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Generic Top Level Domain Name (gTLD) Decisions |
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
America Online, Inc v. Miao-qua Wang
Case No. D2001-0115
1. The Parties
The Complainant is America Online, Inc, a company incorporated in Delaware, United States with its principal place of business at 22000 AOL Way, Dulles, Virginia 20166, USA. It is represented by James R. Davis, II of Arent Fox Kintner Plotkin & Kahn of Washington DC, United States.
The Respondent is Miao-qua Wang, whose address is given as No. 12, Meizhahutong, Dongdan Ave. Beijing, 100005, China. A response has been received from a Mr. Joseph Zhu who states that he is authorised by "allbuys.com" (should be "aolbuys.com") to be its representative in the dispute. He has given his title as Vice President.
2. The Domain Name and Registrar
The domain name at issue is "aolbuys.com". The domain name was first registered on August 16, 2000. The Registrar with which the domain name is registered is Melbourne IT of Level 2, 120 King Street, Melbourne, Victoria 3000, Australia.
3. Procedural History
On January 22, 2001 a Complaint was received by the WIPO Arbitration and Mediation Center ("WIPO Center") for decision in accordance with the Uniform Domain Name Dispute Resolution Policy ("the Policy"), adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999.
On January 28, 2001, the Registrar responded to a request for Verification of the domain name of January 25, 2001 confirming details of the Respondent, that the Policy applied to a domain name and that the current status of the name was "licensed". This confirmed that the domain name was still in active status.
On January 29, 2001, the WIPO Center transmitted by post/courier, facsimile and email a notification of complaint and commencement of administrative proceedings to the Respondent. A copy of the Complaint was also sent by email to the Registrar.
The Complainant elected to have its Complaint resolved by a single panel member and has duly paid the amount required of it to the WIPO Center.
The Respondent was advised that a Response to the Complaint was required within 20 calendar days, i.e., by February 17, 2001. The Respondent was also advised that any response should be communicated, in accordance with the Rules, by an original and four sets in hard copy and by email.
A response was sent by email on behalf of the Respondent on February 16, 2001.
On February 23, 2001 the WIPO Center invited Andrew Brown, Barrister of Auckland, New Zealand to serve as sole panelist in the case. It transmitted to him a Statement of Acceptance and Declaration of Impartiality and Independence. On February 27, 2001 Andrew Brown advised his acceptance and forwarded to the WIPO Center his Statement of Impartiality and Independence. The Panelist finds that the Administrative Panel was properly constituted in accordance with the Rules and the Supplemental Rules.
On February 27, 2001, the WIPO Center forwarded to Andrew Brown by courier and email the relevant submissions and the Record. The electronic version was received by him on or about February 27, 2001. The hard copy with annexures was received on March 3, 2001. In terms of Rule 5(b), in the absence of exceptional circumstances, the Panel is required to forward its decision by March 13, 2001.
The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint meets the formal requirements of the Rules for Uniform Domain Name Dispute Resolution Policy as approved by ICANN on October 24, 1999, ("the Rules") and the Supplemental Rules.
The language of the administrative proceeding is English, being the language of the registration agreement.
4. Factual Background
A. The Complainant
America Online, Inc is a provider of interactive online services for electronic communications. It has 26 million subscribers and claims to operate the most widely used interactive online services in the world. It has been the Complainant in some 11 previous domain name disputes.
The Complainant is the owner of numerous registered trademarks worldwide for the trademark AOL. In particular it relies on two US registrations for the mark AOL 1,997,731 and 1,984,337 registered on June 4, 1996 and July 2, 1996. Registration 1,997,731 covers registrations in international classes 38, 42 and 35 and includes (in class 42):
"Computer services, namely leasing access time to computer databases, computer bulletin boards, computer networks and computerised research and reference materials, in the fields of business, finance, weather, sports, computing and computer software, games, music, theatre, movies, travel, education, lifestyles, hobbies and topics of general interest; computerised dating services; computerised consultation services; computerised shopping via telephone and computer terminals in the fields of computer goods and services and general consumer goods."
The date of first use in commerce noted in the registrations is October 2, 1989.
The Complainant also relies on its trademark AOL.COM and its Federal registrations for this mark (2,325,291 and 2,325,291) in classes 38 and 42.
The Complainant claims that at least since 1989 for the mark AOL and 1992 for the mark "AOL.COM" it adopted and began using its marks in connection with computer online services and other internet-related services. It claims that it is has used its famous and distinctive marks continuously and extensively in interstate and international commerce in connection with advertising and sale of its Internet and computer related services. It also claims to have invested substantial sums of money in developing and marketing its services and marks. Sales of services under the AOL and AOL.COM marks have amounted to many billions of dollars and as a result, the general public has come to associate the AOL name and trade marks with services of a high and uniform quality: see America Online, Inc v AOL International, WIPO Case No. D2000-0654; America Online, Inc v Daniel Mullen, WIPO Case No. D2000-1605.
B. The Respondent
The Respondent is identified as Miao-qua Wang. The Response forwarded on behalf of the Respondent is headed "Response Case No. D2000-0115 [aolbuys.com]". This is provided by Mr. Joseph Zhu who claims to be authorised by aolbuys.com to be its representative in the dispute. The Response is relatively short and it is reproduced as follows:
"We are a company that focuses on bringing agents and affiliates to businesses whose business model encourages agent and affiliate sales through commissions. On our web site there are more than 1,000 businesses that invite broad participation from visitors in commission based affiliate purchases. The name of our website aolbuys means ‘affiliate on line buys’.
We agree the three letter combination ‘aol’ in aolbuys leads to confusion with the American Online trademark on the part of some visitors the first time they see it. But the confusion, if there is any at all, will be only short lived because our business area bears no resemblance with that of the American portal. We harbored the idea of running an online Agent&Afiliate sales web site long before we registered the name in 2000. It might be that AOL is a household name in the United States. But in China only a few people who once studied or worked in the United States or are very good at English are often read western newspaper know the brandname while the overwhelming majority do not know the trademark at all.
We use the web site to drive visitors to commission earning opportunities, which is a far cry from the American portal’s business model. We do not harbor any ill intention to the portal and we do not use the domain name in any bad faith whatsoever.
We think it might be reasonable that at the request of the American portal we might expend reasonable efforts to remind our visitors that our site bears no relations with the portal. But we firmly believe the request of transfer which the complainant is seeking is unreasonable. We do not need to go further afield to see the absurdity of the request. In China we have a very big province Anhui with a population of more than 60 million. These reside more than 1 million Internet users. There might be any entrepreneurial ideas that revolve around ‘getting something in Anhui Online’. We think it is absolutely unfair to the Internet community if the AOL portal chases every domain name that contains the three letter combination.’
5. Parties’ Contentions
A. The Complainant
The Complainant claims that the general public has come to associate the AOL name and marks with it and that these marks have become well-known and famous among members of the purchasing public. The domain name "aolbuys.com" is nearly identical and confusingly similar to its AOL and AOL.COM marks. Consumer confusion is particularly likely because a Respondent is using the mark AOL in connection with the website that provides shopping services that are identical to those provided by AOL under its famous and distinctive AOL mark.
The Complainant asserts that the Respondent has no rights or legitimate interest in respect of the domain name "aolbuys.com" and that this was registered and is being used with a bad faith intent to capitalise on the famous AOL and AOL.COM marks and to profit from the international and domestic goodwill that AOL has built up in its famous marks.
B. The Respondent
The contentions of the Respondent has been set out in full in the previous section of this decision.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to:
"decide a complaint on the basis of the statements and documents submitted in accordance with the policy, these rules and any rules and principles of law that it deems applicable".
The burden for the Complainant, under paragraph 4(a) of the ICANN Policy, is to show:
Domain name is confusingly similar to registered trademark
The domain name "aolbuys.com" is confusingly similar to the Complainant’s trademarks AOL and AOL.COM. The submission filed by the Respondent acknowledges this in the statement:
"We agree the three letter combination ‘aol’ in aolbuys leads to confusion with the American Online trade mark on the part of some visitors the first time they see it."
Although the Respondent contends that this confusion will be shortlived, the acknowledgement of confusing similarity is in fact accurate and the Panel so finds.
No legitimate rights or interest in aolbuys
The Policy outlines (paragraph 4(c)) circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent’s rights or legitimate interest in the domain name. These circumstances are:
(i) before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with the bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business or other organisation) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate non-commercial 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.
On behalf of the Respondent, Mr. Zhu states that the name of the website "aolbuys" means "affiliate online buys". He also states that the Respondent "harbored the idea of running an online Agent and Affiliate sales website" long before they registered the domain name in 2000. However, there is no evidence of demonstrable preparations to use the domain name or that the Respondent has been commonly known by this domain name. In relation to paragraph 4(c)(iii) of the Policy, there is no indication that the Respondent is making a legitimate non-commercial or fair use of the domain name. The Response supplied by Mr. Zhu confirms that the website is being used for commercial reasons i.e. "to drive visitors to commission earning opportunities".
Overall the Panel can find no evidence to demonstrate that the Respondent has legitimate rights or interests in the domain name at issue. The Panel therefore finds that the Complainant has met the requirement in paragraph 4(a)(ii) of the Policy.
Domain name has been registered and is being used in bad faith
Paragraph 4(b) of the ICANN Policy states:
"For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, internet users to your 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 your web site or location or of a product or service on your web site or location."
It should be noted that the circumstances of bad faith are not limited to the above.
In looking at whether the domain name has been registered in bad faith, it is instructive to consider the explanations given on behalf of the Respondent. In this regard, the Response contains several claims:
(a) That the name of the website "aolbuys.com" means "affiliate on line buys". If there were such an intended abbreviation, the normal expectation is that there would be a reference to "affiliate on line" elsewhere on the website. While there is one reference in a different part of the site to "Affiliate Program", there is no reference to "affiliate on line". The main trademark used on the website is AOLbuys.com.
(b) That
"In China only a few people who once studied or worked in the United States or are very good at English and often read Western newspapers know the brandname while the overwhelming majority do not know the trade mark at all."
At first sight this might seem a fair point. But all the text, categories and web pages on the Respondent’s website are in English and contain hyperlinks to other English text sites. This seems to contradict the suggestions made in the Response.
(c) The Respondent also states:
"In China we have a very big province Anhui with a population of more than 60 million. There reside more than 1 million Internet users. There might be many entrepreneurial ideas that revolve around "getting something in Anhui online".
The Respondent appears to be suggesting that AOL could equally mean "Anhui Online". But the Respondent resides in Beijing. The province of Anhui is some 800 km to the south of Beijing and the Respondent has not indicated any connection whatever between it and the province of Anhui.
The Respondent has not denied that it was aware of the Complainant and its use of the AOL mark. Indeed it is implicit in its acknowledgement of confusion that it was aware of the Complainant’s site. The Panel therefore rejects the explanations given by the Respondent.
The opening page of the website "aolbuys.com" has the statement "AOLbuys.com Directory of Stores" and then lists a series of different categories of shopping activities. The site is put forward very much as a site which provides online shopping services. It is to be noted too that AOL is in capitals on the homepage indicating an emphasis on the trademark AOL.
The Panel finds that the Respondent has in fact registered and is using the domain name "aolbuys.com" to attract for commercial gain Internet users to the site as a result of recognition of the trademarks AOL or "AOL.COM". The Respondent has not shown any connection whatever with the trade mark AOL and the Panel has already rejected the Respondent’s explanations for the choice of name. The Panel further finds that the domain name will create a likelihood of confusion with the Complainant’s well-known marks as to the source, sponsorship, affiliation or endorsement of the website. As noted earlier, Mr. Zhu on behalf of the Respondent himself, acknowledges the likelihood of initial confusion.
The Panel therefore concludes that the Complainant’s claim that the domain name has been registered and is being used by the Respondent in bad faith has been made out.
7. Decision
For the foregoing reasons, the Panel decides:
(a) that the domain name registered by the Respondent is confusingly similar to the trademarks to which the Complainant has rights;
(b) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(c) the Respondent’s domain name has been registered and is being used in bad faith.
Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name "aolbuys.com" be transferred to the Complainant.
Andrew Brown
Presiding Panelist
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URL: http://www.worldlii.org/int/other/GENDND/2001/447.html