WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

America Online, Inc. v. Domain For Sale - VMI

Case No. D2000 Ė 1363

 

1. The Parties

(a) Complainant is America Online, Inc., a Delaware corporation with its principal place of business at 22000 AOL Way, Dulles, Virginia 20166, U.S.A. ("AOL").

(b) The Complainantís authorized representative in this administrative proceeding is James R. Davis, II, Arent Fox Kintner Plotkin & Kahn, 1050 Connecticut Avenue, NW, Washington, DC 20036, U.S.A.

(c) Respondent, according to Network Solutions, Inc.ís Whois database is Domain For Sale - VMI, 2101 Haskell Avenue, Suite 3312, Dallas, Texas 75204, U.S.A. ("Domain For Sale").

 

2. Domain Name and Registrar

(a) The domain name in issue is "aol-receive-instakiss.com".

(b) The registrar for the domain name at issue is Network Solutions, Inc. ("Network Solutions").

 

3. Procedural History

(a) On October 10, 2000, the Complaint was received by the WIPO Arbitration and Mediation Center (the "Center") for decision in accordance with the Uniform Policy for Domain Name Dispute Resolution adopted by the Internet Corporation for Assigned names and Numbers ("ICANN") on August 26, 1999 (the "Policy") and hard copy on October 13, 2000.

(b) The Center verified that the Complaint satisfies the formal requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy approved by ICANN on October 24, 1999 (the "Rules") and WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

(c) Payment in the required amount has been made by the Complainant to the Center.

(d) A copy of the Complaint, together with the cover sheet as prescribed by the Supplemental Rules, was sent or transmitted to both the Respondent and to Network Solutions, Inc. via certified mail, return receipt requested in compliance with the Rules.

(e) October 13, 2000, the Center transmitted to Network Solutions a request for registrar verification in connection with this case.

(f) On October 16, 2000, the Center received Network Solutionsí Verification Response, (1) confirming that Network Solutions had received a copy of the Complaint sent by the Complainant in accordance with the Supplemental Rules, (2) confirming that the domain name stated above is registered with Network Solutions, (3) confirming that Network Solutionsí 5.0 Service Agreement is in effect, (4) confirming that the Respondent is the current registrant of the domain name (5) providing the full contact details that available in Network Solutionsí Whois database for the domain name registrant, technical contact and administrative contact for the domain name, and (6) stating that the domain name is in "Active" status.

(g) On October 18, 2000, the Center transmitted via post/courier and e-mail Notification of Complaint and Commencement of the Administrative Proceeding, together with a copy of the Complaint, to the Respondent and via e-mail to the Complainant. The Center advised that (1) the response was due by November 6, 2000, (2) in the event of default the Center would appoint a Panel to review the facts and to decide the case, (3) the Panel would be entitled to draw such inferences from Respondentís default as it considers appropriate, (4) AOL had elected for the matter to be decided by a single panelist who would be appointed within five days of the date the response was due, (5) the fees for the administrative proceeding would be paid in their entirety by AOL, (6) the Panel would decide the case within 14 days of its appointment, and (7) the Center could be contacted at stated postal and email addresses, a stated telephone number, and a stated fax number.

(h) On November 9, 2000, the Center transmitted via post/courier and e-mail a Notification of Respondent Default to the Respondent and via e-mail to the Complainant advising that Respondent had failed to comply with the deadline indicated in the Notification of Complaint and Commencement of Administrative Proceeding for submission of its Response and advising that the Center would proceed to appoint an Administrative Panel based on the number of panelists designated by the complainant.

(i) On December 12, 2000, the Center transmitted to the Complainant via email and to the Respondent via e-mail, Notification of Appointment of Administrative Panel and Projected Decision Date. The notification advised that Mr. Gaynell C. Methvin had been appointed as the single panelist, and that the decision would be due on December 26, 2000.

(j) On December 12, 2000, the Center transmitted the file in the case via email to the appointed panelist, Mr. Methvin.

 

4. Factual Background; Partiesí Contentions

a. The Trademarks

The Complaint (∂ 12) is based on various trademarks AOL registered in the U.S. Patent and Trademark Office and elsewhere pursuant to four registrations, copies of which appear as Annex B and Annex C to the Complaint, viz.:

i. AOL Ė U.S. trademark registration Nos. 1,977,731 and 1,984,337

The foregoing trademark registrations relate inter alia to:

"computer services, namely leasing access time to computer databases, computer bulletin boards, computer networks, and computerized research and reference materials, in the fields of business, finance, news, weather, sports, computing and computer software, games, music, theater, movies, travel, education, lifestyles, hobbies and topics of general interest; computerized dating services; computer consultation services; computerized shopping via telephone and computer terminals in the fields of computer goods and services and general consumer goods."

See identification of services under Annex B of the Complaint.

ii. "AOL.COM" Ė U.S. trademark registration Nos. 2,325,291 and 2,325,292

AOL also uses the mark "AOL.COM" as a domain name for its portal web site.

b. The Complaint

AOL in support of its position asserts the following:

" [12] 2.As part of its online services, AOL provides a message service called "InstaKiss", which allows AOLís users to send electronic greetings to each other. See Annex G of the Complaint.

[12] 4. Long prior to Respondentís registration of the domain name "aol- receive-instakiss.com", and at least as early as 1989 for the mark AOL and 1992 for the mark "AOL.COM", AOL adopted and began using its marks in connection with computer online services and other Internet-related services. AOL has used its famous and distinctive marks continuously and extensively in interstate and international commerce in connection with the advertising and sale of its Internet and computer-related services.

[12] 5. AOL has invested substantial sums of money in developing and marketing its services and marks.

[12] 6. With over twenty three 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 and "AOL.COM" marks; millions more are exposed to said marks through advertising and promotion.

[12] 7. The AOL and "AOL.COM" marks have been and continue to be widely publicized through substantial advertising throughout the United States and the world. Many millions of dollars have been spent in connection with such advertising, which has been disseminated through network and cable television programs, radio broadcasts, and in print media including newspapers and periodicals.

[12] 8. Sales of services under the AOL and "AOL.COM" marks have amounted to many billions of dollars. As a result, the general public has come to associate the AOL name and marks with services of a high and uniform quality.

[12] 9. Because of these substantial advertising expenditures and sales, the distinctive AOL and "AOL.COM" marks have become well-known and famous among members of the purchasing public.

[12] 10. On August 3, 2000, long after AOLís adoption and first use of the AOL and "AOL.COM" marks, Respondent registered the domain name "aol-receive-

instakiss.com" using the registrar Network Solutions, Inc., and began using the domain name in connection with a pornographic Web site.

[12] 11. The domain name "aol-receive-instakiss.com" is nearly identical and confusingly similar to the AOL and "AOL.COM" marks, as well as the AOL InstaKiss service.

[12] 12. The domain name "aol-receive-instakiss.com" is used in connection with an adult pornographic Web site. Respondent registered and used the domain name "aol-receive-instakiss.com" with a bad faith intent to capitalize on the famous AOL and "AOL.COM" marks and profit from the international and domestic goodwill AOL has built up in its famous marks.

[12] 13. Respondent has no rights or legitimate interests in respect to the domain name "aol-receive-instakiss.com". The following is evidence of Respondentís bad faith registration and use of the domain name "aol-receive-

instakiss.com":

(a) Respondentís bad faith registration of the domain name is evidenced by the fact that it registered the domain name on August 3, 2000, long after AOLís adoption and first use of the AOL and "AOL.COM" marks and long after the mark AOL was registered in the United States.

(b) Respondentís bad faith use of the domain name is evidenced by its use of "aol-receive-instakiss.com" in connection with a pornographic Web site (copy of Respondentís website is included as Annex D of the Complaint). The unauthorized use of the AOL marks demonstrates Respondentís bad faith intent to profit from the consumer confusion that is likely to occur from Respondentís use of the AOL marks in connection with a pornographic Web site.

(c) Counsel for AOL sent Respondent a letter that explained AOLís rights in its AOL marks and requested that Respondent cease using the AOL mark (copy of letter included as Annex E of the Complaint). Respondentís bad faith intent is shown by its refusal to respond to the correspondence sent by counsel for AOL. Moreover, Respondent failed to terminate its site after receiving the letter from AOL ís counsel that explained AOLís rights in the marks AOL and "AOL.COM". Respondentís use of the AOL marks in the domain name "aol- receive-instakiss.com" demonstrates Respondentís bad faith attempt to profit and capitalize from the goodwill AOL has created in its AOL mark and the consumer confusion that is likely to occur as a result of the unauthorized use of the AOL mark.

(d) Respondentís bad faith registration and use of the domain "aol-receive-instakiss.com" is also shown by the fact that Respondentís Web site makes no reference to AOL or its InstaKiss service. This shows that Respondent registered and used the domain name "aol-receive-instakiss.com" solely to confuse consumers and divert them from the AOL Web site and service.

(e) Respondentís bad faith registration and use of the domain name also is evidenced by its use of the registrant name "Domain For Sale" in the Whois directory. Moreover, Respondentís e-mail address is buymyname@hotmail.com. See Annex F of the Complaint. The use of this registrant name and e-mail address demonstrates that Respondent registered the domain name for the purpose of profiting from the sale of the domain name to AOL or another bad faith cybersquatter.

" [12] 13. Based upon the fame of AOLís marks, and AOLís numerous trademark registrations for the AOL and "AOL.COM" marks, Respondent cannot, in good faith, claim that it had no knowledge of AOLís rights in its very famous AOL and "AOL.COM" marks. Furthermore, Respondent cannot claim, in good faith, that it made a legitimate noncommercial or fair use of the domain name, or that it is commonly known by the name AOL Receive Instakiss".

c. Remedies Requested

As for relief, AOL requests at Paragraph [13]:

In accordance with Paragraph 4(b)(i) of the Policy, for the reasons described in Section V above, the Complainant requests the Administrative Panel appointed in this administrative proceeding to issue a decision that the domain name "aol-receive-instakiss.com" be transferred to Complainant.

d. Respondentsí Answer

Respondents have filed no answer, or any other document, with the Center.

 

5. Discussion and Findings

Paragraph 4 of the Policy directs that AOL must prove, with respect to the domain name in issue, each of the following:

(i) The domain name in issue is identical or confusingly similar to the AOL trademark, and

(ii) Respondent has no rights or legitimate interests in respect of the domain name, and

(iii) The domain name has been registered and is being used in bad faith.

Paragraph 4.b of the Policy sets out four illustrative circumstances, which for purposes of Paragraph 4(a)(iii) above shall be evidence of the registration and use of a domain name in bad faith.

Paragraph 4.c of the Policy sets out three illustrative circumstances which, if proved by respondent, shall demonstrate respondentís rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii) above.

a. Identity or Confusing Similarity

AOL urges, and has the burden of proving, that the domain name in dispute is either identical to, or confusingly similar to, the AOL trademarks. Respondentís failure to respond does not relieve AOL of its burden of proof on this element or on either of the other two elements of Paragraph 4(a) of the Policy. However, Respondentís failure to deny any of AOLís averments permits this panel to take AOLís averments as true and to draw appropriate inferences.

On its face, the domain name in issue incorporates the term "aol" or a close variant of "aol". Identity is clear. In light of the facts and factors averred in the Complaint, the Panel finds that the domain name in issue is confusingly similar to the AOL trade marks.

b. Rights or Legitimate Interests

On this record, no challenge has been leveled with respect to (1) the validity of any AOL trademarks or service marks, (2) AOLís rights in those marks with respect to AOL services and goods, (3) the global fame and goodwill associated with those marks, or (4) any fact averred by AOL as to promotion of the marks, use of the marks, and total sales of services and goods under the marks.

No challenge has been leveled with respect to AOLís averments as to registrantís conduct.

This record demonstrates that Respondent has no rights or legitimate interests vis-a-vis "aol-receive-instakiss.com".

c. Registration and Use in Bad Faith

Registration of the domain name in issue in bad faith is a matter of the appropriate inferences to draw from circumstantial evidence. Each is to be proved by AOL.

AOL avers that Respondentís registration was in bad faith (see above). These averments demonstrate that Respondent has registered the domain name "aol-receive-instakiss.com" in bad faith.

d. Paragraph 4.c Factors

With respect to the domain name in issue, by failing to respond to the Complaint, Respondent has failed to prove any of the three circumstances set out in Paragraph 4c of the Policy, viz.:

(i) before any notice to Respondent of the dispute, Respondentís use of or preparations to use the domain name were in connection with a bona fide offering of goods or services,

(ii) Respondent or a related entity has been commonly known by the domain name, and

(iii) Respondent is making legitimate noncommercial or fair use of the domain name in issue, "without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."

As averred by AOL and properly inferred from the undisputed facts as to Respondentís conduct, each of these three factors must be resolved in favor of AOL.

 

6. Decision

The panel has jurisdiction of this dispute. Respondent has received notice of the commencement of this proceeding, the Policy, the Complaint, and the consequences of Respondentís default. Respondent has been afforded due process.

With respect to the request for transfer of the domain name at issue, the Panel decides that AOL has carried its burden of proving (a) the domain name in issue here is identical to or confusingly similar to the AOL marks, (b) Respondent has no rights and no legitimate interests in respect of the domain name in issue, and (c) the domain name in issue has been registered in bad faith by Respondent.

Accordingly, the Panel requires that the registration of the domain name "aol-receive-instakiss.com" be transferred to AOL.

 


 

Gaynell C. Methvin
Sole Panelist

Dated: December 26, 2000