WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
America Online, Inc. and AOL International
Case No. D2000-0654
1. The Parties
America Online, Inc., 22000 AOL Way, Dulles, Virginia 20166, USA
AOL International, 19 Ameral Place, Georges Hall, Sydney, NSW 21982, Australia
2. The Domain Name and Registrar
3. Procedural History
The Complaint was received by WIPO by email on June 22, 2000, and in hard copy on June 26, 2000. WIPO has verified that the Complaint satisfies the formal requirements of the Policy, the Rules and the Supplemental Rules and that payment was properly made. The Administration Panel ("the Panel") is satisfied that this is the case.
The Complaint was properly notified in accordance with the Rules, paragraph 2(a). On July 12, 2000 WIPO sent to the Respondent an email seeking confirmation that the Notification of Complaint had been received and drawing the Respondentís attention to the fact that its response was due by July 22, 2000. The Respondent has not responded to the Complaint and on July 24, 2000 WIPO issued a Respondent Default Notice.
The Panel was properly constituted. The undersigned Panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence.
No further submissions were received by WIPO or the Panel as a consequence of which the date scheduled for the issuance of the Panelís Decision was August 13, 2000. However, unforeseen circumstances prevented the Panelist from meeting this deadline and the issuance of the Decision has been delayed by a week.
4. Factual Background
The Complainant is America Online, Inc. which is widely known worldwide for its internet services provided primarily under and by reference to the acronym AOL. The Complainant is the proprietor of numerous trade mark registrations worldwide for the mark AOL including US registrations numbers 1,977,731 and 1,984,337 which were registered on June 4, 1996 and July 2, 1996 respectively. Evidence of these registrations was put before the Panel.
AOL also owns federal trade mark registrations numbers 2,325,291 and 2,325,291 for the mark AOL.COM, evidence of which was also provided to the Panel.
The Complainant adopted and began using its marks in connection with computer online services and other internet related services at least as early as 1989 for the mark AOL and 1992 for the mark AOL.COM. The marks and the Complainantís services provided under and by reference to those marks have been widely used and promoted.
On April 29, 2000 the Respondent registered the domain name aolpakistan.net ("the Domain Name"). On May 9, 2000 an email emanated from the email address firstname.lastname@example.org on the subject of "AOL Pakistan launch ! ! ! ! !" and addressed to "Dear Members". It commenced "We are glad to inform you that AOL (http://www.avion-online.com) one of the largest Australian based ISP in the world is launching its services in Lahore, Karachi and Islamabad on May 23, 2000 Ö" The next following paragraph commenced "In 3 days, about 20,000 people in Pakistan signed up with AOL Ö"
5. Partiesí Contentions
The Complainant contends that:
(i) Its acronym AOL is very well known worldwide for its computer online services and other internet-related services. Its services are provided in numerous countries around the world and the AOL service is accessible from every country that has access to the internet. The AOL service has been used and accessed from Pakistan since at least 1997.
(ii) AOL frequently uses AOL as a prefix in connection with the country name as a mark for the AOL service in a particular country eg AOL Canada, AOL Argentina, AOL Brazil etc (evidence of such usage has been provided to the Panel), which it characterises as its AOL International marks.
(iii) AOL has invested substantial sums of money in developing and marketing its services and marks.
(iv) With over 22 million 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, AOL International and AOL.COM marks; millions more are exposed to those marks through advertising and promotion.
(v) The Respondentís name AOL International is a false name, the Domain Name is nearly identical and confusingly similar to the AOL, AOL International and AOL.COM marks and the Respondent registered and used the Domain Name in bad faith for the purposes of capitalising on the famous AOL, AOL International and AOL.COM marks, thereby profiting from the international and domestic goodwill the Complainant has built up in its famous marks.
(vi) The Respondent has no rights or legitimate interests in respect of the Domain Name.
(vii) The following matters support the Complainantís allegation that the Respondentís registration and use of the Domain Name is in bad faith:-
a) the fact that the registration was made long after the Complainantís marks had achieved international fame;
b) the Respondentís bulk email solicitation using the Domain Name as an email address which is quoted above. The Complainant points out that in its bulk email solicitation the Respondent uses the Domain Name as an email address to promote an online internet service very similar to that of the Complainant. Use of the mark AOL in this manner shows that the Respondent registered and used the Domain Name solely for the bad faith purpose of confusing consumers and profiting from the goodwill that the Complainant has built up in its marks;
c) the Respondentís name is false. In support of this allegation the Complainant points to an extract from the Sydney Yellow Page Directory showing that there are only two companies in the entire Sydney Australia area using the acronym AOL, one of which is a podiatrist and the other is the Complainant itself. The Complainant alleges that the Respondent intentionally and falsely used the Complainantís famous mark as the registrant name of the Domain Name solely to mislead consumers into believing that the Complainant endorses or is affiliated with the services provided under the Domain Name.
(viii) Finally, the Complainant states that the Respondent cannot in good faith claim that it had no knowledge of the Complainantís rights in its very famous marks. Furthermore the Respondent cannot claim in good faith that it made a legitimate non-commercial or fair use of the Domain Name or that it is commonly known by the name AOL, AOLPAKISTAN or AOL.COM.
6. Discussion and Findings
According to paragraph 4(a) of the Uniform Dispute Resolution Procedure Policy, the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark to which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interest in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
Identical or Confusing Similarity
The Panel finds that the Domain Name is identical to the Complainantís principal trade mark save for the addition of the name of the country, Pakistan. In the context in which the Domain Name has been used, namely provision of internet services, the Panel is of the view that the Domain Name is plainly confusingly similar to a trade mark or service mark to which the Complainant has rights.
Rights and Legitimate Interest of the Respondent
While the overall burden of proof is on the Complainant, the introductory paragraph to paragraph 4(c) of the Policy advises a Respondent how to demonstrate its rights to and legitimate interests in the Domain Name in responding to a Complaint. The paragraph goes on to set out a non-exhaustive list of circumstances which, if the Respondent can prove any of them to the satisfaction of the Panel, will establish the relevant rights and/or legitimate interests of the Respondent.
In relation to paragraph 4(a)(ii) of the Policy dealing with the rights and legitimate interests of the Respondent, the Panel reads this as meaning that while the overall burden of proof lies with the Complainant, once the Complainant has established a prima facie case under this head, the burden is on the Respondent to establish the contrary.
Here the Respondent has not responded to the Complainantís allegations.
The Panel finds that the Respondent, being a business engaged in the provision of internet services, will have been well acquainted with the services provided by the Complainant and can have had no bona fide purpose in selecting its name AOL International or the Domain Name aolpakistan.net. The Panel has no hesitation in finding that the Respondentís purpose was not to use the Domain Name to develop it as a name in which it could have any rights or legitimate interests but solely to ride on the back of the goodwill of the Complainant.
The Panel finds that the Complaint succeeds under this head.
The manner in which the Domain Name has been used leads to the inescapable conclusion that the Respondent registered the Domain Name specifically for the reprehensible and wholly unjustifiable purpose for which it has been used. The Panel has in mind the email from email@example.com quoted above.
The Panel finds that the Domain Name was registered in bad faith, has been used in bad faith and if permitted to remain in the hands of the Respondent will continue to be used in bad faith.
In light of the foregoing, the Panel decides that the Domain Name is confusingly similar to the corresponding trade mark of the Complainant, that the Respondent has no rights or legitimate interests in the Domain Name and that the Domain Name was registered and is being used in bad faith.
Accordingly, in the light of the foregoing, the Panel directs that the Domain Name aolpakistan.net be transferred to the Complainant.
Dated: August 21, 2000