WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
America Online, Inc. v. Steve Portaro
Case No. D2000-0992
1. The Parties
The Complainant is America Online, Inc., a corporation organized and existing under the laws of the State of Delaware, United States of America, having its principal place of business at 22000 AOL Way, Dulles, Virginia, United States of America.
The Respondent is Steve Portaro, an individual having an address at 1135 Ellis a-307, San Francisco, California, United States of America.
2. The Domain Name(s) and Registrar(s)
The domain name at issue is <aolcams.com>, which domain name is registered with Network Solutions, Inc., based in Herndon, Virginia.
3. Procedural History
3.1 A Complaint was submitted electronically to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on August 9, 2000, and the signed original together with four copies forwarded by express courier was received on August 11, 2000. An Acknowledgment of Receipt was sent by the WIPO Center to the Complainant, dated August 15, 2000.
3.2 On August 16, 2000, a Request for Registrar Verification was transmitted to the registrar, Network Solutions, Inc. ("NSI") requesting it to: (1) confirm that the domain name at in issue is registered with NSI; (2) confirm that the person identified as the Respondent is the current registrant of the domain name; (3) provide the full contact details (i.e., postal address(es), telephone number(s), facsimile number(s), e-mail address(es)) available in the registrar’s Whois database for the registrant of the disputed domain name, the technical contact, the administrative contact and the billing contact; (4) confirm that the Uniform Domain Name Dispute Resolution Policy (the "Policy") is in effect; (5) indicate the current status of the domain name.
3.3 On August 21, 2000, NSI confirmed by reply e-mail that the domain name at issue is registered with NSI, is currently in active status, and that the Respondent is the current registrant of the name. The registrar also forwarded the requested Whois details, and confirmed that the Policy is in effect.
3.4 The WIPO Center determined that the Complaint satisfies the formal requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy (the "Uniform Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint is in formal compliance with the requirements of the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999 (the "Policy"), the Uniform Rules, and the Supplemental Rules. The required fees for a single-member Panel were paid on time and in the required amount by the Complainant.
3.5 No formal deficiencies having been recorded, on August 25, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent (with copies to the Complainant, NSI and ICANN), setting a deadline of September 13, 2000, by which the Respondent could file a Response to the Complaint. The Commencement Notification was transmitted to the Respondent by courier and by e-mail to the e-mail addresses indicated in the Complaint. In any event, evidence of proper notice is provided by the evidence in the record of the Respondent’s participation in these proceedings.
3.6 A Response was received on September 13, 2000. An Acknowledgment of Receipt (Response) was sent by the WIPO Center on September 13, 2000.
3.7 On September 18, 2000, the WIPO Center received by email and on September 19, 2000, the WIPO Center received by fax Respondent's Supplemental Brief. On September 19, 2000 the WIPO Center advised the respondent that it was within the Panel's discretion whether to accept the supplemental response.
3.8 On November 13, 2000, having received M. Scott Donahey’s Statement of Acceptance and Declaration of Impartiality and Independence, the WIPO Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which M. Scott Donahey was formally appointed as the Sole Panelist. The Projected Decision Date was November 26, 2000. This was subsequently extended to December 4, 2000. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Uniform Rules and the WIPO Supplemental Rules.
4. Factual Background
4.1 Complainant has numerous trademark registrations worldwide for the mark AOL, including registrations with the United States Patent Office ("USPTO") on June 4, 1996, and July 2, 1996.
4.2 Complainant has used the AOL mark as a prefix for its AOL.COM mark and the AOL mark appears repeatedly at its portal Web site and on numerous Web pages accessible on the World Wide Web. It is undisputed that users tend to associate and identify the mark AOL with Complainant and the services that it offers.
4.3 Complainant frequently uses the AOL mark as a prefix in its marks, such as AOL ANYWHERE, AOLTV, AOL E-MAIL, AOL INSTANT MESSENGER, etc.
4.4 Complainant has invested substantial sums of money in developing and marketing its services and marks, and operates the most widely used interactive online service and has over twenty-two million subscribers. Sales of Complainant's services under the AOL marks have amounted to many billions of dollars.
4.5 Respondent registered the domain name at issue on April 25, 2000.
4.6 Respondent used the domain name at issue to resolve to a web site identified as <sexykat.com>. The Web site is what is euphemistically described as an "Adult Web Site." A visitor to the Web site can, for a fee, observe still pictures, view videos, or observe live action being broadcast by video cameras of various individuals engaging in varied sex acts.
4.7 Respondent contends that the second level domain name ("SLD") "aolcams" in <aolcams.com> is an acronym for "Always On Line Camera." The implication of the contention is that "Always On Line Camera" is a term of art or common usage for cameras which are always "on" and constantly transmitting images from a particular location, such as are used in currently popular "reality" television shows.
4.8 Respondent expressly admits that Complainant has the right to use of the America Online acronym "AOL" and that Complainant's registration of its trademarks and service marks predate Respondent' s registration of the domain name at issue.
4.9 Complainant sent Respondent a letter requesting that Respondent cease and desist from using the domain name at issue and asserting Complainant's rights in the trademarks and service marks.
5. Parties’ Contentions
5.1 Complainant contends that Respondent has registered as a domain name a mark which is nearly identical and substantially similar to the service marks and trademarks registered and used by Complainant, that Respondent has no rights or legitimate interests in respect of the domain name at issue, and that Respondent has registered and is using the domain name at issue in bad faith.
5.2 Respondent contends that the domain name at issue is not identical or substantially similar to Complainant's marks, that Respondent has rights and legitimate interests in respect of the domain name, and that Respondent did not register and is not using the domain name in bad faith.
6. Discussion and Findings
6.1 Respondent did not request permission to file his Supplemental Response, nor does the Panel find that it contains any material additional information. The Panel, therefore, declines to consider the Supplemental Response. Uniform Rules, Rule 12.
6.2 Paragraph 15(a) of the Uniform Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable."
6.3 Since both the Complainant and Respondent are domiciled in the United States, and since United States’ courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States.
6.4 Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
1) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,
2) that the Respondent has no legitimate interests in respect of the domain name; and,
3) that the domain name has been registered and is being used in bad faith.
6.5 It has been determined that the addition of a word or an acronym to a mark in constructing the SLD does not alter the fact that the domain name is confusingly similar to the mark to which the word or acronym has been appended. SGS Societe Generale de Surveillance S.A. v. Inspectorate, ICANN Case No. D2000-0025 (<sgsgroup.net>); America Online, Inc. v. Pedro Alex Jimenez, ICANN Case No. D2000-0991 (<aolmex.com>); America Online, Inc. v. Pablo Barrutia, ICANN Case No. FA 0003000094265 (<aolmoviefone.com>).
6.6 Respondent contends that its use of the mark is as an acronym for Always On Line Camera, and that it has as much of a right or legitimate interest in using such an acronym in its domain name as Complainant has for using the acronym AOL instead of its corporate name.
6.7 Such a contention might be sustained if Respondent had a corporate name of Always On Line Camera, or if Respondent had trademarked such a term. But Respondent has not.
6.8 It might be argued that such a contention should be sustained if the term "Always On Line Camera" is a term of art or generally accepted terminology or that Respondent had coined the term and used it extensively in its business. Respondent produced no evidence that "Always On Line Camera" was a term of art in the industry or that it was generally accepted terminology.
6.9 Both Complainant and Respondent referenced Respondent's Web site at www.sexykat.com. The Panel visited that site to see whether and to what extent the term "Always On Line Camera" was used by Respondent in its business. While the Panel found references to "streaming cams," "topcams," "suncams," "ultimate web cams," "live cams," and "free living room cam," the Panel did not find a single reference to "Always On Line Camera" or even "always on line cams."
6.10 Thus, the Panel determines that the Respondent has no right or legitimate interest in respect of the domain name at issue.
6.11 The remaining question for the Panel to determine is whether the domain name at issue has been registered and is being used in bad faith.
6.12 Paragraph 4,b of the Policy sets forth "in particular but without limitation" circumstances which "shall be evidence of registration and use of a domain name in bad faith." Those circumstances are:
"(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."
6.13 The Panel believes that, while in some instances the question is a close one, Complainant has failed to meet its burden as to any of the four particular set of circumstances set out in Paragraph 4,b. Although Respondent has clearly realized commercial gain by intentionally attracting Internet users to its web site by suggesting that it the domain name is sponsored by or connected with Complainant and by thereafter offering certain "adult" services for fees, it is highly unlikely that such Internet users, who were seeking the web site affiliated with a well known and well respected United States corporation, were likely to be confused that Complainant would deign to sponsor or endorse the products or services offered there.
6.14 However, under the proper facts and circumstances even inaction can constitute "bad faith" use (see, e.g., Telstra Corporation Limited v. Nuclear Marshmallows, ICANN Case No. D2000-0003, Para 7.12, at 10-11), and the Panel finds that Respondent has registered and is using the domain names at issue in bad faith. Using a domain name which is substantially similar to a registered mark, where the domain name resolves or links to sexually explicit web sites, has been held to constitute bad faith registration and use. Bass Hotels & Resorts, Inc. v. Mike Rodgerall, ICANN Case No. D2000-0568.
For all of the foregoing reasons, the Panel decides that the domain name registered by Respondent is confusingly similar to the mark in which the Complainant has rights, that the Respondent has no rights to or legitimate interests in respect of the domain name at issue, and that 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 <aolcams.com> be transferred to the Complainant.
M. Scott Donahey
Dated: December 4, 2000
1. It is well accepted that the Panel is entitled to consider publicly available facts, such as those revealed in a visit to Respondent's Web site, especially where, as here both Complainant and Respondent have referred to the content thereof. Draw-Tite, Inc. v. Pittsburgh Spring Inc., ICANN Case No. D2000-0017; High-Class Distributions S.r.l. v. Online Entertainment Services, ICANN Case No. D2000-0100. Such an action is tantamount to the taking of judicial notice under the United States Federal Rules of Evidence, Rule 201. Chernow Communications, Inc. v. Jonathan D. Kimball, ICANN Case No. D2000-0119.