America Online, Inc. v. D Brown
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 D Brown (“Respondent”)
421 7th Street SW, Rochester, MN 55902.
REGISTRAR AND DISPUTED
DOMAIN NAME
The domain name at issue
is <aolchat.com>, registered with Dotster.
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.
William H. Andrews as
Panelist.
PROCEDURAL HISTORY
Complainant submitted a
Complaint to the National Arbitration Forum electronically on July 19, 2005;
the National Arbitration Forum received a hard copy of the Complaint on July
22, 2005.
On July 20, 2005,
Dotster confirmed by e-mail to the National Arbitration Forum that the domain
name <aolchat.com> is registered with Dotster and that the
Respondent is the current registrant of the name. Dotster has verified that Respondent is bound by the Dotster
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 25, 2005, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of August 15, 2005 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@aolchat.com by e-mail.
A timely Response was
received and determined to be complete on August 16, 2005.
On August 25, 2005,
pursuant to Complainant’s request to have the dispute decided by a
single-member Panel, the National Arbitration Forum appointed William H.
Andrews as Panelist.
RELIEF SOUGHT
Complainant requests
that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant, America
Online, Inc., contends it has rights in the AOL and AOL.COM marks and that
Respondent has violated those rights by registering the <aolchat.com>
domain name. Complainant contends its
marks are famous and were known to Respondent when Respondent registered the
domain name at issue in 2000.
Complainant contends Respondent has no rights or legitimate interests in
the domain name. Complainant alleges
that Respondent is not named or commonly known as AOL, nor is he licensed or
authorized to use the AOL mark.
Complainant contends the domain was registered in bad faith evidenced by
the following facts: the domain was registered many years after the AOL marks
had become famous and well-known to consumers, and that Respondent had at least
constructive notice of the marks due to the same; Respondent registered the
domain name for the sole purpose of providing commercial online services under
the AOL mark and profiting from the consumer confusion that would result;
Respondent admitted, in a telephone conversation with AOL’s attorney, that he
uses the <aolchat.com> domain to generate sufficient income to pay
for his rent; Respondent offered to sell the domain name for $10,000;
Respondent has engaged in a pattern of cybersquatting due to his registration
of well known DELL marks, DELL-OS.COM, and DELL-OS.NET; and that Respondent’s
bad faith registration and use is demonstrated by numerous prior UDRP decisions
stating that the use of the AOL mark in this manner is a violation of ICANN
rules. In sum, based upon (1) the fame
of the AOL marks; (2) AOL’s trademark registrations; (3) Respondent’s use of
the domain to route to a commercial site; (4) Respondent’s admitted use of the
domain to generate income to pay his rent; (5) Respondent’s offer to sell the
domain name; and (6) Respondent’s bad faith pattern of infringing, Complainant
alleges Respondent cannot in good faith claim that he had no knowledge of AOL’s
rights in its very famous AOL marks, and cannot claim that he made a legitimate
noncommercial or fair use of the subject domain.
B. Respondent
Respondent
alleges that Complainant’s rights do not extend to all uses of domain names
using the letters, A, O, and L, and argues that a company named Alpha Omega
Computer systems, whose domain is <ao.com>, should be able to allege that
Complainant is infringing on its mark given Complainant’s logic. Respondent contends that his domain name
does not cause confusion with Complainant’s mark, arguing that most internet
users use a search engine to find sites and that his own google search of “aol”
and “chat” does not list <aolchat.com> in the first five pages of
results. Respondent alleges that he
took no actions to associate his domain name with Complainant. Respondent contends that he registered the <aolchat.com>
domain with the idea of establishing a chat application that would allow
anyone to talk with anyone else in response to “Cnet IM Wars.” The idea behind the domain was originally
“Another Open Language Chat,” which eventually became “An Open Language
Chat.” Respondent contends he had the
idea in mind before being notified of a dispute with Complainant, which he
argues is apparent from a description he associated with the <aolchat.com>
domain in April 2004. Respondent
contends that he was unable to develop his idea because of life circumstances,
including his loss of employment from Mayo Clinic on September 11, 2001. Respondent admits that he ultimately parked
the domain with Afternic.com, and used the domain as a source of revenue, but alleges
that that was not his original purpose and that he only resorted to use of the
domain as a revenue source due to his long-term unemployment, and other life
circumstances. Respondent denies that
he offered to sell the domain name for $10,000. Rather, he contends that he only indicated a minimum price, for
which the domain could be sold, and that he was not obligated to sell the
domain for that price. Respondent
admits that he registered the “dell-os” names Complainant referenced in its
complaint, and admits that his decision to do so was not wise. He does not claim that he has any rights in
the “dell-os” names, but maintains that his registration and use of <aolchat.com>
is unrelated to his registration of the “dell-os” name.
C. Additional
Submissions
The parties submitted
nothing in addition to the initial pleadings.
FINDINGS
Complainant is the owner
of numerous trademark registrations worldwide for the AOL mark, including U.S.
trademark registration Nos. 1,977,731 and 1,984,337, which were registered on
June 4, 1996, and July 2, 1996 respectively.
Complainant uses its mark AOL.COM in connection with its official
Internet website. Complainant owns
federal trademark registration Nos. 2,325,291 and 2,325,292 for the AOL.COM
mark. Complainant’s marks are used in
connection with, among other things, providing services and general interest
information on the Internet and around the world. Complainant has invested substantial sums of money in developing
and marketing its services and marks and has become well-known throughout the
world as a result of its efforts.
Complainant has used the AOL mark continuously and extensively in
interstate and international commerce since 1989 and the AOL.COM mark since
1992 in connection with computer online services and other Internet related
services.
Respondent registered
the aolchat.com domain name in September, 2000, long after Complainant’s use
and registration of the AOL marks occurred.
Complainant’s AOL mark was well-known when Respondent registered the domain. Respondent has never been known as AOL, nor
did he ever receive authorization from Complainant to use the AOL name. Respondent had at least constructive
knowledge of Complainant’s rights in the name AOL when he registered the
domain. Respondent never developed an application for <aolchat.com>. Respondent never made a non-commercial use
of the domain. The domain name is
currently being used for profit and Respondent is using the domain to generate
income for himself. Offers are
being solicited, at a minimum of $10,000, for the sale of the domain name.
For the reasons set
forth below, the Panelist concludes that Complainant has met its burden and
that the <aolchat.com> domain name should be transferred to
Complainant.
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
unquestionably has established rights in the AOL mark and name. It has U.S. trademark registrations dating
to 1996. (Complaint, par. 1; Annex B). Complainant also has registered the AOL.COM
mark. Complainant uses these marks in
connection with its legitimate business activities. Complainant has used its marks since 1989, long before
Respondent’s registration of <aolchat.com>. The AOL mark is well-known and Complainant
has invested substantial sums of money in developing and marketing its services
and marks. (Complaint, par. 4). The addition of the term “chat” by
Respondent to the AOL mark does not distinguish the domain name from
Complainant. 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 term or word). Complainant has rights in the mark and the
domain name is confusingly similar to Complainant’s well-known mark.
Accordingly, the Panelist concludes that
the elements of Policy ¶ 4(a)(i) have been established by Complainant.
Rights or Legitimate
Interests
When the Complainant has established its
rights in the mark, and has asserted that the Respondent has no rights or
legitimate interests with respect to the domain name, the burden shifts to the
Respondent to show that it does have rights or legitimate interests pursuant to
the policy.
Complainant has
established its rights in the mark and has alleged that Respondent has no
legitimate interest in the AOL name.
Respondent has failed to establish that he has a right or legitimate
interest in the domain name. There is
no evidence that Respondent is known by the AOL name. Respondent has never obtained authorization to use the name.
Additionally, Complainant’s registration and use of the mark was well
established before Respondent registered the domain. Given Complainant’s prior registrations, Respondent was at least
on constructive notice of Complainant’s rights in the AOL and AOL.COM
name. See Gallup, Inc. v. Amish
Country Store, FA 96209 (Nat.Arb.Forum Jan. 23, 2001) (finding that the
respondent does not have rights in a domain name when the Respondent is not
known by the name); see also Charles Jourdan Holding AG v. AAIM,
D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests
where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior
rights in the domain name precede Respondent’s registration; (3) Respondent is
not commonly known by the domain name in question). Complainant’s mark is well-known and has been since long before
Respondent registered the domain name.
Respondent has not used the domain in
connection with a bona-fide offering of goods or services and is not making a
fair non-commercial use of the mark currently.
Respondent claims he had an idea for “an open language chat” and had
planned to develop an application where “anyone could talk to anyone.” However, Respondent never developed the
application, and subsequently parked the domain. Although he alleges his description of his proposed use was in
place in 2004, and that he was not notified of a dispute with Complainant until
2005, it is inescapable that Complainant’s rights in the mark existed long
before 2004 and that Respondent had at least constructive notice of
Complainant’s marks, by virtue of Complainant’s use of the marks since 1989 and
its registrations, and thus was aware that his use of the name would be
disputed. Respondent has subsequently
used the domain name solely as a source of income. Although Respondent alleges that he has been forced to generate
income from the domain name as a result of his life circumstances, that does not
alter the fact that Respondent is not using the domain name for a legitimate
purpose.
Accordingly, the Panelist concludes that
Respondent does not have a legitimate right or interest in the disputed domain
name under Policy ¶ 4(a)(ii).
Registration and Use in
Bad Faith
The panel may consider a number of
factors in reaching a determination on the question of bad faith including, but
not limited to, those factors enunciated by paragraph 4(b) of the ICANN
Policy. Such factors include:
i) Whether there are circumstances
indicating that Respondent has registered or has acquired the domain name
primarily for the purpose of selling, renting or otherwise transferring the
domain name registration to the Complainant who is the owner of the trademark
or service mark or to a competitor of that Complainant, for valuable
consideration in excess of Respondent’s documented out of pocket costs directly
related to the domain name; or
ii) Whether Respondent has registered the
domain name in order to prevent the owner of the trademark or service mark from
reflecting the mark in a corresponding domain name, provided that Respondent
has engaged in a pattern of such conduct; or
iii) Whether Respondent has registered
the domain name primarily for the purpose of disrupting the business of a
competitor; or
iv) Whether by using the domain name,
Respondent has intentionally attempted 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.
While each of the four
circumstances listed under Policy ¶ 4(b), if proven, evidences bad faith use
and registration of the domain name, additional factors can also be used to
support findings of bad faith. America
Online, Inc. v. Alliance for Online Living, FA 414567 (Nat. Arb. Forum,
March 22, 2005). The examples of bad faith
in paragraph 4(b) are intended to be illustrative, rather than exclusive, and
the Panel must look to the totality of the circumstances. Id.
On the submissions provided, the Panelist
concludes that the bad‑faith element has been established.
Complainant has used the
AOL marks since 1989, and AOL.com since 1992.
It has registered trademarks predating Respondent’s registration of the
domain name. In America Online, Inc.
v. Alliance for Online Living, FA 414567 (Nat. Arb. Forum, March 22, 2005),
the Panelist found that “Respondent’s registration of the disputed domain name,
a domain name that incorporates Complainant’s well-known mark in its entirety
and simply adds generic words, suggests that Respondent knew of Complainant’s
rights in the AOL mark.” In that case,
a registrant, known as “Alliance for Online Living,” registered the
<aolcybersex.com> domain name, which the Panelist concluded should be
transferred to Complainant, AOL. There
is a legal presumption of bad faith when the Respondent reasonably should have
been aware, at least constructively, of Complainant’s rights to the mark. See Digi Int’l v. DDI Sys., FA 124506
(Nat. Arb. Forum Oct. 24, 2002); see also Samsonite Corp. v. Colony Holding,
FA 94313 (Nat. Arb. Forum, Apr. 17, 2000) (evidence of bad faith includes
actual or constructive knowledge of commonly known marks at the time of
registration); see also Entrepreneur Media, Inc. v. Smith, 279 F.3d
1135, 1148 (9th Cir. Feb. 11, 2002) (finding that “where an alleged
infringer chooses a mark he knows to be similar to another, one can infer an
intent to confuse”).
Here, Respondent
registered a domain name incorporating Complainant’s mark, which was well-known
at the time of Respondent’s registration.
As one Panel stated, in 2000, “It 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.” America Online,
Inc. v. Viper, WIPO D2000-1198.
There are “domain names that are so obviously connected with
Complainants that the use or registration by anyone other than the Complainants
suggests ‘opportunistic bad faith.’” See Pavillion Agency, Inc. v.
Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000). The disputed domain name represents such an
instance.
Respondent was not licensed or authorized
to use Complainant’s mark for any purpose.
Respondent contends that he registered the name with a legitimate
application in mind. He insists that he
used the letter combination “aol” as an acronym for “an open language” chat and
intended to develop a chat application that would allow anyone to talk with
anyone. Numerous cases, involving the
Complainant, have found that such acronyms are not permissible, including uses
of the <aolutility.com> and <aolcasino.com> domain names and the
use of AOL as an acronym for “Adults On Line Casino,” among others.
Despite Respondent’s stated intentions,
there is no evidence of any demonstrable preparations by Respondent to use the
name legitimately at any time.
Respondent’s description of what he intended to do was in place only a
month or two before he parked the domain with Afternic and occurred nearly four
years after his initial registration.
Respondent apparently made no use whatsoever of the domain name in the
intervening three and one half years.
Complainant alleges Respondent offered to sell the domain for $10,000.
While Respondent contends he is not obligated to sell the domain, he has set a
minimum price of $10,000 to sell it, and offers are currently being solicited
which are undoubtedly in excess of Respondent’s out of pocket costs. Respondent also has admitted that he parked
the name with Afternic as a potential source of revenue and that he is currently
earning revenue from the site. Respondent’s
subsequent registration of <dell-os.com> and <dell-os.net>,
although separated by four years, indicates a pattern of inappropriate activity
with regard to registration and use of domain names. The Panelist can only conclude, from the evidence presented, that
the domain name was registered with knowledge of Complainant’s rights in the
mark; that the registration of the domain name, so closely associated with
Complainant, would likely divert or confuse users searching for Complainant;
and that the domain name is currently and has solely been used for Respondent’s
commercial gain. Respondent’s life
circumstances, no matter how dire, do not entitle him to infringe and trade
upon the registered marks of others, including Complainant, for a profit. Accordingly, the Panelist concludes that
Policy ¶ 4(a)(iii) has been satisfied.
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 <aolchat.com> domain name be TRANSFERRED from
Respondent to Complainant.
William H. Andrews,
Panelist
Dated: September 6, 2005
National
Arbitration Forum
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