domain name and its similarity to Complainant’s registered and distinctive
[MEDLINE] mark, the Panel concludes that Policy ¶ 4(c)(ii) does not apply to
Respondent.”); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23,
2001) (finding that Respondent does not have rights in a domain name when
Respondent is not known by the mark).
The Panel
further finds that Complainant’s prior registration of the domain name implies
that Respondent does not have rights or legitimate interests in the <aol.tv> domain name. See American Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA
95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that Complainant’s prior
registration of the same domain name is a factor in considering Respondent’s
rights or legitimate interest in the domain name); see also Edmunds.com, Inc. v. Ult. Search Inc., D2001-1319 (WIPO Feb. 1, 2002) (finding
that Respondent could not rely on equitable doctrines under the Policy to
defend its registration of the disputed domain name after the registration was
inadvertently permitted to lapse by Complainant, noting that “Respondent was
aware of the Complainant’s well-known business and its mark and intended to
exploit the mark”).
Respondent
is referring Internet traffic that seeks out the <aol.tv> domain name
to a competitor’s news site. The Panel
strongly finds that appropriating Complainant’s mark to refer customers seeking
Complainant to Complainant’s competitors is evidence of bad faith registration
and use pursuant to Policy ¶ 4(b)(iii).
See EBAY, Inc. v.
MEOdesigns, D2000-1368 (Dec. 15, 2000) (finding that Respondent registered
and used the domain name <eebay.com> in bad faith where Respondent has
used the domain name to promote competing auction sites); see also Puckett v. Miller, D2000-0297 (WIPO June
12, 2000) (finding that Respondent has diverted business from Complainant to a
competitor’s website in violation of Policy ¶ 4(b)(iii)).
The Panel also finds that because Complainant’s AOL mark
is famous and Respondent has evidenced that he was aware of Complainant’s mark
upon registering <aol.tv>,
Respondent had notice of Complainant’s AOL mark. The Panel may find that Respondent’s notice of Complainant’s
rights in the AOL mark evidences that Respondent registered and used the <aol.tv> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys.,
FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal
presumption of bad faith, when Respondent reasonably should have been aware of
Complainant’s trademarks, actually or constructively”); see also 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 worldwide prominence of the
mark and thus Respondent registered the domain name in bad faith).
Lastly,
the Panelist has found that in reading the record presented, the Respondent has
completely failed to set forth any argument, logical, legal or otherwise
compelling in support of Respondent’s position. For the most part, Respondent has merely submitted copies of
articles and correspondence indicating that Respondent registered the disputed
domain name when the Complainant’s web hosting company “inadvertently released”
the domain name <aol.tv>. An inadvertent error by a hosting
company can in no way serve to allow another to register said domain name and
thereby claim legitimate ownership without being tainted with bad faith and
capitalizing on the trading of another’s well established name.
DECISION
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <aol.tv>
domain name be TRANSFERRED from Respondent to Complainant.
Barry Schreiber, Panelist
Dated: December 1, 2004
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