WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
America Online Inc v. DuSung Group
Case No. D2000-1523
1. The Parties
The Complainant is America Online Inc a company incorporated in Delaware of the United States of America and with a principal place of business in Virginia in the United States. It is represented by James R Davis II of Arent Fox Kintner Plotkin & Kahn of Washington, DC, United States.
The Respondent is DuSung Group whose address is given as 931-26#401, Bongchun-dong Kwanak-ku, Seoul, 151-069, Korea. It is self represented.
2. The Domain Name and Registrar
The domain name the subject of the dispute is <aolchina.com>. It was first registered on April 21, 1999.
The Registrar with which the domain name is registered is Network Solutions Inc, 505, Huntmar Park Drive, Herndon, Virginia 20170, United States.
3. Procedural History
On November 6, 2000 a Complaint by AOL Inc was received by WIPO by email and in hardcopy on November 8, 2000.
On November 16, 2000 the Registrar responded to a request for Registrar verification of November 13 2000.
On November 20, 2000 a formal notification of Complaint and commencement of administrative proceeding was sent to the Complainant, the Communication Records being forwarded to the Respondent on November 20, 2000.
On December 9, 2000 a response was received by email from the Respondent.
On December 11, 2000 a Respondent Response Deficiency Notification was issued. That Response Deficiency Notification has not been rectified by the Respondent.
On January 11, 2001 a Notification of Appointment of Administrative Panel and projected decision date was sent to the Complainant and Respondent together with transmission of case file letters.
The Sole Administrative Panel has proceeded to determine the dispute in accordance with the documents and the Uniform Domain Name Dispute Resolution Policy and the Rules made thereunder.
4. Factual Background
A. The Complainant
America Online Inc ("AOL") is a provider of interactive online services for electronic communications. It claims to have over 23 million subscribers and to have the largest on-line service in the world. Its name has featured in previous domain name disputes as a Complainant.
AOL is without doubt a very large if not the largest provider of online internet related services. AOL provides online services accessed and used by millions of its customers as well as third parties. In so doing, these people are being exposed to the AOL trade or service marks.
AOL is the registered proprietor in a number of jurisdictions of various trade or service marks including AOL, and AOL.COM. Additionally it is the proprietor of certain common law trade or service marks with a geographical indication (eg AOL MEXICO) as well as other marks (eg AOL ANYWHERE, AOLTV). Collectively these are referred to as the AOL marks.
B. The Respondent
The Respondent is identified as DuSung Group and the Network Solutions verification response shows the administrative contact as Hyeung-Dae Moon of the same address as DuSung Group in Korea.
The response forwarded by the Respondent is not signed by any identified person although it is expressed in the first person. The person responding claims to be a graduate of the University of Seoul and a shareholder in Compet Corporation, established in March 2000. That Corporation apparently deals electronically in some advanced Chinese plan connected with an unidentified animal business.
The response claims that AO is often used in Chinese to mean beautiful and L means mystic. The acronym AOL is apparently intended to refer to Animal Online in China.
5. Parties' Contentions
A. The Complainant
The Complainant claims that it is the owner of all goodwill in and associated with the acronym AOL and therefore any domain names containing AOL and whether with or without any descriptor or geographical indicator. It is therefore claimed by the Complainant that any person seeing or being exposed to the acronym AOL whether alone or in combination with any other indicator will immediately assume that the mark is connected or associated with the Complainant. This is all the more so when the medium is an electronic medium using the internet.
AOL expends many millions of dollars in developing, marketing and advertising its services and the AOL marks associated with those services. Sales of services under and by reference to the AOL marks has amounted to many millions of dollars.
The Complainant asserts that because of its world-wide exposure and publicity it has established its rights both as to the registered trade marks and any common-law trade marks. Evidence of this has been provided in the Annexures to the Complaint.
AOL claims that any domain name including the acronym AOL and in particular the domain name "aolchina.com" is nearly identical with and confusingly similar to the AOL marks, particularly the AOL marks that identify AOL's foreign services (eg, as in Annexure E).
B. The Respondent
The Response of the Respondent claims that when <aolchina.com> was registered in April 1999 the name was not then known in Korea. The respondent says it did not know of AOL.
Reference is also made to the Manager of the Respondent's Internet system Choi Yong Ju who manages all the domains for the Respondent. Listed amongst the domains managed are <lycoschina.com>; <altavistakorea.com>; <cnn24.com> and <samsungins.com>. The first two are well known internet service providers and the third is a well known telecommunications business. The fourth is a well known multinational entity based in Korea. (See Annexure I to Complaint).
The Respondent claims that as at the date of registration of the domain name in issue in April 1999 the Complainant was not using as a domain "aolchina.com" in China but rather "www.aolasia.com" and "aol.com".
6. Discussion and Findings
The Respondent has provided a response which has met with a Response Deficiency Notification. Nevertheless, in fairness to the Respondent the Panel has considered and taken into account all matters set forth in the response provided.
Rule 4(a) of the Policy sets out 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) The Respondent's domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The Respondent's domain name has been registered and is being used in bad faith.
Each of the three elements must be proved by a Complainant to warrant relief.
As to Rule 4(a)(i), the Complainant has not shown that it has any registered trade or service marks in Korea or China. But it is clear from previous decisions by Panelists that the rights to which the trade marks or service marks relate as referred to in Rule 4(a)(i) of the Policy includes common law rights. As such any common law rights that are established in their own right or even derivative of any registered trade marks or service marks can in appropriate circumstances transgress national boundaries that would normally limit registered trade marks or service marks, such being purely territorial.
The enormously extensive encroachment of AOL throughout the electronic medium world-wide would in all probability ensure that the vast majority of countries in the world and people residing in or visiting those countries have access to AOL and are exposed to the acronym AOL whether alone or in combination with any other generic, descriptive or geographical indicator.
Having regard to the enormous growth of internet related businesses and services in recent times and the fact that such businesses and services know no national boundaries it can safely be assumed that AOL has by now acceded to the status of a famous mark internationally. The Panel considers it is entitled to take notice of the recent merger between AOL and Time Warner.
Whilst it may be that the Complainant does not use in trade the mark "aolchina" it does use geographical descriptors in or in relation to some of its marks (see Annexure E to Complaint). Moreover, the geographical descriptor is just that and relevantly adds nothing to the primary mark which is aol. Thus, the distinctive part of the mark is aol. Hence, AOL or aol is the distinctive part of the domain name "aolchina.com".
The Panel determines that any person who sees or is exposed to the domain name <aolchina.com>is likely to assume on reasonable grounds that that domain name is in some way associated with the Complainant.
The Respondent's explanation as to its adoption of the word or acronym AOL is confusing and unclear. The Panel finds it difficult to accept that the Respondent was unaware of AOL as at the date of registration of the disputed domain. The Panel therefore rejects the explanation put forward by the Respondent as to its choice of AOL. The Panel further finds that <aolchina.com>is confusingly similar to a number of marks of which the Complainant is the proprietor, and whether those marks are registered trade or service marks or common law marks.
Here, the Panel adopts with respect the statement of the Panelist in America Online Inc v Dolphin@Heart, Case No.D2000-0713 in relation to the domain name <aolfrance.com>.
As to Rule 4(a)(ii) for much the same reasons as set out above the Panel also finds that the Respondent has not established that it has any rights or legitimate interests in the disputed name.
The Complainant has established an overwhelming case of goodwill and reputation in its marks AOL, aol.com or any combination of marks including AOL as a prefix. The Respondent by contrast has put forward no convincing evidence to support its claim that it adopted AOL or "aolchina.com" for a legitimate or bona fide and convincing reason. Indeed the fact that it has registered as domains the names of two other large and well known internet service providers tells heavily against it.
As to Rule 4(a)(iii) under this Rule the Complainant must establish that the Respondent's domain name has been registered and is being used in bad faith.
The Complainant relies on the Respondent's offer to sell the name for US$500,000 (annex F to Complaint) which appears to resolve from website <http://www.aolchina.com>. Further, the Respondent uses the disputed domain to route to a commercial website (annex H to complaint).
The Respondent failed to respond to letters of complaint from the Complainant prior to the initiation of the present dispute procedure (see Annexure G to Complaint).
The Respondent has also registered four other domain names confusingly or substantially similar to other well known trade or service marks (altavistakorea.com/Altavista; lycoschina.com/Lycos; cnn24.com/CNN; samsungins.com/Samsung.). There is evidence of yet other apparently unrelated domain registrations to the Respondent.
The Panel accordingly finds that ground 3 is made out by the Complainant.
For the reasons set out above the Panel finds:
(a) That the domain name <aolchina.com> registered by the Respondent is identical or confusingly similar to trade or service marks to which the Complainant has rights
(b) The Respondent has no rights or legitimate interests in respect of the domain name
(c) The Respondent's domain name has been registered and is being used in bad faith.
Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name <aolchina.com> be transferred to the Complainant.
John Katz QC
Dated: January 26, 2001