Generic Top Level Domain Name (gTLD) Decisions

ARBITRATION BEFORE

THE NATIONAL ARBITRATION FORUM

REGARDING AN INTERNET DOMAIN NAME DISPUTE

America Online, Inc.,

COMPLAINANT,

vs.

iDomainNames.com,

RESPONDENT.

Forum File No.: FA 0002000093766

FINDINGS OF FACT AND CONCLUSIONS

The above entitled matter came on for an Administrative Hearing before the undersigned on the Complaint of America Online, Inc., ("AOL") against Respondent, iDomainNames.com ("iDomain"). This matter has been brought under the Uniform Domain Name Dispute Resolution policy adopted by the Internet Corporation for assigned names and numbers ("ICANN") and the rules for Uniform Name Dispute Resolution policy adopted by ICANN on October 24, 1999.

The record reflects that the Complaint herein was received by the National Arbitration Forum ("the Forum") on February 16, 2000.

In accord with paragraph 4(a) of the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") and paragraph 4 of the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy, it was determined that the Complaint herein satisfies the requirements of the Policy, rules and supplemental rules; and in accord therewith, Respondent was sent a copy of the Complaint along with a notice that the same had been filed and advised pursuant to the Rules that a response to said Complaint was due no later than March 10, 2000. The record reflects that Respondent has failed to respond to the Complaint herein and is therefore in default.

Complainant AOL is located at 22000 AOL Way, Dulles, Virginia 20166 and is represented by James R. Davis, II, c/o Arent, Fox, Kintner, Plotkin & Kahn, PLLC, 1050 Connecticut Avenue, N.W., Washington, D.C. 20036-5339 who may be contacted by telephone at (202) 857-6169, via facsimile at (202) 857-6395, or by e-mail at davisr@arentfox.com.

Respondent’s name and address are given as iDomainNames.com, 7605 98^th Avenue CT SW, Tacoma, Washington 98498; the telephone number is given as (253) 588-2339; facsimile no.: (253) 984-0632; and e-mail ktinsley@AA.NET. Its administrative contact is said to be Kevin Tinsley.

The domain name which is the subject of the Complaint herein is "go2AOL.com" registered with Network Solutions. The record reflects that Complainant AOL is the owner of numerous trademark registrations worldwide in the United States for the mark AOL, including U.S. Trademark registration nos. 1,977,731 and 1,984,337, registered on June 4, 1996, and July 2, 1996, respectively.

The record further reflects that Complainant AOL uses the mark AOL.COM as a domain name for its portal website. Extensive use of the mark AOL at this portal website is a significant method of promoting AOL’s service. As a consequence, the mark AOL is understandably associated by consumers with the services offered by Complainant. AOL’s mark applications for the mark AOL.COM have been approved for registration by the Patent and Trademark Office of the United States.

The record further reflects that long prior to Respondent’s registration of "go2AOL.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 mark in connection with computer on-line services and other internet-related services. Additionally, AOL has used the distinctive AOL and AOL.COM marks continuously and extensively in interstate and international commerce in connection with the advertising and sale of its internet and computer-related services. It is unrefuted that the general public has come to associate the AOL name and marks with services of high and uniform quality. Said marks have become well known among the purchasing public.

Respondent’s bad-faith use of the domain name is evidenced by its pattern of registering numerous other domain names on various topics unrelated to iDomain or its owner, many of which on their face appear to infringe upon other famous marks and internet websites, including the following:

iDomain Registration Trademark Being Infringed

"i007.com" 007

"toys-e.com" and "toyse.com" ETOYS

"loane.com" E-LOAN.COM

"flowerse.com" EFLOWERS.COM

"igolfusa.com" GOLF USA

"imortgageusa.com" MORTGAGE USA

"icarusa.com" CAR U.S.A.

Further evidence of the undersigned’s conclusion that the Respondent’s use of the mark in issue is reflected by the fact that it offered to sell "go2AOL.com" at an internet auction site. Such action mirrors the very conduct that Congress attempts to deter by its recent enactment of the Anticybersquatting Consumer Protection Act, Pb.L. 106-113 ("ACPA"). That Act represents a new force against individuals who acting in bad faith, register, traffic in, or use domain names that are identical to, confusingly similar to, or, dilutive, as in the instant case, of existing marks.

The record further reflects that on November 16, 1999, counsel for the Complainant informed the Respondent of AOL’s intellectual property rights in the marks AOL and AOL.COM and asserted an objection to Respondent’s unauthorized registration or commercial use of "go2AOL.com." The same communication (letter of November 16, 1999) requested that Respondent transfer the domain name to its rightful owner, all to no avail.

In conclusion, the undersigned finds that Respondent has wrongfully registered and offered to sell the domain name "go2AOL.com" which is nearly identical and confusingly similar to Complainant’s marks to which reference have previously been made. Under the law, such conduct constitutes commercial use, and diminishes Complainant’s effective identification and distinguishing aspect of its goods and services by means of the internet. See Panavision Int’l. v. Toeppen, [1998] USCA9 991; 141 F.3d 1316, 1326 (9th Cir. 1998).

For the reasons herein stated and pursuant to the authority vested in the undersigned, it is

DIRECTED that the registration of the domain name "go2AOL.com" be forthwith transferred to the Complainant, America OnLine, Inc.

The undersigned certifies that he has acted independently and has no known conflict in serving as the arbitrator in this proceeding.

Robert R. Merhige, Jr.

U.S.D.J. (Ret.)