America Online, Inc. v Asianon-Line

America Online, Inc. ("AOL") COMPLAINANT,

vs.

Asian On-Line This Domain For Sale, RESPONDENT.

DECISION

Forum File No.: FA0004000094636

The above entitled matter came on for an administrative hearing on May 4, 2000 before the undersigned on the Complaint of America Online, Inc. ("AOL"), hereafter "Complainant", against Asian On-Line This Domain For Sale, hereafter "Respondent". Complainant was represented by: James R. Davis. II, 1050 Connecticut Avenue N.W., Washington, D.C. 20036. Respondent represented itself and submitted a written response through Calvin Gruneck 67/4 MOO 3 Banlantong Tambon Huaysai Sankampang Chiangmai 50130 Thailand: Upon the written submitted record, the following DECISION is made:

PROCEDURAL FINDINGS

Domain Name: ao-l.org
Domain Name Registrar: Internet Domain Registrars
Domain Name Registrant: Asian On-Line This Domain Is For Sale
Date of Domain Name Registration: January 25, 2000
Date Complaint Filed: April 12, 2000

Domain Name: ao-laustralia.com
Domain Name Registrar: Internet Domain Registrars
Domain Name Registrant: Asian On-Line This Domain Is For Sale
Date of Domain Name Registration: January 24, 2000
Date Complaint Filed: April 12, 2000

Domain Name: ao-lchina.com
Domain Name Registrar: Internet Domain Registrars
Domain Name Registrant: Asian On-Line This Domain Is For Sale
Date of Domain Name Registration: January 21, 2000
Date Complaint Filed: April 12, 2000

Domain Name: ao-leurope.com
Domain Name Registrar: Internet Domain Registrars
Domain Name Registrant: Asian On-Line This Domain Is For Sale
Date of Domain Name Registration: January 30, 2000
Date Complaint Filed: April 12, 2000

Domain Name: ao-lhongkong.com
Domain Name Registrar: Internet Domain Registrars
Domain Name Registrant: Asian On-Line This Domain Is For Sale
Date of Domain Name Registration: January 22, 2000
Date Complaint Filed: April 12, 2000

Domain Name: ao-lindia.com
Domain Name Registrar: Internet Domain Registrars
Domain Name Registrant: Asian On-Line This Domain Is For Sale
Date of Domain Name Registration: January 22, 2000
Date Complaint Filed: April 12, 2000

Domain Name: ao-lindonesia.com
Domain Name Registrar: Internet Domain Registrars
Domain Name Registrant: Asian On-Line This Domain Is For Sale
Date of Domain Name Registration: January 24, 2000
Date Complaint Filed: April 12, 2000

Domain Name: ao-ljapan.com
Domain Name Registrar: Internet Domain Registrars
Domain Name Registrant: Asian On-Line This Domain Is For Sale
Date of Domain Name Registration: January 21, 2000
Date Complaint Filed: April 12, 2000

Domain Name: ao-lkorea.com
Domain Name Registrar: Internet Domain Registrars
Domain Name Registrant: Asian On-Line This Domain Is For Sale
Date of Domain Name Registration: January 22, 2000
Date Complaint Filed: April 12, 2000

Domain Name: ao-lmalaysia.com
Domain Name Registrar: Internet Domain Registrars
Domain Name Registrant: Asian On-Line This Domain Is For Sale
Date of Domain Name Registration: January 22, 2000
Date Complaint Filed: April 12, 2000

Domain Name: ao-lphilippines.com
Domain Name Registrar: Internet Domain Registrars
Domain Name Registrant: Asian On-Line This Domain Is For Sale
Date of Domain Name Registration: January 24, 2000
Date Complaint Filed: April 12, 2000

Domain Name: ao-lsingapore.com
Domain Name Registrar: Internet Domain Registrars
Domain Name Registrant: Asian On-Line This Domain Is For Sale
Date of Domain Name Registration: January 21, 2000
Date Complaint Filed: April 12, 2000

Domain Name: ao-lsouthamerica.com
Domain Name Registrar: Internet Domain Registrars
Domain Name Registrant: Asian On-Line This Domain Is For Sale
Date of Domain Name Registration: January 30, 2000
Date Complaint Filed: April 12, 2000

Domain Name: ao-ltaiwan.com
Domain Name Registrar: Internet Domain Registrars
Domain Name Registrant: Asian On-Line This Domain Is For Sale
Date of Domain Name Registration: January 22, 2000
Date Complaint Filed: April 12, 2000

Domain Name: ao-lthailand.com
Domain Name Registrar: Internet Domain Registrars
Domain Name Registrant: Asian On-Line This Domain Is For Sale
Date of Domain Name Registration: January 22, 2000
Date Complaint Filed: April 12, 2000

Domain Name: ao-lus.com
Domain Name Registrar: Internet Domain Registrars
Domain Name Registrant: Asian On-Line This Domain Is For Sale
Date of Domain Name Registration: January 22, 2000
Date Complaint Filed: April 12, 2000
Date of Commencement of Administrative Proceeding in accordance with Rule 2(a) and Rule 4(c): April 19, 2000 Respondent’s Response in accordance with Rule 5(a): May 9, 2000

After reviewing the Complaint, and determining it to be in administrative compliance, the National Arbitration Forum (The Forum) forwarded the Complaint to the Respondent on April 19, 2000 in compliance with Rule 2(a), and the administrative proceeding was commenced pursuant to Rule 4(c). In compliance with Rule 4(d), The Forum immediately notified Internet Domain Registrars, the Internet Corporation for Assigned Names and Numbers (ICANN), and the Complainant that the administrative proceeding had commenced. Respondent, through Calvin Gruneck, submitted a response to The Forum pursuant to Rule 5(a) on April 25, 2000. Between January 21, 2000 and January 30, 2000, Respondent registered the domain names "ao-l.org; ao-laustralia.com; ao-lchina.com; ao-leurope.com; ao-lhongkong.com; ao-lindia.com; ao-lindonesia.com; ao-ljapan.com; ao-lkorea.com; ao-lmalaysia.com; ao-lphilippines.com; ao-lsingapore.com; ao-lsouthamerica.com; ao-ltaiwan.com; ao-lthailand.com; and ao-lus.com (hereinafter "Disputed Domain Names") with Internet Domain Registrars, the entity that is the Registrar of the domain names. On April 19, 2000, Internet Domain Registrars verified that Respondent is the Registrant for the Disputed Domain Names, and that further by registering its Disputed Domain Names with Internet Domain Registrars, Respondent agreed to resolve any dispute regarding its Disputed Domain Names through ICANN’s Rules for Uniform Domain Name Dispute Resolution Policy, and the Uniform Domain Name Dispute Resolution Policy. FINDINGS OF FACT

That Complainant is the owner of numerous trademark registrations worldwide for the mark AOL including registrations in China, Hong Kong, Japan and Taiwan (collectively AOL Marks). Complainant also uses the mark AOL.com as the domain name for its portal web site. The AOL marks are used extensively at this portal Web site.
That as early as 1989 for the mark AOL and 1992 for the mark AOL.com, Complainant adopted and began using many of its AOL marks in connection with computer on-line services and other Internet-related services. The AOL marks have been used continuously and extensively in interstate and international commerce in connection with the advertising and sale of Internet and computer related services.
That Complainant has invested substantial sums of money in developing and marketing its services and marks.
That Respondent registered the domain names "ao-l.org; ao-laustralia.com; ao-lchina.com; ao-leurope.com; ao-lhongkong.com; ao-lindia.com; ao-lindonesia.com; ao-ljapan.com; ao-lkorea.com; ao-lmalaysia.com; ao-lphilippines.com; ao-lsingapore.com; ao-lsouthamerica.com; ao-ltaiwan.com; ao-lthailand.com; and ao-lus.com" in bad faith and has no rights or legitimate interests in respect to said domain names. The following is evidence of Respondent’s bad faith:

That Respondent first registered the Disputed Domain Names between January 21, 2000 and January 30, 2000, long after Complainant’s adoption and first use of the mark "AOL" in 1989, and long after Complainant began using its "AOL.com" mark in 1992.
That Respondent has made no legitimate use of the Disputed Domain Names and it seeks to profit from the registration of said domain names by trading upon the goodwill associated with the AOL marks. Respondent’s profit motive is evidenced by its offer to sell said Disputed Domain Names by listing in the WHOIS directory "…This domain name is for sale….".
Respondent has engaged in a pattern of registering domain names that infringe upon other entities’ marks.

Complainant’s prayer for relief requests that the Disputed Domain Names be transferred from Respondent to Complainant.

CONCLUSIONS

The undersigned certifies that he has acted independently and has no known conflict of interest to serve as the Arbitrator in this proceeding. Having been duly selected, and being impartial, the undersigned makes the following findings and conclusions:

The domain names "ao-l.org; ao-laustralia.com; ao-lchina.com; ao-leurope.com; ao-lhongkong.com; ao-lindia.com; ao-lindonesia.com; ao-ljapan.com; ao-lkorea.com; ao-lmalaysia.com; ao-lphilippines.com; ao-lsingapore.com; ao-lsouthamerica.com; ao-ltaiwan.com; ao-lthailand.com; and ao-lus.com", registered by Respondent between January 21, 2000 and January 30, 2000 with Internet Domain Registrars are nearly identical and confusingly similar to the "AOL" marks in which Complainant has rights and to which Respondent has no right or legitimate interest.
Respondent registered and acquired the domain names "ao-l.org; ao-laustralia.com; ao-lchina.com; ao-leurope.com; ao-lhongkong.com; ao-lindia.com; ao-lindonesia.com; ao-ljapan.com; ao-lkorea.com; ao-lmalaysia.com; ao-lphilippines.com; ao-lsingapore.com; ao-lsouthamerica.com; ao-ltaiwan.com; ao-lthailand.com; and ao-lus.com" primarily for the purpose of selling or otherwise transferring the said domain name registrations for valuable consideration in excess of Respondent’s out-of-pocket costs directly related to the domain names. Respondent registered and used the domain names in bad faith.

DECISION Based upon the above findings and conclusions, and pursuant to Rule 4(i), it is decided as follows: THE UNDERSIGNED DIRECTS THAT THE DOMAIN NAMES "ao-l.org; ao-laustralia.com; ao-lchina.com; ao-leurope.com; ao-lhongkong.com; ao-lindia.com; ao-lindonesia.com; ao-ljapan.com; ao-lkorea.com; ao-lmalaysia.com; ao-lphilippines.com; ao-lsingapore.com; ao-lsouthamerica.com; ao-ltaiwan.com; ao-lthailand.com; and ao-lus.com" REGISTERED BY RESPONDENT Asian On-Line This Domain Is For Sale BE TRANSFERRED TO COMPLAINANT America Online, Inc. (AOL). Dated: May 17, 2000, Justice Anthony J. Mercorella (ret.), Arbitrator