WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

America Online, Inc. v. Thomas P. Culver Enterprises

Case No. D2001-0564

 

1. The Parties

The Complainant is America Online, Inc., a corporation organized in the State of Delaware, United States of America (USA), with place of business in Dulles, Virginia, USA.

The Respondent is Thomas P. Culver Enterprises, with address in San Marcos, California, USA.

 

2. The Domain Names and Registrar

The disputed domain names are <aolpad.com> and <aolphone.com>.

The registrar of the disputed domain names is Register.com, Inc. with business address in New York, New York, USA.

 

3. Procedural History

The essential procedural history of the administrative proceeding is as follows:

(a) Complainant initiated the proceeding by the filing of a complaint via e-mail, received by the WIPO Arbitration and Mediation Center ("WIPO") on April 19, 2001, and by courier mail received by WIPO on April 20, 2001. Payment by Complainant of the requisite filing fees accompanied the courier mailing. On April 20, 2001, WIPO transmitted a Request for Registrar Verification to the registrar, Register.com (with the Registrarís Response received by WIPO on April 23, 2001).

(b) On May 1, 2001, WIPO transmitted notification of the complaint and commencement of the proceeding to Respondent via e-mail, telefax and courier mail. WIPO notified Respondent that the final date for filing a response was May 20, 2001.

(c) On May 1, 2001, Respondent transmitted an informal e-mail message to WIPO regarding his position in respect to this matter. On May 22, 2001, WIPO transmitted by e-mail to Respondent notification of his default in responding to the complaint. On May 22, 2001, Respondent transmitted an e-mail message to WIPO indicating that he had been out of town, and would still like to respond. On May 23, 2001, WIPO transmitted an e-mail message to Respondent indicating that the deadline for filing a response had passed, and that the panel appointed to determine this matter would decide whether to accept a late filing. Following substantial additional e-mail correspondence among Respondent, Complainant and WIPO, on May 29, 2001, Respondent transmitted to WIPO and Complainant via e-mail a response (dated June 6, 2001).

(d) On May 30, 2001, WIPO invited the undersigned to serve as panelist in this administrative proceeding, subject to receipt of an executed Statement of Acceptance and Declaration of Impartiality and Independence ("Statement and Declaration"). On May 31, 2001, the undersigned transmitted by fax the executed Statement and Declaration to WIPO.

(f) On June 6, 2001, 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 June 19, 2001. On June 6, 2001, the Panel received an electronic file in this matter by e-mail from WIPO. The Panel subsequently received a hard copy of the file in this matter by courier mail from WIPO.

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. The proceedings have been conducted in English.

 

4. Factual Background

Complainant has registered the typed-drawing service mark "AOL" on the Principal Register of the U.S. Patent and Trademark Office ("USPTO"), Reg. No. 1977731, dated June 4, 1996, covering, inter alia, telecommunications services, computer services and electronic storage and retrieval of data and documents (Complaint, Annex B). Complainant has also registered the typed-drawing service mark "AOL" on the Principal Register of the USPTO, Reg. No. 1984337, dated July 2, 1996, covering, inter alia, computer operating programs and computer operating systems (id.). Complainant has registered the typed-drawing service mark "AOL.COM" on the Principal Register of the USPTO, Reg. No. 2325291, dated March 7, 2000, covering, inter alia, computer services (id., Annex C). Complainant has also registered the typed-drawing service mark "AOL.COM" on the Principal Register of the USPTO, Reg. No. 2325292, dated March 7, 2000, covering, inter alia, telecommunications services (id.).

Use of the "AOL" mark was initiated by Complainant at least as early as 1989, and use of the "AOL.COM" mark was initiated at least as early as 1992 (id., para. 4). Complainantís services are advertised and sold in the United States and elsewhere under the "AOL" and "AOL.COM" marks, and Complainant maintains a website at "www.aol.com" (id., Annex G).

Complainant operates the most widely-used interactive online service in the world (id., para. 6). Complainantís "AOL" and "AOL.COM" marks are widely used and well known among Internet users throughout the world.

Complainant uses its "AOL" mark in connection with advertising services on the Internet that are accessed by computers, telephones (including mobile telephones), and televisions (id., para. 2 & Annex G).

Register.comís verification response of April 23, 2001, to WIPO indicates that the domain names <aolpad.com> and <aolphone.com> are registered to Respondent and are in active status. Register.comís response indicates that Respondentís records of registration for the disputed domain names were each created on March 1, 2000 and were last updated on March 20, 2001.

Respondent filed an application for trademark registration for the term "AOLPAD.COM" with the USPTO on March 21, 2001, in international class 9 covering "assistants Handheld devices; namely, wireless telephones and personal digital." Following an initial refusal from the USPTO, and written demand from Complainant, Respondent abandoned this application (date of abandonment, November 24, 2000, Complaint, para. 13 & Annex I).

Respondent has used the disputed domain names to direct Internet users to a website for RestaurantJobs.com, a business venture of Respondentís. (Complaint, para. 13 and Annex D). Respondent acknowledges that the disputed domain names were used in this manner, and following a promise to Complainant not to use them, but asserts that this was done inadvertently and for a period of only a few weeks because of his decision to direct all of his previously unused Register.com domain names to the RestaurantJobs.com website. Respondent asserts that he has redirected the disputed domain names to Complainantís www.aol.com website. (Response).

Commencing by letter of June 28, 2000, Complainant directed cease and desist and transfer demands to Respondent and his counsel. Although Respondent agreed to and did abandon his trademark application for "AOLPAD.COM", he refused to transfer the disputed domain names. Respondent indicated, for example by e-mail to Complainant dated December 18, 2000, that he considered Complainantís "AOL" mark to be "generic", and that he would be entitled to use that term in connection with a planned venture involving "Ďwhite boxí handheld devices using my trademarked ĎPad Familyí of names [that] has been in the works long before AOL has decided to enter this arena." Respondent also expressed disappointment that Complainant did not wish to discuss his business venture with him.

Respondent continues to assert in connection with this proceeding that he intends to use the disputed domain names in connection with a business venture involving handheld Internet access devices, "and would first seek AOLís approval before marketing my devices with these names" (Response).

The Service Agreement in effect between Respondent and Register.com subjects Respondent to Register.comís dispute settlement policy, the Uniform Domain Name Dispute Resolution Policy, as adopted by ICANN on August 26, 1999, and with implementing documents approved by 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, paragraph 4(a)).

 

5. Partiesí Contentions

A. Complainant

Complainant states that it is the holder of trademark registrations at the USPTO for the marks "AOL" and "AOL.COM" (see Factual Background, supra), that such marks are widely used and well-known in connection with its provision of Internet access and related services, and that the disputed domain names are confusingly similar to its well-known marks.

Complainant asserts that Respondent has no rights or legitimate interests in using its marks in the disputed domain names because Respondent is not authorized to use its marks and Respondent is not named or known by Complainantís mark.

Complaint alleges that Respondent has used the disputed domain names in bad faith. It states that Respondent (1) has improperly used the names to direct Internet users to its commercial website unrelated to Complainant, (2) by registering more than one domain name using Complainantís mark has engaged in a pattern of "cybersquatting", and (3) that Respondent has generally engaged in conduct previously disapproved of in ICANN proceedings.

Complainant requests that the Panel direct the registrar to transfer the disputed domain names to it.

B. Respondent

Respondent states that he registered the disputed domain names in the good faith belief that Complainantís marks were generic terms.

Respondent indicates that he has intended to use the disputed domain names in connection with a business venture that would produce handheld hardware devices to access the Internet and other services. He indicates that he would seek Complainantís approval "before marketing my devices with those names."

Respondent states that he has never intended to sell the disputed domain names.

Respondent states that his use of the disputed domain names to direct Internet users to his business website was inadvertent, and since the domain names and the business venture are unrelated, it would not have made business sense for him to use Complainantís mark in connection with his restaurant employment-related business.

Respondent states that extending protection for Complainantís mark to his proposed line of business would be anticompetitive.

 

6. Discussion and Findings

The Uniform Domain Name Dispute Resolution Policy (the "Policy") adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 (with implementing documents approved on October 24, 1999), is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.

It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy, and the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), establish procedures intended to assure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., paragraph 2(a), Rules).

In this case, the Panel is satisfied that WIPO took all steps reasonably necessary to notify the Respondent of the filing of the complaint and initiation of these proceedings. Respondent promptly acknowledged the commencement of the proceedings against him. Although Respondent was late in filing a response, this was not attributable to any act or omission by WIPO.

As a preliminary matter, the Panel accepts the late-filed response of Respondent. Respondent in an e-mail to WIPO sent well before the filing deadline made a number of the points subsequently made in his late-filed response, and explained his late formal filing by the press of other business matters. The Panel considers the interests of due process to be served by the acceptance of Respondentís late-filed response.

Paragraph 4(a) of the Policy sets forth 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 the complainant has rights; and

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

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

Each of the aforesaid three elements must be proved by a complainant to warrant relief.

Complainant is the holder of the registered trademarks "AOL" and "AOL.COM" that are well-known in the United States. Respondent concedes the well-known character of Complainantís marks, but has argued that he registered the disputed domain names in the good faith belief that the marks had become "generic".

Complainantís marks are not generic terms. A mark may become generic when it becomes so widely used to refer to a type of good or service that the public no longer associates it with an enterprise. An important element in determining whether a mark has become generic is whether the holder of the mark has failed to take steps to prevent unauthorized usage of the mark so as to allow it to become non-distinctive among members of the public. Respondent has presented no evidence, other than his own assertion, that Complainantís marks are generic terms and Complainant has demonstrably taken active steps to prevent its mark from losing its distinctive connection to its commercial enterprise. Complainantís "AOL" and "AOL.COM" marks are not generic terms.

Whether Respondent had a good faith belief that Complainantís marks were generic terms is not relevant to the question whether Respondent has registered domain names that are confusingly similar to marks in which Complainant has rights.

The Panel determines that the domain names <aolpad.com> and <aolphone.com> are confusingly similar to Complainantís "AOL" and "AOL.COM" marks. Each domain name combines Complainantís marks with a term that refers to a product or service that would be expected to be used in connection with an Internet service provider business. The well-known character of Complainantís mark increases the likelihood that Internet users and consumers would associate the disputed domain names with Complainant and its businesses.

Respondent asserts that the <aolpad.com> name would be used in connection with hardware, and thus in a line of commerce outside that of Complainant. However, a handheld Internet access device is so closely related to the Internet access services provided by Complainant that a consumer would very likely be confused by the use of Complainantís marks in a domain name used to market such a device, and conclude that Complainant was the source of or had authorized the marketing of the device.

The Panel determines that the disputed domain names <aolpad.com> and <aolphone.com> are confusingly similar to Complainantís "AOL" and "AOL.COM" marks within the meaning of paragraph 4(a)(i) of the Policy. Complainant has thus established the first of the three elements necessary to a finding that Respondent has engaged in abusive domain name registration and use.

The second element of a claim of abusive domain name registration and use is that the Respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:

"Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii)

(i) 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; or

(ii) 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; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue." (Policy, paragraph 4(c))

Respondent does not assert that his business has been commonly known by the disputed domain names. Respondent has not asserted any fair use rights in connection with the names.

Respondent has essentially argued that he has prepared to use the disputed domain names in connection with a planned business enterprise involving Internet access hardware.

Respondent registered the disputed domain names with full awareness of Complainantís marks. His assertion that he believed Complainantís marks to be invalid (as generic) cannot be a basis for according him rights or legitimate interests in the names. The USPTO had granted trademark registration to Complainant, creating a presumption of rights in its marks. If Respondent believed that the marks had subsequently fallen into the public domain, his recourse was at the USPTO or in federal court. He is not in a position to assert lack of notice of a dispute in preparing an offer of goods since he knew of Complainantís marks when he registered the disputed domain names. Respondent could not make a bona fide offer of goods under Complainantís marks since such an offer would involve knowing infringement of the marks. The claim by Respondent that he believed that Complainant did not have rights in its well known marks does not establish rights or legitimate interests in the disputed domain names.

Respondent has failed to establish rights or legitimate interests in the disputed domain names. Thus, Complainant has established the second element necessary to prevail on its claim that Respondent has engaged in abusive domain name registration and use.

The Policy indicates that certain circumstances may, "in particular but without limitation", be evidence of bad faith (Policy, para. 4(b)). Among these circumstances are (1) that the domain name has been registered or acquired by a respondent "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 [respondentís] documented out-of-pocket costs directly related to the domain name" (id., para. 4(b)(i)); (2) that a respondent has 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 [the respondent has] engaged in a pattern of such conduct" (id., para. 4(b)(ii)), and (3) that a respondent "by using the domain name, Ö [has] intentionally attempted to attract, for commercial gain, Internet users to [its] web site or other on-line location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of [respondentís] web site or location of a product or service on [its] web site or location" (id., para. 4(b)(iv)).

Respondent has refused to transfer the disputed domain names to Complainant following repeated demands. In his response in this proceeding, Respondent asserts his intention to use the disputed domain names to promote a line of handheld Internet access devices. He indicates that he would seek Complainantís approval for any marketing of hardware devices under the AOL marks.

Respondent has in substance proposed to obtain business concessions from Complainant through the assertion in the disputed domain names of rights in Complainantís marks. Respondent has proposed to use Complainantís marks to obtain consideration from Complainant in the form of business concessions. Respondent is not entitled to use Complainantís marks in the disputed domain names as a bargaining lever in negotiations with Complainant. Respondent has no rights in Complainantís marks. Such use of Complainantís marks is in bad faith within the meaning of paragraph 4(b) of the Policy.

In light of the foregoing determination, the Panel need not decide whether Respondentís registration of two names incorporating Complainantís marks is sufficient to establish a pattern of conduct. The Panel also need not decide whether Respondentís use of Complainantís marks in connection with directing Internet traffic to his commercial website constitutes bad faith.

Complainant has established the third and final element necessary for a finding that the Respondent has engaged in abusive domain name registration and use.

The Panel will therefore request the registrar to transfer the domain names <aolpad.com> and <aolphone.com> to the Complainant.

 

7. Decision

Based on its finding that the Respondent, Thomas P. Culver Enterprises, has engaged in abusive registration and use of the domain names <aolpad.com> and <aolphone.com> within the meaning of paragraph 4(a) of the Policy, the Panel orders that the domain names <aolpad.com> and <aolphone.com> be transferred to the Complainant, America Online, Inc.

 


 

Frederick M. Abbott
Sole Panelist

Dated: June 18, 2001