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America Online, Inc. v. GSD Internet [2001] GENDND 1222 (25 June 2001)

WIPO Arbitration and Mediation Center

The Complainant is America Online, Inc, 22000 AOL Way, Dulles, Virginia 20166, US.

Represented by James R Davis, II, Arent Fox Kintner Plotkin & Kahn, 1050 Connecticut Avenue, NW, Washington, DC 20036, US.

The Respondent is GSD Internet, PO 1801, Milton, QLD 4064, Australia.

The Domain Names are <aolteen.com> and <icqporn.com>.

The Registrar is Network Solutions, Inc.

The Complaint was received by WIPO by email on May 2, 2001, and in hardcopy form on May 7, 2001. WIPO has verified that the Complaint satisfies the formal requirements of the Policy, the Rules and the Supplemental Rules and that payment was properly made. The Administrative Panel ("the Panel") is satisfied that this is the case.

The Complaint was properly notified in accordance with the Rules, paragraph 2(a). The Registrar has confirmed that <aolteen.com> and <icqporn.com> ("the Domain Names") were registered through Network Solutions, Inc., and GSD Internet ("the Respondent") is the current registrant. The Registrar has further confirmed that the Policy is applicable to the Domain Names.

On May 10, 2001, WIPO notified the Respondent of the Complaint in the usual manner and informed the Respondent inter alia that the last day for sending its Response to the Complainant and to WIPO was May 29, 2001. No Response was received. On May 30, 2001, WIPO sent to the Respondent a Notification of Respondent Default.

The Panel was properly constituted. The undersigned Panellist submitted a Statement of Acceptance and Declaration of Impartiality and Independence.

No further submissions were received by WIPO or the Panel, as a consequence of which the date scheduled for the issuance of the Panel’s Decision, is June 25, 2001.

The Complainant, very well-known to Internet users, is the registered proprietor of the service marks AOL and ICQ. The Complainant is the proprietor of registrations of those service marks in many countries of the world (including the US and Australia) for inter alia computer services. First use of those marks and registration of them by the Complainant antedated registration of the Domain Names by the Respondent.

From the WHOIS searches exhibited to the Complaint it appears that the Respondent registered the Domain Names in January 1999. The Domain Names are connected to a pornographic website at <whorecam.com>. <whorecam.com> is a domain name, which is also registered to the Respondent.

On March 4, 1999, lawyers representing the Complainant wrote a letter to the Respondent drawing attention to its service mark rights in the mark AOL and complaining about the domain name, <aolteen.com> and requesting transfer of that domain name to the Complainant. The Respondent did not reply.

On May 11, 1999, the Complainant’s lawyers wrote again to the Respondent referring to the earlier letter and complaining in addition about a domain name, <aol-boys.com>, which is not the subject of this Complaint. Again, the Respondent failed to reply.

The Complainant contends that the domain name, <aolteen.com>, is identical or confusingly similar to its service mark AOL and that the domain name <icq.com> is identical or confusingly similar to its service mark ICQ.

The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Domain Names. The Complainant asserts that the Respondent must have known of the Complainant’s service marks when it registered the Domain Names. The Complainant contends that the Respondent is not commonly known by those names and cannot claim in good faith that it has made a legitimate non-commercial or fair use of the Domain Names. The Complainant observes that the Domain Names are not used on the website to which they are linked, that website being at www.whorecam.com.

The Complainant further contends that the Domain Names were registered in bad faith and are being used in bad faith. In support, the Complainant relies upon the following matters:

1. The Domain Names were registered many years after the Complainant adopted and made first use of its service marks AOL and ICQ. At the time of registration of the Domain Names the Respondent will have been well aware of the Complainant’s service marks.

2. The Respondent failed to respond to the letters from the Complainant’s lawyers.

3. The Respondent is using the Complainant’s service marks to attract people to the Respondent’s pornographic website at <whorecam.com>, thereby profiting from the Complainant’s goodwill in its service marks.

4. The Respondent registered the Domain Names with the bad faith intent of preventing the Complainant from reflecting its service marks in a domain name.

The Respondent has not responded.

According to paragraph 4(a) of the Policy, the Complainant must prove that

(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interest in respect of the Domain Name; and

(iii) The Domain Name has been registered and is being used in bad faith.

Each of the Domain Names features in it a prefix, which is a service mark of the Complainant. In the case of ‘icqporn’, the suffix is explicit as to the likely content of any site to which it is connected. As to ‘aolteen’, the suffix is not of itself a common word, but if it is indicative of anything indicates the young (i.e. teenagers). In the view of the Panel a visitor to a site connected to either of the Domain Names would not be unduly surprised to find himself/herself at a pornographic site. In neither case, on the evidence before the Panel, does the suffix indicate a service product of the Complainant.

The Panel accepts that people looking at the Domain Names will be likely to make the association with the Complainant’s service marks (particularly when viewed alongside each other), but does not believe that any significant number of people will believe the Domain Names to have anything to do with the Complainant - any more than if the domain names in issue had been <aolsucks.com> and <ihateicq.com>.

In loose parlance what the Respondent has done (particularly in relation to <icqporn.com>) amounts to an abusive use of the Complainant’s service marks. In some jurisdictions it may amount to trade mark infringement. In the UK for example, it could amount to trade mark infringement under section 10(3) Trade Marks Act 1994 on the basis that it causes detriment to the distinctive character or repute of the Complainant’s service marks. However, that section does not call for confusing similarity.

In the view of the Panel "confusingly similar" means a similarity likely to lead to confusion as to trade origin. As indicated, the Panel does not believe that that is a likely result in the case of either of the Domain Names.

The Panel finds that the Domain Names are not identical or confusingly similar to trademarks or service marks in which the Complainant has rights.

In light of the above finding, it is unnecessary for the Panel to address this issue. Had it been necessary to do so, the Panel would have held that the Respondent had no rights or legitimate interests in the Domain Names for the reasons given by the Complainant.

Again, it is unnecessary for the Panel to address this issue.

As indicated above, what the Respondent has done, if done in the United Kingdom, might very well constitute trademark infringement in the United Kingdom on the basis that it is without due cause and takes unfair advantage of, or is detrimental to, the distinctive character or repute of the trademark (S.10(3) Trade Marks Act 1994). Whether that is enough to constitute bad faith registration and use within the meaning of the Policy is another question.

The Panel rejects the Complainant’s contention that the motivation on the part of the Respondent can have been to prevent the Complainant reflecting its service marks in corresponding domain names. The Panel does not believe that that can have been the intention, still less the effect. The Panel does not believe that the Domain Names are names, which the Complainant would have wished to have registered.

The Panel does not believe that the Domain Names are names, which people will enter into browsers expecting to reach the Complainant. Nor does the Panel believe that people will visit the website linked to the Domain Names expecting to visit a site authorised or sponsored by the Complainant.

The sole issue is whether what is a deliberate and, in the view of the Panel, unfair, commercial ‘use’ of the Complainant’s service marks constitutes bad faith registration and use within the meaning of paragraph 4(a)(iii) of the Policy. It is not necessary for the Panel to resolve it and the Panel does not seek to do so.

The Complaint is dismissed.

Tony Willoughby
Sole Panelist

Dated: June 25, 2001