America Online, Inc. v. Atlanta Universal
Corporation a/k/a Domain Services
Claim Number: FA0508000537980
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 Atlanta Universal
Corporation a/k/a Domain Services (“Respondent”),
represented by Daniel Mullen,
Weidestrasse 137a, Hamburg, 22083, Germany.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <aolexpress.com>,
registered with Enom, Inc.
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.
Timothy D. O’Leary as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on August
11, 2005; the National Arbitration Forum received a hard copy of the Complaint
on August 12, 2005.
On
August 11, 2005, Enom, Inc. confirmed by e-mail to the National Arbitration
Forum that the <aolexpress.com>
domain name is registered with Enom, Inc. and that the Respondent is the
current registrant of the name. Enom,
Inc. has verified that Respondent is bound by the Enom, 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
August 15, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of September
6, 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@aolexpress.com by e-mail.
A
Response was received and determined to be complete on September 7, 2005.
A complete hard copy of the Response was not
received until after the response deadline set forth pursuant to ICANN Rule
5(a). However, I exercise my discretion and consider Respondent’s Response in
deciding this case.
On September 14, 2005, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed Timothy D. O’Leary as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
I.
Complainant’s Contentions
A. Identical and/or Confusingly Similar
The domain name <aolexpress.com> is nearly identical and confusingly similar
to the AOL marks. Consumer confusion is
particularly likely because the subject domain name uses the famous AOL mark as
a prefix to the generic or merely descriptive word “express.” The connotation, therefore, is that the
services provided in connection with the domain name are affiliated with, or
endorsed by, AOL.
Long
prior to Respondent’s registration of the infringing domain name <aolexpress.com>, AOL adopted and began using its
marks in connection with various entertainment, computer, and Internet-related
goods and 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 through traditional
media.
AOL
is a global leader in the computer, entertainment and online services
industries. The company has invested
substantial sums of money in developing and marketing its products, services
and world-famous marks.
Sales under the AOL marks exceed several
billion dollars each year, and the general public has come to associate the AOL
marks with products and services of a high and uniform quality.
Because of these substantial advertising
expenditures and sales, the distinctive AOL marks have become famous among
members of the purchasing public.
B. Rights or Legitimate Interests
Respondent
has no rights or legitimate interests in the subject domain name. Respondent is not licensed or authorized to
use the AOL mark, and Respondent (Atlanta Universal Corporation) is not named
or commonly known as AOL.
C. Registration and Use in Bad Faith
Respondent’s bad faith registration of <aolexpress.com> is evidenced by
the fact that the domain was registered long after the AOL mark was registered
in the United States and Canada, and many years after the AOL mark had become
famous. Given the international fame
associated with the AOL mark, Respondent cannot claim in good faith that it
registered the domain name for a legitimate purpose, or that it had no
knowledge of the AOL mark or services.
As such, Respondent registered the domain in bad faith.
Respondent’s bad faith use of <aolexpress.com> is shown by the
commercial Web sites promoted under the domain. Specifically, Respondent used <aolexpress.com> to promote Respondent’s own company name
(“Atlanta Universal”), the third party MovieLink, and Netscape’s Internet
services (Netscape is a subsidiary of AOL).
Respondent’s use of an AOL domain name to promote these three companies
is likely to confuse and mislead consumers
into falsely believing that AOL and/or Netscape are affiliated with Atlanta
Universal and/or MovieLink. By
promoting its own company, and attempting to collect royalties from misdirected
Internet traffic, Respondent used <aolexpress.com>
in bad faith.
Because of Mr. Mullen’s preference for
using aliases, AOL only recently learned that the same person was behind
Atlanta Universal and MSN/MSN Networks; otherwise, AOL would have included <aolexpress.com> in the initial
UDRP complaint. This information shows
that Respondent has carefully selected famous marks and registered domain names
that infringe upon them. Respondent’s intentional
recidivism and knowing infringements constitute a bad faith use of the
infringing domain name pursuant to Policy ¶ 4(b)(ii).
II. Respondent’s Contentions.
A. Identical and/or Confusingly
Similar
Complainant is attempting to claim that
“aol” in combination with “express” clearly is a mark that would be confused
with AOL alone, yet in Digital City v. Smalldomain, D2000-1283 (WIPO
Nov. 6, 2000), a panel did not find confusing similarity as a result of a
respondent adding a generic suffix "map" to Complainant's mark
"digital city."
No product or service that AOL would
allege to offer would consist of operating a courier or freight service or of
making fruit juice. Clearly, as in the CIPO trademark registration example of
the South Seas Ice Cream Company, the two parts are so clearly differentiated
that in combination the resulting mark is both valid and able to be
trademarked. Given the over five year window of ownership and use of the
AOLEXPRESS mark, Complainant is now attempting to forestall a trade mark
registration by Respondent through the misuse of the UDRP once again.
In terms of demographics, it is highly
unlikely that the highly sophisticated contractors and clients using the system
have any use of or interest in the <aol.com> site.
B. Rights or Legitimate Interests
Atlanta Universal Corporation is a
corporation formed under federal jurisdiction of the Government of Canada with
its head office at Charlottetown, Prince Edward Island, Canada, which engages
in the production of high-value graphic and motion video design work for a
roster of clients ranging from Westcan to M1 Capital and other well-known
companies in Canada. Its use of the <aolexpress.com>
domain for its contractors to use as a platform for exchanging messaging and
work assignments has suddenly come to become the target of this UDRP dispute
after seven years of existence of the <aolexpress.com>
domain, over five years of which was known to the Complainant.
AOL did not request the transfer of <aolexpress.com> in 2000, despite
specific knowledge of the registration of the domain by Mullen, and Mullen was
not compensated for the <aolexpress.com>
domain acquisition at any time by AOL. When Mullen ended his employment with
AOL some year and a half later, it remained his property and he later
transferred it along with other assets to the Atlanta Universal Corporation for
use as its rapid or quick-service "express" low-end graphics and
design service using contractors located in India and Eastern Europe.
C. Registration and Use in Bad Faith
Respondent has not acted in bad faith,
operated with the ongoing acquiescence of Complainant
for over five years, and has not infringed any marks, under both Canadian law
and practice, is not infringing, and under his agreements under German law with
Complainant with regard to both employment and its termination, Mullen enjoys
free and unfettered ownership of the domain registration.
Where a question of long-held use exists,
NAF has declined to order a transfer of a domain, especially when common law
trade marks have developed and, recognizing the doctrine of laches, the
Complainant has failed to act over an extended length of time, even when an
exactly identical registered trademark and a domain name are in the UDRP, as in
Fetish Factory, Inc. v. The Fetish Factory, FA 99610 (Nat. Arb. Forum
Nov. 8, 2001).
Complainant waited until Respondent's
business had been established and after more than five years before selectively
declaring the similarity in name was an issue. The look and feel of the two
parties' sites is substantially different. The parties' logos are extremely
different in look and Respondent always prominently featured its company name
on the site.
Complainant is not prevented by the
registration by Respondent of <aolexpress.com>
to use its mark AOL, and Complainant in fact uses <aol.com> which
corresponds directly with its mark. It does not use either <aolworld.com>
or <instantaol.com>, and a visitor entering either URL is confronted with
a "not found" error.
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.
FINDINGS
I
find the issues on this element in favor of Complainant.
Complainant
asserts rights in the AOL mark through registration of the mark with numerous
national trademark authorities, including the United States Patent and
Trademark Office (“USPTO”) (e.g., Reg. No. 1,977,731 issued June 4, 1996) and
in Canada, Respondent’s country of operation, with the Canadian Intellectual
Property Office (“CIPO”) (Reg. No. TMA493161 issued April 17, 1998). See Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) ("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.").
Complainant
contends that Respondent’s additions of the generic term “express” and the
generic top-level domain “.com” to Complainant’s mark are not enough to
overcome a finding of confusing similarity between Respondent’s <aolexpress.com>
domain name and Complainant’s AOL.COM mark pursuant to Policy ¶ 4(a)(i). 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); see also Sony
Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that
“[n]either the addition of an ordinary descriptive
word . . . nor the suffix ‘.com’ detract from the overall
impression of the dominant part of the name in each case, namely the trademark
SONY” and thus Policy ¶ 4(a)(i) is satisfied).
B. Rights or Legitimate Interests
Policy ¶ 4(a)(ii).
I
find the issues on this element in favor of Complainant.
Once
Complainant makes a prima facie case in support of its allegations, the
burden shifts to Respondent to show that it does have rights or legitimate
interests pursuant to Policy ¶ 4(a)(ii).
See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21,
2000) (holding that, where the complainant has asserted that the respondent has
no rights or legitimate interests with respect to the domain name, it is
incumbent on the respondent to come forward with concrete evidence rebutting
this assertion because this information is “uniquely within the knowledge and
control of the respondent”).
Complainant contends that Respondent is neither
commonly known by the <aolexpress.com> domain name nor authorized
to register domain names featuring Complainant’s AOL mark. I find that Respondent has not established
rights or legitimate interests in the disputed domain name pursuant to Policy ¶
4(c)(ii). See Compagnie de Saint
Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where
the respondent was not commonly known by the mark and never applied for a
license or permission from the complainant to use the trademarked name).
Furthermore,
Complainant asserts that Respondent is using the confusingly similar <aolexpress.com>
domain name to operate a website that features links to and banner
advertisements for various commercial enterprises. This use of the disputed domain name is not a use in connection
with a bona fide offering of goods or services pursuant to Policy ¶
4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶
4(c)(iii).
I find the issues on this element in
favor of Complainant.
Complainant asserts that Respondent is
using the confusingly similar <aolexpress.com> domain name to operate
a website that features links to and banner advertisements for various
commercial enterprises, through which Respondent presumably earns referral
fees. I find that Respondent is
capitalizing on the inherent similarity between its domain name and Complainant’s
AOL mark to attract Internet users to its commercial website, and I conclude
that Respondent registered and used the disputed domain name in bad faith
pursuant to Policy ¶ 4(b)(iv). See
Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that
the respondent’s registration of an infringing domain name to redirect Internet
users to banner advertisements constituted bad faith use of the domain name).
Furthermore, I find that Respondent
registered the disputed domain name with constructive knowledge of
Complainant’s rights in the AOL mark due to Complainant’s registrations of the
mark with the USPTO and CIPO. Moreover,
I find that Respondent had actual knowledge of Complainant’s mark due to the
immense international fame of the AOL mark.
Thus, the Panel may conclude that Respondent registered the <aolexpress.com>
domain name with actual or constructive knowledge of Complainant’s rights in
the AOL mark, which is evidence of bad faith registration and use pursuant to
Policy ¶ 4(a)(iii). See Samsonite Corp. v. Colony Holding, FA
94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith
includes actual or constructive knowledge of a commonly known mark at the time
of registration).
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 <aolexpress.com>
domain name be TRANSFERRED from Respondent to Complainant.
Timothy D. O’Leary, Panelist
Dated: October 6, 2005
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