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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

America Online, Inc. v. Dolphin@Heart

Case No. D2000-0713

 

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 Dolphin@Heart, with address in San Antonio, Texas, USA.

 

2. The Domain Name(s) and Registrar

The disputed domain names are "aolfrance.com", "aolgermany.com", "aolireland.com" and "aolspain.com".

The registrar of the disputed domain names is Network Solutions, Inc., with business address in Herndon, Virginia, USA.

 

3. Procedural History

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

a) The Complainant initiated the proceeding by the filing of a complaint via e-mail, received by the WIPO Arbitration and Mediation Center ("WIPO") on June 30, 2000, and by courier mail received by WIPO on July 5, 2000. Payment by Complainant of the requisite filing fees accompanied the courier mailing. On July 7, 2000, WIPO transmitted a Request for Registrar Verification to the registrar, Network Solutions, Inc.

b) On July 17, 2000, WIPO transmitted notification of the complaint and commencement of the proceeding to Respondent via e-mail, telefax and courier mail. On July 17, 2000, WIPO also transmitted notification of the complaint and commencement of the proceeding to Respondent’s Technical Contact via e-mail, telefax and courier mail.

c) A response from Respondent was received by WIPO via e-mail on July 30, 2000, and subsequently was received via airmail. Respondent also transmitted the response to Complainant.

d) On August 10, 2000, 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 August 10, 2000, the undersigned transmitted by fax the executed Statement and Declaration to WIPO.

e) On August 11, 2000, 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 August 25, 2000. On August 11, 2000, 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.).

Complainant has submitted substantial evidence of its use of the marks "AOL" and "AOL.COM" in commerce in connection, inter alia, with the advertisement and sale of Internet access and information services (id., Annex E). 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). Complainant’s 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 E). Complainant’s services are also advertised and sold to markets outside the United States, for example, in France and Germany, under the names "AOL France" and "AOL Germany", respectively (id.). Complainant maintains websites under various country code top-level domains (ccTLDs), for example, at "www.aol.fr" and "www.aol.de" (id.)

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

Network Solutions’ verification response of July 14, 2000, to WIPO indicates that the domain names "aolfrance.com", "aolgermany.com", "aolireland.com" and "aolspain.com" are registered to Respondent and are in active status. Network Solutions’ WHOIS database indicates that Respondent’s records of registration for the disputed domain names were each created on November 17, 1999, and were last updated on November 17, 1999 (Complaint, Annex D).

There is no evidence on the record of this proceeding of any use of the disputed domain names by Respondent in connection with the maintenance of websites.

On March 30, 2000, Complainant sent a cease and desist letter to Respondent regarding the disputed domain names, demanding that Respondent transfer the names to Complainant (Letter from Mariah Garvey to Dolphin@Heart, Complaint, Annex G). Following a telephone conversation with Complainant’s legal representative, Respondent offered by e-mail to sell the disputed domain names to Complainant for $5,000 each. In its e-mail, Respondent referred to a "proposed ‘Always On-Line’ venture … more closely tied to family matters" (E-mail from Richard Blom to Mariah Garvey of April 17, 2000, id., Annex F).

The Service Agreement in effect between Respondent and Network Solutions subjects Respondent to Network Solutions’ 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, para. 4(a)). Respondent has not contested that it is properly before this Administrative Panel.

 

5. Parties’ Contentions

A. Complainant

Complainant states on its own behalf:

"[12.] This Complaint is based on the following grounds:

1. Complainant America Online, Inc. (‘AOL’) is the owner of numerous trademark registrations worldwide for the mark AOL, including U.S. Registration Nos. 1,977,731 and 1,984,337, which were registered on June 4, 1996, and July 2, 1996, respectively (evidence of U.S. trademark registrations are included [herewith]). AOL also owns federal trademark registration Nos. 2,325,291and 2,325,292 for the mark AOL.COM (evidence of U.S. trademark registrations are included [herewith]). The mark AOL is used extensively at this portal Web site, which is a significant method of promoting AOL's service. As a result, consumers associate the mark AOL, when used in a domain name, with AOL's services.

2. AOL provides its services in numerous countries around the world, including France, Germany, Ireland and Spain, and the AOL service is accessible from every country that has access to the Internet. AOL frequently uses AOL as a prefix in connection with the country name as a mark for the AOL service in a particular country, e.g., AOL France, AOL Germany, etc. (collectively the ‘AOL International Marks’) (screen shot showing AOL’s worldwide services and use of the AOL International Marks is included [herewith]).

3. Long prior to Respondent’s registration of the domain names ‘aolfrance.com’ ‘aolgermany.com’ ‘aolireland.com’ and ‘aolspain.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.

4. AOL has invested substantial sums of money in developing and marketing its services and marks.

5. With over twenty-two 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, AOL International and AOL.COM marks; millions more are exposed to said marks through advertising and promotion.

6. The AOL, AOL International 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.

7. Sales of services under the AOL, AOL International 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.

8. Because of these substantial advertising expenditures and sales, the distinctive AOL, AOL International and AOL.COM marks have become well-known and famous among members of the purchasing public.

9. On November 17, 1999, long after AOL's adoption and first use of the AOL, AOL International and AOL.COM marks, Respondent registered the domain names ‘aolfrance.com’ ‘aolgermany.com’ ‘aolireland.com’ and ‘aolspain.com’ using the registrar Network Solutions (Whois records for the domain names are attached [herewith]).

10. The domain names ‘aolfrance.com’ ‘aolgermany.com’ ‘aolireland.com’ and ‘aolspain.com’are nearly identical and confusingly similar to the AOL, AOL International and AOL.COM marks.

11. Respondent registered and used the domain names ‘aolfrance.com’ ‘aolgermany.com’ ‘aolireland.com’ and ‘aolspain.com’ in bad faith for the purposes of capitalizing on the famous AOL, AOL International and AOL.COM marks and profiting from the international and domestic goodwill AOL has built up in its famous marks.

12. Respondent has no rights or legitimate interests in respect to the domain names ‘aolfrance.com’ ‘aolgermany.com’ ‘aolireland.com’ and ‘aolspain.com’. The following is evidence of Respondent’s bad faith registration and use of the domain names:

(a) Respondent’s bad faith registration of the domain names is evidenced by the fact that it registered the domain names on November 17, 1999, long after AOL's adoption and first use of the AOL, AOL International and AOL.COM marks and long after the mark AOL was registered in the United States.

(b) Respondent’s bad faith use of the domain names is evidenced by its offer to sell the domain names to AOL for $20,000, or $5,000 per domain name. (Copy of e-mail letter from Respondent attached [herewith]). Respondent’s offer to sell the domain names was made after counsel for AOL sent Respondent a letter explaining AOL’s rights in its marks and objecting to Respondent’s registration and use of the domain names ‘aolfrance.com’ ‘aolgermany.com’ ‘aolireland.com’ and ‘aolspain.com’. (Copy of letter attached [herewith]). Use of the mark AOL in this manner shows that Respondent registered and used the domain names solely for the bad faith purpose of profiting from the goodwill AOL has built in its AOL, AOL International and AOL.COM marks.

(c) Respondent’s bad faith registration and use of the domain names is evidenced by Respondent’s letter, wherein Respondent admits that he is an AOL shareholder and subscriber. In fact, the Whois records and Respondent’s e-mail letter show that Respondent uses an AOL e-mail account and, therefore, Respondent cannot claim that he had no knowledge of the AOL service or its use of its AOL marks.

(d) Respondent’s bad faith registration and use of the domain names is further evidenced by the fact that Respondent has not made a legitimate use of the domain names since they were registered over seven months ago.

13. Based upon the fame of AOL's marks, and AOL's numerous trademark registrations for AOL and AOL.COM, Respondent cannot, in good faith, claim that it had no knowledge of AOL's rights in its very famous AOL and AOL.COM marks. In fact, Respondent admits that he does have knowledge of AOL and its marks and, furthermore, that he is an AOL subscriber and shareholder. Moreover, 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 names AOL, AOL.COM, AOL France, AOL Germany, AOL Ireland or AOL Spain." (Complaint)

Complainant requests that the Panel ask the registrar to transfer the domain names "aolfrance.com", "aolgermany.com", "aolireland.com" and "aolspain.com" from Respondent to it (id., para. 13).

B. Respondent

Respondent states on its own behalf:

"Respondent, Dolphin@Heart, respectfully disagrees that it acted in bad faith when submitting an offer letter sent to Ms. Garvey, attorney representing AOL, on April 17, 2000. In fact, after receiving a threatening letter from Ms. Garvey, Respondent promptly called her to discuss issues raised in her letter. Respondent plainly explained that it came up with aolireland.com, aolspain.com, aolgermany.com, and aolfrance.com to represent ‘Always On Line.’ Ms. Garvey appreciated my explanation and requested that I put an offer ‘in writing’ and she would see what she can do about fairly compensating Dolphin@Heart for the domains her client, AOL, was interested in.

Well, after thinking about the threatening letter and coming to the realization I was being bullied by an attorney representing AOL, I felt the need to seek what I felt was fair compensation for the domains I had registered. The question that kept going through my mind was, ‘If AOL felt my domains were so important, why didn't AOL register them first?’ After all, AOL is in the computer business...and I am not!

So an offer letter was sent to Ms. Garvey, as she requested, explaining the discrepancies between what AOL believes and what Dolphin@Heart's intentions really were. AOL is now using my email as evidence of bad faith.’ [sic] Quite a cheap shot, and the unnecesary [sic] use of shady, blackmailing tactics, in my opinion.

Complainant cites the Anticybersquatting Consumer Protection Act as evidence for requiring my transferring of my domains to AOL. The fact is that Dolphin@Heart registered the above referenced domains PRIOR to the law taking effect. Fact is that AOL had exactly the same opportunity to register the same domains as Dolphin@Heart did. Is AOL too big to realize how easy it is to register domains it deems important for their business? Is AOL so powerful that it can arrogantly demand domains registered by ‘the little people’ but AOL NOW WANTS?

It is fairly easy for high-priced lawyers representing AOL to re-phrase the Anticybersquatting Consumer Protection Act and represent it as pertinent to this case. It is also easy for those same lawyers to use legal ‘scare tactics’ against those who they deem powerless. What is not easy is for the same high-priced lawyers to explain WHY they first asked Dolphin@Heart to ‘put an offer in writing’ and then turn around and use Dolphin@Heart's response as ‘bad faith’ against Dolphin@Heart?

If my domains are ‘confusingly similar, etc.’ then EVERY domain on the internet can be interpreted as ‘confusingly similar’ to other registered domains.

Will Paolo Hutchison, who registered Paolo.com, be losing his domain because AOL might read it as pAOLo.com and therefore argue that it is ‘confusingly similar’ to AOL.com? What about South Africa OnLine and their Saol.com? I'm sure AOL reads it sAOL.com. Why stop there? Will AOL then seek the following domains that others have registered? aaol.com? baol.com? caol.com? daol.com? eaol.com? faol.com? gaol.com? haol.com? iaol.com? jaol.com? kaol.com? laol.com? maol.com? naol.com? oaol.com? qaol.com? raol.com? taol.com? uaol.com? vaol.com? waol.com? xaol.com? yaol.com? and zaol.com?

If it is AOL's quest to own or control ALL domains that contain the letters A, O, and L, then my examples are not ridiculous. Perhaps the proposed AOL and Time Warner merger IS monopolistic and anti-competitive, as many contend.

If my domains are ‘confusingly similar,’ how can ICANN comfortably or professionally act and rule on a domain dispute matter when their own domain name, ICANN.com is ‘confusingly similar [sic] to ICAN.com, registered by Red River Farms, and ‘confusingly similar’ to ICANT.com and ICANNOT.com? Will ICANN be taking Red River Farms to ICANN's World Intellectual Property Organization Arbitration And Mediation Center's Uniform Domain Name Dispute Resolution? There are unlimited examples I can contribute for consideration by the Court.

AOL is now challenging another's rights to ‘Buddy List.’ I have an Uncle Buddy. Who will tell my Uncle Buddy that he has no rights to ‘Buddy,’ and it belongs exclusively to AOL ? Should I now forever link the word ‘list’ to the AOL affiliated ‘Buddy List,’ even when thinking about a grocery ‘list’ or laundry list’ [sic] or ‘Top Ten List.’ Do I have to pay AOL royalties if I dare utter the words ‘Buddy’ or ‘List?’ Should I stop saying or using the word ‘mail’ for fear that AOL persecute me for not having ‘... rights or legitimate interest to the word MAIL,’ because of AOL's ‘You've got mail?’

Dolphin@Heart wants nothing more than to be fairly compensated for expenses it incurred, directly and indirectly, for the domains it registered. The monetary amount requested per domain IS NOT excessive, it IS NOT extortion, it IS NOT ‘bad faith,’ it IS NOT ‘profiting from the good will of AOL,’ it IS NOT unreasonable, it IS NOT subversive, and it IS NOT unreasonable. If the Uniform Policy for Domain Name Dispute Resolution deems $5000 per domain to be excessive, Dolphin@Heart respectfully requests that the appointed Administrative Panelist or Judge show courage, expression of individual freedom of thought, and conviction to assess and propose a fair and reasonable settlement amount for the transfer of domains requested by AOL. The World Intellectual Property Organization Arbitration And Mediation Center MUST show, in good faith, that it does not ALWAYS rule in favor of the large, dues contributing, multi-national corporations. It must show that a RESPONDENT does have a ‘fighting chance’ of being fairly compensated for domains it registered in good faith. It must take a stand for democracy, freedom and liberty for all, including individuals or small business owners who do not have the means to defend themselves against rich, large and powerful multi-national corporations who file ANY ACTION OR COMPLAINT AGAINST THEM. World Intellectual Property Organization Arbitration And Mediation Center must prove to the world that it was not set up by large multi-national companies intent on setting up a ‘kangaroo’ Arbitration Court to ensure that virtually ALL decisions would favor the same large multi-national companies. If that is the case, don't be surprised if Mike Wallace of 60 Minutes and/or John Stossel of ABC's 20/20 comes knocking on ICANN's ‘door.’"(Response)

 

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. This sole panelist has in an earlier decision discussed the background of the administrative panel procedure, and the legal characteristics of domain names, and refers to this earlier decision for such discussion. 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 has 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., para. 2(a), Rules).

In this proceeding, Respondent has furnished a Response to the Complaint in a timely manner. There is no issue as to whether Respondent received adequate notice of these proceedings.

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) Respondent’s 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) Respondent’s 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 service mark registrations regarding various classes of services for "AOL" in the United States and is using that mark in commerce (see Factual Background, supra). Complainant’s registration of the service mark on the Principal Register at the USPTO establishes a presumption of validity of the mark in U.S. law. The Panel determines that Complainant has rights in the service mark "AOL". Based on the June 4, 1996, date of Complainant’s registration of the service mark "AOL" (the earliest of those submitted in this proceeding by Complainant), and without prejudice to whether Complainant may hold earlier-arising rights in the mark, the Panel determines that Complainant’s rights in that service mark arose prior to Respondent’s registration, on November 17, 1999, of the disputed domain names "aolfrance.com", "aolgermany.com", "aolireland.com" and "aolspain.com".

Complainant is the holder of service mark registrations for "AOL.COM" in the United States and is using that mark in commerce (see Factual Background, supra). Complainant’s registration of the service mark on the Principal Register at the PTO establishes a presumption of validity of the mark in U.S. law. The Panel determines that Complainant has rights in the service mark "AOL.COM". Based on Complainant’s unrefutted allegation that use of that mark in commerce commenced at least as early as 1992, the Panel determines that Complainant’s rights in that service mark arose prior to Respondent’s registration, on November 17, 1999, of the disputed domain names "aolfrance.com", "aolgermany.com", "aolireland.com" and "aolspain.com".

Respondent uses the service names "AOL France" and "AOL Germany" to advertise and sell its services in France and Germany, respectively.

Respondent has registered the domain names "aolfrance.com", "aolgermany.com", "aolireland.com" and "aolspain.com". These domain names are identical to Complainant’s "AOL.COM" service mark, except that the domain names insert the country names "france", "germany", "ireland" and "spain", respectively, between "aol" and ".com".

The addition of the name of a place to a service mark, such as the addition of "France" to "AOL", is a common method for specifying the location of business services provided under the service mark. The addition of a place name generally does not alter the underlying mark to which it is added. A consumer or user of the Internet viewing the address "www.aolfrance.com" is likely to assume that Complainant is the sponsor of or associated with the website identified by the disputed domain name, particularly in light of the fact that Complainant routinely uses its "AOL" service mark in combination with country names in its advertisements on the Internet. The elimination of the space between "aol" and a country name is dictated by technical factors and customary practice among domain name registrants, and is without legal significance from the standpoint of comparing "AOL" and "AOL.COM" to "aolfrance.com", "aolgermany.com", "aolireland.com" and "aolspain.com". The panel determines that "aolfrance.com", "aolgermany.com", "aolireland.com" and "aolspain.com" are confusingly similar to the service marks "AOL" and "AOL.COM" in which Complainant has rights.

Complainant has met the burden of proving that Respondent is the registrant of domain names (as to each disputed name) that are identical or confusingly similar to a service mark in which the Complainant has rights, and it has thus established the first of the three elements necessary to a finding that Respondent has engaged in abusive domain name registration.

In order to prevail on its claim of abusive domain name registration under the Policy, Complainant must also establish that Respondent has no rights or legitimate interests in respect of the disputed domain names (Policy, para. 4(a)(ii)). The Policy expressly 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, para. 4(c))

Respondent has furnished no evidence of use of the disputed domain names. It has asserted an intent to establish a business known as "Always On-Line". Respondent has provided no indication of what the nature of such business would be, except (in e-mail correspondence to Complainant) that it would be "more closely tied to family matters" than Complainant’s business. Paragraph 4(c) of the Policy does not contemplate the attribution of rights based on the abbreviation of the name of a hypothetical future business enterprise.

Respondent has not established rights or legitimate interests in the disputed domain names. It has not used the names in connection with the bona fide offering of goods or services, it has not been commonly known by the domain names, and it is not making legitimate noncommercial or fair use of the names. The Panel determines that Respondent has no rights or legitimate interests in the disputed domain names. Thus, the Complainant has established the second element necessary to prevail on its claim that Respondent has engaged in abusive domain name registration.

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 [respondent’s] 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, … [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 complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] web site or location of a product or service on [its] web site or location" (id., para. 4(b)(iv)).

In this case, Respondent offered to sell the disputed domain names to Complainant in response to a cease and desist demand from Complainant. Standing alone, an offer to sell domain names in response to a demand from another party does not constitute bad faith within the meaning of the Policy. There is nothing inherently wrongful in the offer or sale of domain names, without more, such as to justify a finding of bad faith under the Policy. However, the fact that domain name registrants may legitimately and in good faith sell domain names does not imply a right in such registrants to sell domain names that are identical or confusingly similar to trademarks or service marks of others without their consent.

The Respondent in this case has offered to sell to Complainant, at a substantial price, domain names corresponding to marks in which Complainant has rights. Respondent was demonstrably well aware of Complainant’s rights and interests in the "AOL" marks when it registered the disputed domain names. Respondent was aware of the commercial value of Complainant’s marks as the means to identify Complainant as the source of Internet access and other services. Under these circumstances, it is reasonable to infer that Respondent registered the disputed domain names with the primary intention of selling them to Complainant (or to a competitor) for valuable consideration in excess of its out-of-pocket expenses directly related to the names. This constitutes bad faith within the meaning of paragraph 4(b)(i) of the Policy.

Also, by registering several domain names that are identical or confusingly similar to Complainant’s service marks, Respondent has prevented Complainant from reflecting its marks in corresponding domain names. The registration of several names corresponding to Complainant’s service marks is sufficient to constitute a pattern of such conduct, and thus to constitute bad faith within the meaning of paragraph 4(b)(ii) of the Policy.

Respondent is determined to have registered and used the disputed domain names in bad faith within the meaning of paragraph 4(b) of the Policy. Complainant has established the third and final element necessary for a finding that the Respondent has engaged in abusive domain name registration.

The Panel will therefore request the registrar to transfer the domain names "aolfrance.com", "aolgermany.com", "aolireland.com" and "aolspain.com" to the Complainant.

 

7. Decision

Based on its finding that the Respondent, Dolphin@Heart, has engaged in abusive registration of the domain names "aolfrance.com", "aolgermany.com", "aolireland.com" and "aolspain.com" within the meaning of paragraph 4(a) of the Policy, the Panel orders that the domain names "aolfrance.com", "aolgermany.com", "aolireland.com" and "aolspain.com" be transferred to the Complainant, America Online, Inc.

 


 

Frederick M. Abbott
Sole Panelist

Dated: August 24, 2000


 

Footnotes:

1. See, e.g., WIPO, The Management of Internet Names and Addresses: Intellectual Property Issues, Report of the WIPO Internet Domain Name Process, http://wipo2.wipo.int, Apr. 30, 1999, WIPO Pub. No. 439 (E), at para. 7 and Annexes VIII & IX, for description of ccTLD domain name registration systems.

2. See Educational Testing Service v. TOEFL, Case No. D2000-0044, decided March 16, 2000.

3. 15 USCS § 1057(b). See, e.g., Avery Dennison v. Sumpton (9th Cir. 1999), 189 F.3d 868.

4. Id.

5. This is consistent with the determination in Wal-Mart v. Walmarket Canada, D2000-0150, dated May 2, 2000, at sec. 6, that "walmartcanada.com" is confusingly similar to "Wal-Mart".

 

Источник информации: http://www.internet-law.ru/intlaw/udrp/2000/d2000-0713.html

 

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