WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
America Online, Inc., v. Yeteck Communication, Inc.
Case No. D2001-0055
1. The Parties
The Complainant is America Online, Inc., (AOL) a Delaware corporation, with its principal place of business at 22000 AOL Way, Dulles, Virginia 20166, USA. Complainant’s authorized representative in this proceeding is James R. Davis, II, Arent Fox Kintner Plotkin & Kahn, 1050 Connecticut Avenue, NW, Washington, DC 20036, USA.
The Respondent is Yeteck Communication, Inc., of either 400 Saint-Jacques Suite 100, Montréal, Québec, H2Y 1S1, Canada or 1030 St-Alexandre Suite 709, Montréal, Québec, H2Z 1P3, Canada. Respondent's authorized representative in this proceeding is Léger Robic Richard, 55, St-Jacques, Montréal, Québec, H2Y 3X2, Canada.
2. The Domain Names and Registrars
The Domain Names the subject of this Complaint are <aolsportsbet.com>, <aolsportsbet.net> and <aolcasino.com>.
The registrar of <aolsportsbet.com> and <aolsportsbet.cnet> is BulkRegister.com, 575 8th Avenue - 11th Floor, New York, NY 10018, USA.
The Registrar of <aolcasino.com> is Internet Domain Registrars, 475 Sansome St., Suite 570, San Francisco, CA 94111, USA.
3. Procedural History
3.1. The Complaint in respect of the disputed Domain Names was received by the World Intellectual Property Organization Arbitration and Mediation Center (WIPO Center) by email on January 11, 2001, and in hard copy on January 15, 2001. Complainant states that on January 11, 2001 a copy of the Complaint was sent to Respondent by certified mail and copies were sent by email to the Registrars. An Amendment to the Complaint was received on January 17, 2001 by email and on January 18, 2001 in hard copy, and a second Amendment was received on January 25, 2001 by email and in hard copy on January 29, 2001.
3.2. On January 15, 2001, verification was received from the Registrar, Internet Domain Registrars, that the disputed Domain Name <aolcasino.com> is registered in the name of Yeteck Communication, Inc., 1030 St-Alexandre Suite 709, Montréal, Québec, H2Z 1P3, Canada; administrative contact Randolph Came of the same address.
3.3. On January 25, 2001, verification was received from the Registrar, BulkRegister.com, that the disputed Domain Names <aolsportsbet.com> and <aolsportsbet.net> are registered in the name of Yeteck Communication, Inc., 400 Saint-Jacques Suite 100, Montréal, Québec, H2Y 1S1, Canada; administrative contact Randolph Came of the same address.
3.4. On February 1, 2001, WIPO Center determined (and the Administrative Panel has subsequently accepted) that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (Policy), the Rules for Uniform Domain Name Dispute Resolution Policy (Rules) and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (Supplemental Rules) all as approved by the Internet Corporation for Assigned Names and Numbers (ICANN).
3.5. On February 1, 2001, Formal Notification of Complaint and Commencement of Administrative Proceeding (with enclosures) was sent by WIPO Center by courier to Respondent at the address provided in respect of each Domain Name and by email. The Formal Notification was copied to Complainant, to ICANN and to the Registrars by email.
3.6. A Response was received from Respondent by email on February 19, 2001 and in hard copy on February 21, 2001. Respondent stated that a copy of the Response was sent to Complainant by courier and email on February 19, 2001.
3.7. On April 12, 2001, Dr Clive Trotman, having provided the WIPO Center with a Statement of Acceptance and Declaration of Impartiality, was appointed as a single member Administrative Panel and notification was sent by email to Complainant, Respondent and the Administrative Panel. An electronic copy of the Complaint and Response was sent by email to the Administrative Panel on April 12, 2001, and the hardcopy of the Case File was sent by courier.
4. Factual Background
4.1. Complainant (AOL) states that it operates the most widely-used interactive online service in the world and has over twenty-six million subscribers. Services are provided under the trademarks or service marks AOL and AOL.COM (hereafter trademarks) which are registered in the USA, Canada and internationally.
4.2. At least as early as 1989 for the trademark AOL and 1992 for the trademark AOL.COM, AOL adopted and began using its trademarks in connection with computer online services and other Internet-related services.
4.3. Sales of services under the AOL and AOL.COM trademarks are counted in the billions of dollars. Many millions of dollars have been spent in advertising the trademarks through network and cable television, radio broadcasts and print media.
4.4. The Domain Name "aol.com" is used by the Complainant.
4.5. Respondent’s activities include the development and marketing of computerized gambling and lottery systems. Respondent started to use the Domain Name <aolcasino.com> in connection with on-line lottery and gambling services and then added complementary Domain Names to use in connection with on-line lottery and gambling specifically related to sports.
4.6. The disputed Domain Names <aolsportsbet.com> and <aolsportsbet.net> were registered by Respondent on September 7, 2000 and <aolcasino.com> was registered on February 5, 2000.
5. Parties’ Contentions
A. Contentions of Complainant
5.1 The contentions of Complainant include (paragraphs 5.2-5.10 below) that:
5.2 The dispute is properly within the scope of the Uniform Domain Name Dispute Resolution Policy. The registration agreements, pursuant to which the Domain Names being the subject of this Complaint were registered, each incorporate the Policy.
5.3 The disputed Domain Names are confusingly similar to the famous trademarks in which Complainant has rights. Actual confusion has occurred with a person complaining to AOL about an alleged debt owed by "www.aolcasino.com".
5.4 Respondent has no rights or legitimate interest in the disputed Domain Names. Respondent's claim to be known as Adult Online Casino is insufficient to give such rights. Respondent has not made a legitimate noncommercial or fair use of the Domain Names.
5.5 Respondent’s registration and use of the disputed Domain Names is in bad faith in terms of the Policy.
5.6 Respondent has made a bad faith use of the Domain Names with intent to capitalize on the famous AOL and AOL.COM trademarks and profit from the goodwill AOL has generated in its trademarks. Respondent has acted to mislead and confuse consumers into believing that AOL endorses or is affiliated with Respondent's websites.
5.7 Evidence of Respondent's bad faith includes its adoption of the disputed Domain Names long after Complainant's adoption and first use of the AOL and AOL.COM trademarks and Complainant's registration of those trademarks in the USA and Canada. Further evidence is Respondent's use of the Domain Names in connection with commercial gambling and casino websites called AOL Casino and AOL Sportsbook.
5.8 Respondent has engaged in a pattern of registering Domain Names in bad faith in the terms of Paragraph 4 (b) (ii) of the Rules such as would prevent their legitimate registration by Complainant.
5.9 A cease and desist letter setting out the Complainant's rights and position in respect of the trademark AOL generally and the Domain Names <aolsportsbet.com> and <aolsportsbet.net> specifically was sent to Respondent and no reply was received.
5.10 The remedy requested by Complainant is that the disputed Domain Names be transferred to Complainant.
B. Contentions of Respondent
5.11 The comprehensive and detailed contentions of Respondent include (paragraphs 5.12 - 5.20 below) that:
5.12 Respondent is a legitimate Québec company whose activities include the design, development and marketing of computerized gambling and lottery systems. Respondent is not a cybersquatter but is making a legitimate use of the Domain Names and registered them and is using them in good faith.
5.13 The Domain Name <aolcasino.com> is neither identical nor confusingly similar to Complainant's trademarks.
5.14 Complainant's relevant trademarks are registered in connection with computer services (namely leasing access time to computer databases, networks and digital content), computerized dating services, computerized shopping, and telecommunication services, which do not conflict with Respondent's activities. Complainant is not a content provider but an Internet access provider and Complainant's trademarks do not extend to businesses traced as a result of Complainant's services. For instance, Complainant does not maintain an on-line gambling website whereas Respondent does.
5.15 AOL is not entitled to a monopoly use of an acronym so all-embracing as to include the expression "on-line" since it is not a distinctive feature of Complainant on the Internet where websites are inherently "on-line".
5.16 Respondent has rights in the disputed Domain Names and, before it received any notice of the dispute, used or made demonstrable preparations to use them in connection with a bona fide offering of goods or services.
5.17 Respondent did not attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s trademarks. Nothing on Respondent's websites would lead a consumer to believe that the AOL acronym stands for the same as in Complainant's trademarks. Respondent chose AOL as an acronym for Adult On Line since certain desired Domain Names containing "adultonline..." were unavailable. Visitors can tell that Respondent's sites are not related to Complainant by means of a copyright sign, an "about us" section, Help and FAQ [frequently asked questions] sections, and a Customer Service and Enquiry facility.
5.18 Respondent's use of Domain Names different from its trade name Yeteck, to reflect its gambling and lottery services, is legitimate.
5.19 The disputed Domain Names were not registered in bad faith and all indicators of bad faith under the Policy are denied. Complainant and Respondent are not competitors. Bad faith should not be inferred from the fact that Respondent registered the Domain Names after Complainant registered its trademarks because Respondent's use of AOL does not mean America On Line, nothing on Respondent's web sites would lead a consumer to believe that such is the case and Respondent's activities are unrelated to Complainant's. Complainant is wrong when it asserts that the name "Adult Online Casino" has been put on Respondent's website to justify its use of the Domain Names. This presumption is not supported by the facts since Respondent is operating several gambling and lottery websites including "eclipsecasino.com", "iwoncasino.com", "desirecasino.com", and "worldcasinogames.com". There is no bad faith in Respondent using trading names in preference to its own name.
5.20 Complainant is not prevented from reflecting its trademarks in corresponding Domain Names.
6. Discussion and Findings
Jurisdiction of Administrative Panel
6.1 Paragraph 4 (a) of the Uniform Policy states:
"You are required to submit to a mandatory administrative proceeding in the event that a third party (a "complainant") asserts to the applicable Provider, in compliance with the Rules of Procedure, that:
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith."
6.2 Complainant has made the relevant assertions as in 6.1 above. This dispute is properly within the scope of the Domain Name Dispute Policy and the Administrative Panel has jurisdiction to decide the dispute.
Whether the Domain Names are Identical or Confusingly Similar to Trademarks
6.3 The Domain Names subject to Complaint are <aolsportsbet.com>, <aolsportsbet.net> and <aolcasino.com>. Respondent submits that these are not confusingly similar to the trademarks AOL and AOL.COM.
6.4 Precedent clearly supports the principle that the adaptation of a recognized trademark in a Domain Name by variation in spelling or by the deletion, addition or insertion of letters, words or acronyms does not escape a finding of confusing similarity. Several precedent WIPO cases have found for the Complainant AOL on this point (including America Online, Inc., v. Pedro Alex Jimenez, Case No. D2000-0991; America Online, Inc., v. Steve Portaro, Case No. D2000-0992; America Online, Inc., v. AOL International, Case No. D2000-0654; America Online, Inc., v. Transoceanic Travel, Case No. D2000-1364).
6.5 The Administrative Panel finds that <aolsportsbet.com>, <aolsportsbet.net> and <aolcasino.com> are confusingly similar to the Complainant's trademarks AOL and AOL.COM and accordingly finds for Complainant under Paragraph 4 (a) (i) of the Policy.
Whether Respondent Has Rights or Legitimate Interests in Respect of the Domain Names
6.6 Complainant states that Respondent has no rights or legitimate interest in the disputed Domain Names. Paragraph 4 (c) of the Policy provides for Respondent to demonstrate rights to and legitimate interests in a Domain Name by any means including but not limited to three alternative criteria set out in Paragraphs 4 (c) (i), (ii) and (iii).
6.7 Paragraph 4 (c) (i) of the Policy recognizes "before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services". Respondent asserts in effect that its use of the disputed Domain Names is legitimate because, among other reasons, its sites are distinctive and not likely to be confused with Complainant's, also Respondent is conducting legitimate business in gambling that is not within the purported coverage of Complainant's trademarks. Respondent claims that the purpose for which the disputed Domain Names were registered is completely unrelated to Complainant's activities, goods or services. Complainant's trademarks cover "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". The Administrative Panel finds that these fields embrace those of the disputed Domain Names on many points including but not necessarily limited to games, hobbies and topics of general interest, and computerized shopping via telephone and computer terminals in the fields of computer goods and services. The phrase "America On Line", hence "AOL", whilst composed of ordinary words, has acquired a distinct secondary meaning. The Administrative Panel finds that Respondent's use of the disputed Domain Names conflicted with Complainant's trademarks in the same fields and was not bona fide.
6.8 Paragraph 4 (c) (ii) of the Policy recognizes "you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights". Respondent asserts that AOL in its Domain Names stands for Adult On Line. Respondent cites America Online, Inc., v. Transoceanic Travel, (Case No. D2000-1364) in which another Respondent was allowed to keep the Domain Name "aolvacations.com", however that Case is distinguished on its facts including that its Respondent had operated the same bona fide business for about 28 years and its proprietor Alfonso Albunia was known on the website by his real name, hence Alfonso On Line (AOL). In respect of the instant Case the precedent in America Online, Inc., v. Steve Portaro, (Case No. D2000-0992), in which AOL in "aolcams.com" meant Always On Line and the Name was transferred, is more persuasive. There is no evidence in the instant Case that Respondent was commonly known by the disputed Domain Names within the meaning of Paragraph 4 (c) (ii) of the Policy.
6.9 The use of the disputed Domain Names is commercial and Respondent does not claim to be making a legitimate noncommercial or fair use in terms of Paragraph 4 (c) (iii) of the Policy.
6.10 In summary in the matter of rights or legitimate interests the Administrative Panel finds for Complainant under Paragraph 4 (a) (ii) of the Policy.
Whether Domain Names Have Been Registered and Are Being Used in Bad Faith
6.11 Paragraph 4 (a) (iii) of the Policy requires Complainant to prove that the Domain Names have been registered and are being used in bad faith. In Paragraph 4 (b) four alternative examples of bad faith are given but without limitation:
" (i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location".
6.12 The Administrative Panel having considered the facts and the explanations offered by Respondent, and noting that Respondent knew of Complainant's famous trademarks when registering the disputed Domain Names (Response, 37 (1)), finds that Respondent intended to attract users to its websites for commercial gain by relying on confusion with Complainant's well known acronym and to mislead users into thinking the websites were affiliated to or endorsed by Complainant, irrespective of disclaimers on Respondent's websites. Prints of Respondent's websites submitted in evidence by both Parties include references to "AOL Casino" (many times), "AOL Help & Support page" and "AOL Sportsbook" (many times) all with the typographical capitalization and spacing shown here, being similar to the way AOL writes its trademarks. The Administrative Panel finds this to be a clear bad faith use of Complainant's trademarks in general terms and also specifically in the terms of Paragraph 4 (b) (iv) of the Policy. The finding of general bad faith is compounded by the failure of Respondent to reply to the cease and desist notice from Complainant.
6.13 In view of the finding in 6.12 above it is not necessary to consider other specific grounds for bad faith, however for completeness the Administrative Panel finds no evidence against the Respondent in respect of Paragraph 4 (b) (i) of the Policy. In respect of Paragraph 4 (b) (ii) bad faith is found since Respondent has prevented Complainant from reflecting its trademark in the disputed Domain Names and has engaged in a pattern of such conduct. There is not sufficient evidence to find that Respondent intended to disrupt Complainant's business within the meaning of Paragraph 4 (b) (iii) of the Policy.
6.14 In summary, as concluded in 6.5 above Complainant succeeds under Paragraph 4 (a) (i) of the Policy. As concluded in 6.10 above, Complainant succeeds under Paragraph 4 (a) (ii) of the Policy. As concluded in 6.12 and 6.13 above, Complainant succeeds under Paragraph 4 (a) (iii) of the Policy. The Complainant has proven its case in full and the Administrative Panel decides in favour of the Complainant.
The Decision of the Administrative Panel is that the disputed Domain Names <aolsportsbet.com>, <aolsportsbet.net> and <aolcasino.com> are confusingly similar to the trademarks AOL and AOL.COM in which Complainant has rights; that Respondent has no rights or legitimate interests in the disputed Domain Names; and that Respondent has registered and is using the disputed Domain Names in bad faith. The Domain Names <aolsportsbet.com>, <aolsportsbet.net> and <aolcasino.com> shall be transferred to the Complainant.
Dr Clive N. A. Trotman
Dated: April 23, 2001