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America Online, Inc. ("AOL") COMPLAINANT,
vs.
Asian On-Line This Domain For Sale, RESPONDENT.
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DECISION
Forum File No.: FA0004000094636
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The above entitled matter came on for an administrative hearing on
May 4, 2000 before the undersigned on the Complaint
of America Online,
Inc. ("AOL"), hereafter "Complainant", against Asian
On-Line This Domain For Sale, hereafter
"Respondent". Complainant
was represented by: James R. Davis. II, 1050 Connecticut Avenue N.W.,
Washington,
D.C. 20036. Respondent represented itself and submitted
a written response through Calvin Gruneck 67/4 MOO 3 Banlantong
Tambon
Huaysai Sankampang Chiangmai 50130 Thailand: Upon the written submitted
record, the following DECISION is made:
PROCEDURAL FINDINGS
Domain Name: ao-l.org
Domain Name Registrar: Internet Domain Registrars
Domain Name Registrant: Asian On-Line This Domain Is For Sale
Date of Domain Name Registration: January 25, 2000
Date Complaint Filed: April 12, 2000
Domain Name: ao-laustralia.com
Domain Name Registrar: Internet Domain Registrars
Domain Name Registrant: Asian On-Line This Domain Is For Sale
Date of Domain Name Registration: January 24, 2000
Date Complaint Filed: April 12, 2000
Domain Name: ao-lchina.com
Domain Name Registrar: Internet Domain Registrars
Domain Name Registrant: Asian On-Line This Domain Is For Sale
Date of Domain Name Registration: January 21, 2000
Date Complaint Filed: April 12, 2000
Domain Name: ao-leurope.com
Domain Name Registrar: Internet Domain Registrars
Domain Name Registrant: Asian On-Line This Domain Is For Sale
Date of Domain Name Registration: January 30, 2000
Date Complaint Filed: April 12, 2000
Domain Name: ao-lhongkong.com
Domain Name Registrar: Internet Domain Registrars
Domain Name Registrant: Asian On-Line This Domain Is For Sale
Date of Domain Name Registration: January 22, 2000
Date Complaint Filed: April 12, 2000
Domain Name: ao-lindia.com
Domain Name Registrar: Internet Domain Registrars
Domain Name Registrant: Asian On-Line This Domain Is For Sale
Date of Domain Name Registration: January 22, 2000
Date Complaint Filed: April 12, 2000
Domain Name: ao-lindonesia.com
Domain Name Registrar: Internet Domain Registrars
Domain Name Registrant: Asian On-Line This Domain Is For Sale
Date of Domain Name Registration: January 24, 2000
Date Complaint Filed: April 12, 2000
Domain Name: ao-ljapan.com
Domain Name Registrar: Internet Domain Registrars
Domain Name Registrant: Asian On-Line This Domain Is For Sale
Date of Domain Name Registration: January 21, 2000
Date Complaint Filed: April 12, 2000
Domain Name: ao-lkorea.com
Domain Name Registrar: Internet Domain Registrars
Domain Name Registrant: Asian On-Line This Domain Is For Sale
Date of Domain Name Registration: January 22, 2000
Date Complaint Filed: April 12, 2000
Domain Name: ao-lmalaysia.com
Domain Name Registrar: Internet Domain Registrars
Domain Name Registrant: Asian On-Line This Domain Is For Sale
Date of Domain Name Registration: January 22, 2000
Date Complaint Filed: April 12, 2000
Domain Name: ao-lphilippines.com
Domain Name Registrar: Internet Domain Registrars
Domain Name Registrant: Asian On-Line This Domain Is For Sale
Date of Domain Name Registration: January 24, 2000
Date Complaint Filed: April 12, 2000
Domain Name: ao-lsingapore.com
Domain Name Registrar: Internet Domain Registrars
Domain Name Registrant: Asian On-Line This Domain Is For Sale
Date of Domain Name Registration: January 21, 2000
Date Complaint Filed: April 12, 2000
Domain Name: ao-lsouthamerica.com
Domain Name Registrar: Internet Domain Registrars
Domain Name Registrant: Asian On-Line This Domain Is For Sale
Date of Domain Name Registration: January 30, 2000
Date Complaint Filed: April 12, 2000
Domain Name: ao-ltaiwan.com
Domain Name Registrar: Internet Domain Registrars
Domain Name Registrant: Asian On-Line This Domain Is For Sale
Date of Domain Name Registration: January 22, 2000
Date Complaint Filed: April 12, 2000
Domain Name: ao-lthailand.com
Domain Name Registrar: Internet Domain Registrars
Domain Name Registrant: Asian On-Line This Domain Is For Sale
Date of Domain Name Registration: January 22, 2000
Date Complaint Filed: April 12, 2000
Domain Name: ao-lus.com
Domain Name Registrar: Internet Domain Registrars
Domain Name Registrant: Asian On-Line This Domain Is For Sale
Date of Domain Name Registration: January 22, 2000
Date Complaint Filed: April 12, 2000
Date of Commencement of Administrative Proceeding in accordance with
Rule 2(a) and Rule 4(c): April 19, 2000
Respondent’s Response in
accordance with Rule 5(a): May 9, 2000
After reviewing the Complaint, and determining it to be in administrative
compliance, the National Arbitration Forum (The
Forum) forwarded the
Complaint to the Respondent on April 19, 2000 in compliance with Rule
2(a), and the administrative
proceeding was commenced pursuant to Rule
4(c). In compliance with Rule 4(d), The Forum immediately notified Internet
Domain Registrars, the Internet Corporation for Assigned Names and Numbers
(ICANN), and the Complainant that
the administrative proceeding had
commenced. Respondent, through Calvin Gruneck, submitted a response
to The
Forum pursuant to Rule 5(a) on April 25, 2000. Between January
21, 2000 and January 30, 2000, Respondent registered the
domain names
"ao-l.org; ao-laustralia.com; ao-lchina.com; ao-leurope.com; ao-lhongkong.com;
ao-lindia.com;
ao-lindonesia.com; ao-ljapan.com; ao-lkorea.com; ao-lmalaysia.com;
ao-lphilippines.com; ao-lsingapore.com; ao-lsouthamerica.com;
ao-ltaiwan.com;
ao-lthailand.com; and ao-lus.com (hereinafter "Disputed Domain
Names") with Internet Domain
Registrars, the entity that is the
Registrar of the domain names. On April 19, 2000, Internet Domain Registrars
verified that Respondent is the Registrant for the Disputed Domain Names,
and that further by registering its Disputed
Domain Names with Internet
Domain Registrars, Respondent agreed to resolve any dispute regarding
its Disputed
Domain Names through ICANN’s Rules for Uniform Domain
Name Dispute Resolution Policy, and the Uniform Domain Name
Dispute
Resolution Policy. FINDINGS OF FACT
- That Complainant is the owner of numerous trademark registrations
worldwide for the mark AOL including registrations
in China, Hong
Kong, Japan and Taiwan (collectively AOL Marks). Complainant also
uses the mark AOL.com
as the domain name for its portal web site.
The AOL marks are used extensively at this portal Web site.
- That as early as 1989 for the mark AOL and 1992 for the mark AOL.com,
Complainant adopted and began using many of its
AOL marks in connection
with computer on-line services and other Internet-related services.
The AOL marks
have been used continuously and extensively in interstate
and international commerce in connection with the advertising
and
sale of Internet and computer related services.
- That Complainant has invested substantial sums of money in developing
and marketing its services and marks.
- That Respondent registered the domain names "ao-l.org; ao-laustralia.com;
ao-lchina.com; ao-leurope.com; ao-lhongkong.com;
ao-lindia.com; ao-lindonesia.com;
ao-ljapan.com; ao-lkorea.com; ao-lmalaysia.com; ao-lphilippines.com;
ao-lsingapore.com; ao-lsouthamerica.com; ao-ltaiwan.com; ao-lthailand.com;
and ao-lus.com" in bad faith and has no rights
or legitimate
interests in respect to said domain names. The following is evidence
of Respondent’s
bad faith:
- That Respondent first registered the Disputed Domain Names between
January 21, 2000 and January 30, 2000, long after
Complainant’s
adoption and first use of the mark "AOL" in 1989, and
long after Complainant began
using its "AOL.com" mark
in 1992.
- That Respondent has made no legitimate use of the Disputed Domain
Names and it seeks to profit from the registration
of said domain
names by trading upon the goodwill associated with the AOL marks.
Respondent’s
profit motive is evidenced by its offer to sell
said Disputed Domain Names by listing in the WHOIS directory "…This
domain name is for sale….".
- Respondent has engaged in a pattern of registering domain names
that infringe upon other entities’ marks.
- Complainant’s prayer for relief requests that the Disputed
Domain Names be transferred from Respondent to Complainant.
CONCLUSIONS
The undersigned certifies that he has acted independently
and has no known conflict of interest to serve as the Arbitrator
in
this proceeding. Having been duly selected, and being impartial, the
undersigned makes the following findings
and conclusions:
- The domain names "ao-l.org; ao-laustralia.com; ao-lchina.com;
ao-leurope.com; ao-lhongkong.com; ao-lindia.com; ao-lindonesia.com;
ao-ljapan.com; ao-lkorea.com; ao-lmalaysia.com; ao-lphilippines.com;
ao-lsingapore.com; ao-lsouthamerica.com;
ao-ltaiwan.com; ao-lthailand.com;
and ao-lus.com", registered by Respondent between January 21,
2000 and
January 30, 2000 with Internet Domain Registrars are nearly
identical and confusingly similar to the "AOL" marks in
which Complainant has rights and to which Respondent has no right
or legitimate interest.
- Respondent registered and acquired the domain names "ao-l.org;
ao-laustralia.com; ao-lchina.com; ao-leurope.com; ao-lhongkong.com;
ao-lindia.com; ao-lindonesia.com; ao-ljapan.com; ao-lkorea.com; ao-lmalaysia.com;
ao-lphilippines.com;
ao-lsingapore.com; ao-lsouthamerica.com; ao-ltaiwan.com;
ao-lthailand.com; and ao-lus.com" primarily for the purpose
of
selling or otherwise transferring the said domain name registrations
for valuable consideration in excess
of Respondent’s out-of-pocket
costs directly related to the domain names. Respondent registered
and
used the domain names in bad faith.
DECISION Based upon the above findings and conclusions, and pursuant
to Rule 4(i), it is decided as follows: THE UNDERSIGNED DIRECTS
THAT THE
DOMAIN NAMES "ao-l.org; ao-laustralia.com; ao-lchina.com; ao-leurope.com;
ao-lhongkong.com; ao-lindia.com;
ao-lindonesia.com; ao-ljapan.com; ao-lkorea.com;
ao-lmalaysia.com; ao-lphilippines.com; ao-lsingapore.com; ao-lsouthamerica.com;
ao-ltaiwan.com; ao-lthailand.com; and ao-lus.com" REGISTERED BY RESPONDENT
Asian On-Line This Domain Is For Sale
BE TRANSFERRED TO COMPLAINANT America
Online, Inc. (AOL). Dated: May 17, 2000, Justice Anthony J. Mercorella
(ret.), Arbitrator
