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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
America Online Inc v. Chan Chunkwong
Case No. D2001-1043
1. The Parties
The Complainant is America Online, Inc ('AOL'). AOL is a Delaware corporation with its principal place of business in Virginia, United States of America. The Complainant is represented by Mr. James R Davis II, Arent Fox Kintner Plotkin & Kahn, 1050 Connecticut Avenue, NW Washington, United States of America.
The respondent is Chan Chunkwong whose address is No94, 1/F., City Shopping Centre, No. 223, n.p. Road Electric, Hong Kong. The respondent has no authorised representative for this proceeding.
2. The Domain Name And Registrar
The domain name in dispute ('Domain Name') is <china-aol.com>.
The Domain Name was first registered on November 1, 1999.
The Registrar with which the Domain Name is registered is Network Solutions, Inc. of 505 Huntmar Park Drive, Herndon, VA 20170 USA.
3. Procedural History
The Complaint was filed in electronic format on August 17, 2001, and hard copies were filed on August 21, 2001. On August 22, 2001, the Center transmitted acknowledgment of receipt of complaint. On August 28, 2001, the Center transmitted a request for register verification to Network Solutions, Inc in connection with this case. On August 29, 2001, Network Solutions Inc. sent via e-mail to the Center a verification response confirming that the Respondent is the registrant.
On September 4, 2001, the Center verified the Complaint satisfied the requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the 'Policy'), the Rules for Uniform Domain Name Resolution Policy (the 'Rules') and the Supplemental Rules for Uniform Domain Name Dispute Resolution (the 'Supplemental Rules').
On September 5, 2001, the Center formally commenced this proceeding and sought to notify the Respondent that its response would be due by September 25, 2001. The Center notified the Respondent of default on September 28, 2001.
On October 11, 2001, the WIPO Arbitration and Mediation Center notified the parties that an Administrative Panel had been appointed consisting of a single member: Professor Michael Charles Pryles, who had submitted a "Statement of Acceptance and Declaration of Impartiality and Independence".
4. Factual Background
A. The Complainant
The Complainant is the owner of a number of registered trademarks for the mark 'aol'. They include United States trademark registration Nos. 1,977,731 and 1,984,337, which were registered on June 4, 1996 and July 2, 1996, respectively.
In addition, the Complainant owns United States trademark registrations Nos. 2,325,291 and 2,325,292 for the trademark 'aol.com'. The Complainant claims to have thirty million subscribers and operates a widely-used interactive online service. The trademarks have been and continue to be widely publicised through substantial advertising.
The Complainant uses its trademark 'aol.com' as a domain name for its web site. The trademark 'aol' is used extensively on the Complainant's web site, which is a significant method of promoting the Complainant's service.
B. The Respondent
According to Network Solutions' Whois database, the Respondent in this administrative proceeding is Chan Chunkwong of Hong Kong. The Respondent has not filed a response.
5. Parties’ Contentions
Domain Name and Registered Trade Mark Confusing Similar (paragraph 4(a)(i) of the Policy)
The Complainant contends that the Domain Name is nearly identical and confusingly similar to its registered trademarks. It is claimed that consumer confusion is likely because the mark AOL is used with the word 'China'. A country where AOL conducts a substantial amount of business.
The Respondent has not filed a response.
Legitimate Interest or Right in the Domain Name (paragraph 4(a)(ii) of the Policy)
The Complainant contends that the Respondent has no rights or legitimate interests in respect to the Domain Name. The Respondent is not named AOL and is not licensed or authorised to use the AOL mark.
The Respondent has not filed a response.
Registration in Bad Faith (paragraph 4(a)(iii) of the Policy)
The Complainant contends that the Respondent registered the Domain Name with a bad faith intent designed to capitalise on the Complainant's registered trademarks. The Complainant submits that the Respondent sought and seeks to profit from the goodwill attached to the registered trademarks.
The Complainant cites the following as evidence of the Respondent's bad faith:
(a) The Domain Name was registered a number of years (November 1,1999) after the Complainant's registration of the trademarks, 'aol' and 'aol.com'.
(b) The correlation in time between the registration of the Domain Name and the Complainant's media release promoting the launch of it's Hong Kong service (September 1999) points to a bad faith intent.
(c) The use of the Domain Name by the Respondent to collect information from consumers that visit the site points to an illicit purpose (supporting material provided in the Annexure to the Complainant's pleadings). The Complainant submits that consumers may mistakenly provide information to the Respondent via the Domain Name because of a misapprehension that the Domain Name is the Complainant's. The Respondent will benefit, it is claimed, ultimately through the confusion of unsuspecting consumers.
(d) On August 3, 2001 counsel for the Complainant sent a letter to the Respondent setting out the basis of the Complainant's claim over the Domain Name and requesting that the Respondent cease using the Domain Name. The Respondent replied on August 8, 2001 via email seeking a financial settlement for the sum of US $3,000. The Respondent's attempt to profit, it is submitted, demonstrates bad faith.
The Respondent has not filed a response.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following:
- the domain names are identical or confusingly similar to the trade marks; and
- the respondent has no right or legitimate interest in respect of the domain names; and
- the domain names have been registered and are being used in bad faith.
Paragraph 4(b) of the Policy sets out four illustrative circumstances that, if proved, constitute evidence of bad faith as required by paragraph 4(a)(iii) referred to above.
Paragraph 4(c) of the Policy sets out three illustrative circumstances that, if proved, constitute evidence of a right or legitimate interest as described in paragraph 4(a)(ii) referred to above.
Domain Names Identical / Confusingly Similar
The Complainant's registered trademarks and the Domain Name are confusingly similar. The geographical description 'china' in the Domain Name adds little to the primary phrase which is 'aol'. Thus the distinctive part of the Domain Name is 'aol', which is well known.
The Panel finds that the Domain Name is likely to confuse consumers who may reasonably assume that the Domain Name is in some way associated with the Complainant.
No Right or Legitimate Interest
There is no evidence that the Respondent has made a legitimate or fair use of the Domain Name, or that it is commonly known by the name AOL. In the absence of submissions by the Respondent, the Panel is unable to identify any legitimate right or interest as required in paragraph 4(a)(ii) of the Policy which the Respondent may claim.
I accordingly find that the Respondent has no right or legitimate interest in the Domain Name.
Domain Names Registered and Used in Bad Faith
There is evidence submitted by the Complainant that demonstrates bad faith by the Respondent. I note that the Domain Name was registered some time after the registration of the Complainant's trademark. The timing of the registration of the Domain Name appears to correlate with media releases and product launches made by the Complainant in the asian region. At the very least, the Respondent appears to have had a commercial intention of deriving profit from the similarly phrased Domain Name.
I am further persuaded that the Respondent has sought to derive financial gain from the misapprehension of Domain Name users. A misapprehension which may result in consumers mistakenly concluding that the Domain Name belonged to the Complainant. To the extent that information was sought from Domain Name users, I accept the Complainant's submission and concern that potential abuses would reflect poorly on the Complainant and that at the very least an explanation would be required of the Respondent. In any event no response has been filed by the Respondent.
It also appears the Respondent has sought financial settlement in the order of US$3000 to have the Domain Name transferred to the Complainant (refer to Annexure I of the Complaint). This amount is well above the initial costs of having the Domain Name registered. Paragraphs 4(b)(i) of the Policy states that there is evidence of registration and use of a domain name in bad faith if, inter alia, circumstances indicate that the domain name has been registered primarily for the purpose of selling the domain name. I find this established on the facts.
I find that in view of the above the Domain Name should be transferred to the Complainant.
Professor Michael Charles Pryles
Dated: October 18, 2001