WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
America Online, Inc. v. Intellectual-Assets.com, Inc.
Case No. D2000-1043
1. The Parties
The Complainant is America Online, Inc., a corporation organized in the state of Delaware, United States of America (USA), with a principal place of business in Virginia therein.
The Respondent is Intellectual-Assets.com, Inc., with an address in Atlanta, Georgia, USA.
2. The Domain Name and Registrar
The disputed domain name is "<american-online.net.
The registrar of the disputed domain name is Network Solutions, Inc., with business address in Herndon, Virginia, USA.
3. Procedural History
The essential procedural history of the administrative proceeding is as follows:
Complainant initiated the proceeding by the filing of a complaint via e-mail, received by the WIPO Arbitration and Mediation Center ("WIPO") on August 14, 2000, and by courier mail received by WIPO on August 16, 2000. Payment by Complainant of the requisite filing fees accompanied the courier mailing. On August 24, 2000, WIPO completed its formal filing compliance requirements checklist.
On August 31, 2000 WIPO transmitted notification of the complaint and initiation of the proceeding to Respondent via e-mail and registered priority air mail. This date represents the commencement of this administrative proceeding (Rules for Uniform Domain Name Dispute Resolution Policy, para. 4(c)). WIPO transmitted notification of the complaint to ICANN, Network Solutions, and Complainantís authorized representative.
On September 21, 2000, WIPO transmitted notification to Respondent of its default in responding (to the Complaint transmitted on August 31, 2000) by registered priority air mail and e-mail.
On October 2, 2000, Complainant and Respondent were notified by WIPO of the appointment of the undersigned sole panelist as the Administrative Panel (the "Panel") in this matter. WIPO notified the Panel that, absent exceptional circumstances, it would be required to forward its decision to WIPO by October 16, 2000, which date was extended.
The Panel has not received any requests from Complainant or Respondent regarding further submissions, waivers, or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties (taking note of Respondentís default in responding to the complaint). The proceedings have been conducted in English.
4. Factual Background
Complainant claims that it owns numerous trademark registrations worldwide for the mark AMERICA ONLINE, including U.S. Registration No. 1,618,148, registered on October 16, 1990. (Complainantís Annex Exhibit B) The registration relates to the services of "leasing access time to a computer data base in the field of news, sports, financial, entertainment, and educational information." Complainant operates a website found at the domain name <americaonlin.com> (Complainantís Annex Exhibit C) These claims are uncontroverted here.
Network Solutionsí WHOIS database query response indicates that Intellectual-Assets.com, Inc., with Administrative Contact Bruce Martin (BM16461), is the registrant of the domain name <american-online.net>. (Complainantís Annex Exhibit D) The record of this registration is shown as having been created on September 25, 1999.
The Service Agreement in effect between Respondent and Network Solutions subjects Respondent to Network Solutionsí dispute settlement policy, which as of that date is the Uniform Domain Name Dispute Resolution Policy, as adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on October 24, 1999. The Uniform Domain Name Dispute Resolution Policy (the "Policy") requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which WIPO is one, regarding allegations of abusive domain name registration. (Policy, para. 4(a)) Respondent has not contested that it is properly before this Administrative Panel.
5. Partiesí Contentions
Complainant contends that Respondent has registered a domain name which is confusingly similar to the service mark registered and used by Complainant, that Respondent has no rights or legitimate interests in respect to the domain names at issue, and that Respondent has registered and is using the domain name at issue in bad faith.
Complainant contends that it has adopted and used the mark AMERICA ONLINE continuously and extensively in connection with the advertising and sale of computer online services and other Internet-related services in interstate and international commerce since 1989. (Complaint, para. 12.3)
Complainant states that it has invested substantial sums of money in developing and marketing its services and marks. Complainant asserts that it operates the most widely used interactive online service in the world comprised of over twenty-three million subscribers, with millions more exposed annually to the AMERICA ONLINE mark through advertising and promotions. (id., para. 12.4 and para. 12.5)
Complainant states that it has expended many millions of dollars in publicizing the AMERICA ONLINE mark through substantial advertising throughout the United States and the world. (id., para. 12.6) Complainant maintains that sales of services under the AMERICA ONLINE mark have amounted to many billions of dollars and, as a result, the general public has come to associate the mark with services of a high and uniform quality. (id., para. 12.7) Due to these significant sales of service and because of substantial investment in advertising, Complainant contends that the AMERICA ONLINE mark has become well-known and famous among members of the purchasing public. (id., para. 12.8)
Complainant avers that Respondentís domain name <american-online.net> is nearly identical and confusingly similar to the AMERICA ONLINE mark. Complainant asserts that Respondent has registered and used the domain name <american-online.net> in bad faith for purposes of capitalizing on the famous AMERICA ONLINE mark and profiting from the international and domestic goodwill Complainant has built up in its mark. (id., para. 12.10 and para. 12.11)
Complainant contends Respondentís bad faith use of the domain name is evidenced by the fact that the domain name was registered on September 25, 1999, long after Complainantís adoption and first use of the AMERICA ONLINE mark and long after the mark was registered by Complainant in the United States. (id., para. 12.12(a))
Complainant believes Respondentís bad faith is further evidenced by its offer to sell the domain name to Complainant for $1,000,000 (one million U.S. dollars) after having received a "cease and desist letter" from Complainant. (id., para.12.12 (b)) Respondentís bad faith is further evidenced, Complainant maintains, by the use of <american-online.net> as a commercial website that promotes Respondentís financial services (id., para. 12.12 (c) and Complainantís Annex Exhibit G) and by Respondentís pattern of registering domain names that infringe other famous marks, such as "jeep-4x4.com" and "visa-cards.com". (id., para. 12.12(d) and Complainantís Annex Exhibit H)
Respondent did not reply to Complainantís contentions.
6. Discussion and Findings
Because Respondent has defaulted on its obligation under Paragraph 5 of ICANN Rules for Uniform Domain Name Dispute Resolution Policy to respond to the Complaint and meet its allegations with specificity, certain factual conclusions may be drawn by the Panel on the basis of Complainantís undisputed representations. In the absence of direct evidence, the panel must resort to reasonable inferences from whatever evidence is in the record.
Paragraph 4(a) of the Policy instituted three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:
i) respondentís domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) respondent has no rights or legitimate interests in respect to the domain name; and
(iii) respondentís domain name has been registered and is being used in bad faith.
Each of these three elements must be proved by a complainant to obtain relief. Paragraphs 4(b) and 4(c) of the Policy provide further nonexclusive criteria for determining whether Registrant has engaged in abusive domain name registration with respect to subparagraphs 4(a)(ii) and 4(a)(iii).
Because Respondent has defaulted in providing a response to the allegations of Complainant, certain factual conclusions may be drawn by the Panel on the basis of Complainantís undisputed representations, and Respondentís failure, after notice, to respond.
A. Identity of Respondentís Domain Name and Complainantís Trademarks
The Panel finds that Complainant has rights in the service mark AMERICA ONLINE for a variety of Internet and computer-related services, based on Complainantís uncontroverted claims of first use and adoption of the mark as early as 1989, and Complainantís registration of the mark on October 16, 1990 in the United States Patent and Trademark Office, and Complainantís claimed continued use of the mark thereafter. The Panel determines that Complainantís rights in the mark arose long prior to Respondentís September 25, 1999 registration of the disputed domain name <american-online.net>.
The Panel further finds that Respondentís domain name <american-online.net> is confusingly similar to Complainantís mark. "AMERICA ONLINE" could reasonably be misspelled as "AMERICAN ONLINE." Whether this be a misspelling or "typosquatting" (or typo-squatting) need not be determined. Furthermore, computer users could reasonably confuse the domain name <american online> with >america.online> while looking for Complainantís website, since Complainant provides Internet-related services.
Given the phonetic similarity of the domain name and the mark, the Panel finds that Respondentís domain name <american-online.net> and Complainantís name and trademark AMERICA ONLINE are sufficiently confusingly similar, particularly here where Respondent has provided no evidence or reason to suggest any weakness of Complainantís name, or trademark use by others, or other evidence of a lack of similarity.
Thus, the Panel finds for the Complainant on the first element.
B. Respondentís Rights or Legitimate Interests in the Domain Name
The Panel next determines whether Respondent has rights or legitimate interest in the <american-online.net> domain name, using the guiding criteria found in Paragraph 4(c) of the Policy.
Under paragraph 4(c) of the Policy, evidence of a registrantís rights or legitimate interest in the domain name includes:
(i) Demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services prior to the dispute;
(ii) An indication that the registrant has been commonly known by the domain name even if it has acquired no trademark rights; or
(iii) Legitimate noncommercial or fair use of the domain name without intent to divert consumers or to tarnish the trademark.
The Panel finds that Respondent is not commonly known by the name AMERICAN ONLINE or the domain name <american-online.net>.
There is no proof on the record submitted by Respondent of rights or legitimate interests in the domain name <american-online.net>. The Panel finds that based upon the evidence, which has not been challenged, Respondent is not making a legitimate noncommercial or fair use of the domain name. The choice of the subject domain name, without explanation by Respondent, is unlikely to have been accidental or without knowledge of the significance of its connection to Complainantís worldwide commercial services.
Respondentís conduct of directing users from the domain name <american-online-net> to its own financial services website could reasonably mislead and divert computer users looking for Complainantís website, to the commercial detriment of Complainant. Given the lack of denial by Respondent, the Panel can reasonably infer that Respondent is aware of this fact, potentially profits from this fact, and indeed seeks the occurrence of these events. Furthermore, the Panel finds that based upon the evidence, which has not been challenged, that Respondent is not making a legitimate noncommercial or fair use of the domain name, and is using the domain name with the intent to mislead or divert consumers for commercial gain.
Thus, the Panel finds for the Complainant on the second element.
C. Respondentís Registration and Use of the Domain Name
The Panel next determines whether Respondent registered and used the domain name <american-online.net> in bad faith, using the guiding criteria found in Paragraph 4(b) of the Policy.
Under paragraph 4(b) of the Policy, evidence of Respondentís bad faith registration and use includes:
(i) Circumstances indicating the domain name was registered for the purpose of resale to the trademark owner or competitor for profit;
(ii) A pattern of conduct showing an attempt to prevent others from obtaining a domain name corresponding to their trademarks;
(iii) Registration of the domain name for the purpose of disrupting the business of a competitor; or
(iv) Using the domain name to attract, for commercial gain, Internet users to Respondentís web site by creating a likelihood of confusion with the trademark ownerís mark.
The Panel finds that Respondentís registration was made in bad faith, as evidenced by the uncontroverted evidence that after receipt of Complainantís letter objecting to Respondentís use and registration of the domain name <american-online.net> (Complainantís Annex Exhibit F), Respondent offered to sell the domain name for $1,000,000 U.S. (Complainantís Annex Exhibit E) While not determinative in itself, here the uncontroverted and unexplained evidence that Respondent has registered these domain names, including the well-known trademarks of others, supports Complainantís contention that the registration at issue here was made in bad faith.
Indeed, Respondentís offer to sell the subject domain name for $1,000,000 (one million U.S. dollars) to Complainant after receiving a "cease and desist" letter appears to be well in excess of any reasonable and legitimate costs incurred by Respondent directly related to the domain name and therefore may be considered further evidence of registration and use of a domain name in bad faith.
The Panel finds that Respondent has registered the domain name <american-online.net> with the primary purpose of either selling the domain name for profit and/or for diverting potential customers of Complainant to Respondentís website, and thus disrupting the business of a competitor, the Complainant.
Respondent first registered the domain name long after Complainant established rights and Internet web publicity in the mark AMERICA ONLINE for Internet-related services. In the absence of contrary evidence, the Panel finds that Respondent knew of or at least should have known of Complainantís trademark and services, at the time it registered the domain name <american-online.net, given the widespread use of Complainantís AMERICA ONLINE trademark and website.
Furthermore, the Panel finds, in the absence of any contrary evidence, that Respondent has intentionally used the domain name to attract, for commercial gain, Internet users to its <american-online.net> website by creating a likelihood of confusion with Complainantís mark and domain name as to the source, sponsorship, affiliation, or endorsement of the <american-online.net> website.
Thus, the Panel finds for the Complainant on the third element.
The Panel concludes: (a) that the domain name <american-online.net> is confusingly similar to Complainantís trademarks; (b) that Respondent has no rights or legitimate interest in the domain name; and (c) that Respondent registered and used the domain name in bad faith. Therefore, pursuant to the Policy and the Rules, the Panel orders that the domain name <american-online.net> be transferred to Complainant.
Neil A. Smith
Dated: December 14, 2000