DECISION

America Online, Inc. v. Cucamonga Electric Corp. aka Paul Oshideri

Claim Number: FA0112000103364

PARTIES

The Complainant is America Online, Inc., Dulles, VA (“Complainant”) represented by James R. Davis, of Arent Fox Kintner Plotkin & Kahn.  The Respondent is Cucamonga Electric Corp. aka Paul Oshideri, Santa Ana, CA (“Respondent”) represented by Stephen H. Sturgeon, of The Law Offices of Stephen H. Sturgeon & Associates, PC.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <aolutility.com>, registered with Register.com.

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.

Hon. Roger P Kerans as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on December 21, 2001; the Forum received a hard copy of the Complaint on December 26, 2001.

On December 21, 2001, Register.com confirmed by e-mail to the Forum that the domain name <aolutility.com> is registered with Register.com and that the Respondent is the current registrant of the name.  Register.com has verified that Respondent is bound by the Register.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On December 26, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 15, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@aolutility.com by e-mail.

A timely Response was received and determined to be complete on February 4, 2002.

On February 13, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Roger Kerans as Panelist.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

1.         Complainant America Online, Inc. ("AOL") is the owner of numerous trademark registrations worldwide for the mark AOL, including U.S. trademark registration Nos. 1,977,731 and 1,984,337, which were registered on June 4, 1996, and July 2, 1996, respectively (evidence of U.S. trademark registrations are included under Annex B).  AOL registered and uses its AOL mark in connection with, among other things,

            “computer services, namely leasing access time to computer databases, computer bulletin boards, computer networks, and computerized research and reference materials, in the fields of business, finance, news, weather, sports, computing and computer software, games, music, theater, movies, travel, education, lifestyles, hobbies and topics of general interest; computerized dating services; computer consultation services; computerized shopping via telephone and computer terminals in the fields of computer goods and services and general consumer goods” and “telecommunications services, namely electronic transmission of data, images, and documents via computer terminals; electronic mail services; and facsimile transmission.” Emphasis added.  See identification of services under Annex B.

           

2.         AOL uses its mark AOL.COM as a domain name for its Web site.  See Annex D.  AOL owns federal trademark registration Nos. 2,325,291 and 2,325,292 for the mark AOL.COM.  The mark AOL is used extensively at this Web site, which is a significant method of promoting     AOL's service.  As a result, consumers associate the mark AOL, when used in a domain name, with AOL's services. (evidence of U.S. trademark registrations are included under Annex C).

3.         Long prior to Respondent’s registration of the domain <aolutility.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 marks in connection with computer online services and other Internet-related services.  The distinctive AOL mark is used and promoted around the world in connection with providing a broad range of information and services over the Internet and at the proprietary AOL online system.  See Identification of Services set forth in Annex B.   AOL has used its famous and distinctive marks continuously and extensively in interstate and international commerce in connection with the advertising and sale of its Internet and computer-related services.

4.         AOL has invested substantial sums of money in developing and marketing its services and marks.  As a result, the AOL brand is one of the most readily recognized and famous marks used on the Internet.

5.         With over thirty million subscribers, AOL operates the most widely-used interactive online service in the world and each year millions of AOL customers worldwide obtain services offered under the AOL and AOL.COM marks; millions more are exposed to said marks through advertising and promotion.

6.         The AOL and AOL.COM marks have been and continue to be widely publicized through substantial advertising throughout the United States and the world.  Many millions of dollars have been spent in connection with such advertising, which has been disseminated through network and cable television programs, radio broadcasts, and in print media including newspapers and periodicals.

7.         Sales of services under the AOL and AOL.COM marks have amounted to many billions of dollars.  As a result, the general public has come to associate the AOL name and marks with services of a high and uniform quality.

8.         Because of these substantial advertising expenditures and sales, the distinctive AOL and AOL.COM marks have become very well-known and famous among members of the purchasing public.

9.         Many years after AOL's adoption and first use of the AOL and AOL.COM marks, Respondent registered the domain name <aolutility.com> and began using it with a bad faith intent to profit from the domain name.

10.       The <aolutility.com> domain is nearly identical and confusingly similar to the AOL and AOL.COM marks.  Consumer confusion is particularly likely because Respondent is using the very famous and distinctive mark AOL as a prefix to the generic word “utility”, thereby highlighting the distinctive and famous AOL brand as a prefix to “utility.”  Given the immense fame of the AOL mark, and its broad use on the Internet, consumers are likely to recognize the famous AOL mark in <aolutility.com> and at its corresponding Web site and believe that the online services provided at <aolutility.com> are endorsed by or affiliated with America Online, Inc.

11.       Respondent registered and uses the subject domain with a bad faith intent to capitalize on the famous AOL and AOL.COM marks, and profit from the international and domestic goodwill AOL has built up in its famous marks.  Respondent also is attempting to mislead consumers by registering and using a domain that plays off the very famous AOL name and mark.

12.       Respondent has no rights or legitimate interests in respect to the domain <aolutility.com.>  Respondent is not licensed or authorized to use the AOL mark.  The following is evidence of Respondent’s bad faith registration and use of the infringing domain:

            (a)        Respondent’s bad faith registration of <aolutility.com> is evidenced by the fact

                        that he registered the domain many years after the AOL Marks had become          

                        famous and well-known to consumers.  See Annex E for Whois Records.  The        

                        AOL prefix is not the result of an inadvertent combination of other words; it

                        stands alone as a prominent and distinguishing element of the AOL Utility name. 

                        Therefore, Respondent’s registration of <aolutility.com> was made in bad faith to

                        play off the already-famous AOL mark and to profit from the international           

                        goodwill AOL had created in its brand.

            (b)        Respondent’s bad faith use of <aolutility.com> is demonstrated by the Web

                        site that Respondent uses in connection with the domain.  See Annex F.  Visitors

                        to the <aolutility.com> site are likely to believe that AOL operates or endorses

                        the online business services conducted under the name AOL Utility.  Further

                        evidence of Respondent’s bad faith is shown by the use of the name “America On

                        Line Utility” at the site.  As is well-known, the AOL mark is an acronym for

                        America Online.  Moreover, the “AOL” portion of the name is highlighted and

                        isolated at the site.  Given the enormous fame of the AOL mark, particularly in

                        the area of online services, it does not take a stretch of the imagination to see how

                        consumers visiting an Internet site at <aolutility.com> and viewing the prominent

                        AOL mark will be likely to think the online services provided at that site are

                        affiliated or endorsed by AOL.

            (c)         Counsel for AOL sent Respondent several letters regarding the unauthorized and

                        misleading use of AOL.  See Annex G.  Respondent claimed the reference to

                        “America On Line” at <aolutility.com> was a programming error.  Counsel for

                        AOL asked Respondent why it chose to use “AOL” as a prefix for its domain

                        name.  Respondent, however, was unable to explain why the AOL mark was

                        chosen.  This inability to justify its use of such a famous mark as AOL, is strong

                        evidence that Respondent registered and used <aolutility.com> in an effort to

                        piggyback off the immense worldwide goodwill AOL has created in its name and

                        mark.  An unexplained use of an otherwise unusual three letter combination by

                        Respondent demonstrates its bad faith attempt to mislead consumers and profit

                        from the use of <aolutility.com>.

(d)        During a telephone conversation on June 15, 2001, Paul Oshideri, the Respondent’s
representative, offered to transfer the name <aolutility.com>

                        to AOL if it invested $5 million in Respondent’s company.  Mr. Oshideri also

                        mentioned that the domain name <loan.com> sold at auction for approximately

                        $2.5 million.  Counsel for AOL rejected this bad faith offer and tried again to

                        resolve the matter amicably.  When Respondent refused, AOL had no choice but

                        to file this complaint. 

            (e)        Based upon its telephone conversations with Respondent, and some of the

                        material posted at <aolutility.com>, AOL believes that Respondent may attempt

                        to claim its use of <aolutility.com> is somehow legitimate as an acronym for           

                        America On Line Utility, or some similar name.  As a preemptive strike against

                        such an outrageous claim, AOL notes that numerous prior arbitrators have held

                        that such a transparent ex post facto defense is insufficient and does not constitute

                        a bona fide use of the subject domain in connection with a legitimate activity, as

                        anticipated under the Uniform Domain Name Dispute Resolution Policy.  To hold

                        otherwise would be to create a loophole by which any infringer could violate a

                        famous mark with impunity by devising a word combination that conveniently

                        begins with the letters of that famous mark.  See, for example, America Online,

                        Inc. v. Viper, WIPO D2000-1198 (“it is well past the day when Internet

                        users would not make the assumption that use of AOL as part of a domain name

                        links that site in the mind of the user to Complainant”); America Online, Inc., v.

                        Yeteck Communication, Inc., WIPO D2001-0055 (Respondent held to have acted

                        in bad faith despite claims that “aolcasino.com” was an acronym for “Adults On

                        Line Casino”); America Online, Inc. v. East Coast Exotics, WIPO D2001-0661

                        (bad faith registration and use despite Respondent’s claim that AOL is an

                        acronym for “Amateurs On Line”).  As was the case with these prior proceedings,

                        AOL is not attempting to close down Respondent’s business, or even prevent it

                        from operating on the Internet under its real business name Cucamonga Electric

                        Corp.  The issue is much more narrow, i.e., It is the bad faith commercial use of

                        the AOL mark in connection with the domain name and Web site which violates

                        ICANN’s rules.

            (f)         Based upon (1) the fame of the AOL mark as used in connection with online

                        services; (2) AOL’s federal trademark registrations; (3) Respondent’s prominent

                        use of AOL in the domain name <aolutility.com> and in the corresponding

                        Web site; and (4) Respondent’s offer to sell the domain name to AOL for $5

                        million, Respondent cannot in good faith claim that it had no knowledge of

                        AOL’s rights in its very famous AOL and AOL.COM marks.  Furthermore,

                        Respondent cannot claim in good faith that it made a legitimate noncommercial

                        or fair use of the subject domain, or that it is commonly known as AOL.

B. Respondent

In response to the allegations of Complainant, Respondent asserts:

1. The Complainant has not proven that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights

2. Complainant has failed to sustain its burden of proving that Respondent does not have a legitimate interest in the domain name and that

3. Complainant has failed to sustain its burden of proving that Respondent registered and is using the domain name in bad faith. 

We initially point out that the UDRP was established to permit the expedited disposition of clear abuses.  A clear abuse is certainly not present in the instant case.  In confirming the purpose of the UDRP process in the case of Commonwealth Hotels Inc. v CCD Internet,  AF-00771 (eResolution May 17, 2001) states as follows: 

The Policy is narrow in scope.  It applies only to disputes involving alleged bad faith registration and use of domain names – conduct commonly known as "cybersquatting" or "cyberpiracy".  The Policy does not apply to other kinds of disputes between trademark owners and domain name registrants.  This reflects a cautious approach to a novel form of Internet dispute resolution and the balancing of a wide range of perspectives regarding the regulation of Internet conduct.  See Educational Testing Service v. TOEFL, Case No. D2000-0044 (March 16, 2000); Quarterview v. Quarterview Co., Case No. AF-0209 (March 16, 2000); Libro AG v. NA Global Link Limited, Case No. D 2000-0186 (May 16, 2000); and the ICANN Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy, October 24, 1999, www.icann.org/udrp/udrp-second-staff-report-24oct99.htm, at paragraph 4.1(c).

Furthermore, a panelist in the case of America Online, Inc. v John Deep d/b/a Buddy USA Inc., , FA96795 (Nat. Arb. Forum May 14, 2001), stated that:

the purpose of the ICANN UDRP is to deal with simple, clear, abusive registrations of domain names, and not complex trademark disputes or to inject the Panel’s views that someone should not be doing this since it might be wrong or unfair. [Emphasis added]

Furthermore, in the case of J. Crew v. Crew.com, D2000-0054 (WIPO Apr. 20, 2000), a similar statement appears with a quotation from a staff report which was prepared to explain the purpose and rationale behind the UDRP.  (Note that this staff report was also referenced in the previously cited case of Commonwealth Hotels Inc. v CCD Internet.   The case states as follows:

The ICANN policy is very narrow in scope; covers only clear cases of "cybersquatting" and "cyber piracy," and does not cover every dispute that might rise over domain names. See, for example, Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy (October 24th, 1999), http://www.icann.org/udrp/ udrp-second-staff-report-24oct99.htm 4.1(c) which states:

Except in cases involving "abusive registrations" made with bad-faith intent to profit commercially from others' trademarks (e.g., cybersquatting and cyberpiracy), the adopted policy leaves the resolution of disputes to the courts (or arbitrators where agreed by the parties) and calls for registrars not to disturb a registration until those courts decide. The adopted policy establishes a streamlined, inexpensive administrative dispute-resolution procedure intended only for the relatively narrow class of cases of "abusive registrations." Thus, the fact that the policy's administrative dispute-resolution procedure does not extend to cases where a registered domain name is subject to a legitimate dispute (and may ultimately be found to violate the challenger's trademark) is a feature of the policy, not a flaw. [emphasis added]

We suggest that the instant case is not a clear case of “cybersquatting” and “cyber piracy”.  Accordingly, we request that the Panel not grant the Complainant’s request to have the Respondent’s property (domain name) taken away from the Respondent.  We will discuss each of the three elements that a complainant must prove in order for a domain name to be taken away from the registrant.

I   RESPONSE TO THE ALLEGATION THAT THE DOMAIN NAME IS IDENTICAL OR CONFUSINGLY SIMILAR TO A TRADEMARK OR SERVICE MARK IN WHICH THE COMPLAINANT HAS RIGHTS

In the Complaint, Complainant makes certain statements with respect to trademark rights in the three letters A, O and L for certain limited services.   We note, however, that Complainant does not allege to have a trademark in the words aolutility or aolutility.com.  Complainant only alleges that it has registered the three letters A, O and L for certain limited services.  The words aolutility or aolutility.com are much different from the alleged trademark “aol”.  Certainly the registration of three letters for limited use does not give a registrant the right to all domain names containing the three letters throughout the world.  It would be a very dangerous precedent for the Panel in this case to determine that the holder of a trademark on three letters for limited purposes is entitled to obtain all domain names that contain the three letters.  If the Panel were to make this determination, then, for example, the registrant of the syllable “micro” would have a precedent for obtaining the domain name <Microsoft.com>, <Microsoft-Word.com> and many other variations thereof.  A decision of this type would create an extremely unfortunate precedent.

An example of this principle is espoused in the case of Primo Incense v. Spring.net, FA 96565 (Nat. Arb. Forum Apr. 12, 2001).  In holding that the complainant “wholly failed to demonstrate that it has trademark rights” the decision states as follows:

Complainant has wholly failed to demonstrate that it has trademark rights in the phrase “primo incense” in the form of a registered trademark or a common law trademark.  That Complainant allegedly has a trademark in the word “primo” is not sufficient.  Complainant only holds a trademark in the word “Primo”. As such, Complainant has failed to meet the first element required under ICANN Policy 4, which requires Complainant to prove that: “The domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights....”  See: Kittinger Co. v. Kittinger Collector, AF 0107 (eResolution May 8, 2000).

The Panel further states that:

As discussed above, Complainant has failed to demonstrate the first element of ICANN Policy 4 and has failed to demonstrate that it holds any interest in the phrase “primo incense.”  The trademark “Primo” and the domain name “primoincense.com” are not identical or confusingly similar. [Emphasis added]

Similarly, in the instant case the Complainant fails to present competent evidence that there exists a trademark in the words  aolutility or aolutility.com.

This principle espoused in this case clearly applies to the instant case.  Just as this case points out that the trademark “Primo” (for the product of incense) and the domain name “primoincense.com” are not identical or confusingly similar, the alleged trademark in the three letters “aol” are not identical or confusingly similar to the domain names <aolutility.com>.

II. RESPONSE TO THE ALLEGATION THAT RESPONDENT HAS NO

LEGITIMATE INTEREST IN THE DOMAIN NAME

Complainant has also failed to sustain its burden of proving that Respondent did not have any legitimate interest in the domain names.  A close examination of the Complaint reveals that only the first sentence of Complainant’s section 12 mentions the words “rights” or “legitimate interests” of Respondent for purposes of providing any proof with respect to Respondent’s lack thereof.  The next sentence states that “[t]he following is evidence of Respondent’s bad faith registration and use of the infringing domain.”  Conspicuously absent is any evidence, proof or rationale to support Complainant’s required proof that Respondent has no rights or legitimate interests in respect to the domain name.  The Complaint therefore fails to fulfill its burden of proving that Respondent has no rights or legitimate interests in respect to the domain name.

Complainant has, therefore, failed to provide the proof that is necessary to justify the taking away of Respondent’s valuable domain names that Respondent has registered for use in its business.

We note that a Complainant’s burden of proof on this issue is made clear in the case of General Machine Products Co. v Prime Domains,  FA 92531 (Nat. Arb. Forum Mar. 16, 2000) which states as follows:

Paragraph 4(a) of the Policy provides that, to justify transfer of a domain name, a complainant must prove each of the following,…[ including that the respondent has no legitimate interests in respect of the domain name.]

Similarly, in the case of Marbil Co. Inc. “DBA” Insol v.Sangjun Choi, D2000-1275 (WIPO Nov. 23, 2000),  the Complainant attempted to prove that Respondent did not have any legitimate interest in the domain name.  The complainant did not provide adequate proof.  The panel decided that the domain name should not be transferred to the Complainant and states that:

The Panel, therefore, finds that the complainant has failed to satisfy the test of Paragraph 4a(ii) of the Uniform Domain Names policy, and that its complaint, therefore, must fail.

We also note that with respect to the “the test of Paragraph 4a(ii)” which Complainant must satisfy, the panelist in the case quotes from the Domain Name Dispute Policy as follows [the test of Paragraph 4a(ii) is underlined for emphasis]:

For the complainant to succeed, the Panel must, under Paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy, be satisfied:

that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

that the respondent has no rights or legitimate interests in respect of the domain name; and that the domain name has been registered and used in bad faith.

Similarly in the case of Dorset Police v Gerry Coulter, AF0942 (eResolution Oct. 20, 2001), a case which was successfully argued by Counsel for Respondent in the instant case, the decision states as follows:

Complainant has the burden to prove that Respondent has no rights or legitimate interests in the Domain Names, and that they have been registered and are being used in bad faith. 

See also the case of RentRight, Inc. v. Worldwide Media Inc. a/k/a Michael Berkens  FA99675 (Nat. Arb. Forum Oct. 31, 2001, another case that was successfully argued by Counsel for Respondent in the instant case, which states that:

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

Similarly, in the instant case, the Complainant has also failed to satisfy the “test of Paragraph 4a(ii)” since Complainant has failed to prove that the Respondent has no rights or legitimate interests in respect of the domain name. 

Although the Complainant has the burden of proving that Respondent has no rights or legitimate interests in respect of the domain name, and the Respondent does not have the burden of proving that it does have legitimate rights in the domain name, we will, nevertheless,  provide evidence to prove that Respondent does have legitimate rights in the domain name.

In order to provide proof and substantiation to demonstrate that Respondent has a legitimate interest in the domain names in question, we note that the Uniform Domain Name Dispute Resolution Policy provides a listing of several circumstances which, if proved, demonstrate that a respondent has rights or legitimate interests to the domain name.  Section 4c of the Uniform Domain Name Dispute Resolution Policy provides as follows [emphasis added]:

Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii) [emphasis added]:

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial 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.

Respondent does, in fact, have rights in the domain name for purposes of Paragraph 4(a)(ii) since Respondent  has satisfied the conditions of section (i) above by engaging in the preparation for the use of the domain name in connection with a bona fide offering of goods and services and also that Respondent has been commonly known by the domain name, even if you have acquired no trademark or service mark rights; before any notice of the dispute, as follows:

1. Respondent incorporated a corporation by the name of AOL Utility in February of 1996.  (Exhibit A & B)

2. Respondent filed and received a stamped copy of the authorization for Respondent corporation to use an additional business name for the conduct of business in California. (Exhibit B)

3. Respondent’s corporation AOL Utility Corporation was duly registered as an electric service provider in California  (Exhibit C)

4. Respondent’s corporation AOL Utility Corporation obtained EDI certification with utility companies in California for the purpose of buying and selling electricity. (Exhibit A & D)

5. Respondent’s corporation AOL Utility Corporation developed in-house servers to operate the utility business (Exhibit A)

6. Respondent conducted a preliminary study for a 24 hour customer service operation (Exhibit   A)

7. Respondent set up for an operation to participate in forward bidding market in California ISO territory energy markets (Exhibit A)

8. Respondent obtained certification as an energy trader in the Intercontinental Exchange Market (Exhibit A)

9. Respondent entered into the electric deregulation market for the purpose of business activities in the industry. (Exhibit D)

10. Respondent developed an Internet based billing system for customers to interact with their utility accounts on-line. (Exhibit D & E)

11. Respondent applied for, pursued and obtained licenses from various government agencies to engage in the utility business. (Exhibit D & F)

As described above, Complainant has the burden of proving that Respondent has no rights or legitimate interests in respect of the domain name.  Complainant has failed in sustaining its burden of proof.  Furthermore, although the Respondent does not have the burden of proving that it does have legitimate rights in the domain name, we have provided substantial evidence, legal rationale, and case law support to prove that Respondent does, in fact, have legitimate rights in the domain name.

III  RESPONSE TO THE ALLEGATION THAT RESPONDENT HAS

REGISTERED AND IS USING THE DOMAIN NAME IN BAD FAITH

In the instant case the Respondent did not register the domain name in bad faith but did, in fact, have a legitimate interest. 

UDRP decisions have consistently held that complainants have the burden of proving that a respondent has registered and has used the domain name in bad faith.   For example, this principle is espoused in the case of Diamond Shamrock Refining and Marketing Co. v. CES Marketing Group Inc, FA96766 (Nat. Arb. Forum Apr. 20, 2001).  The decision states as follows:

The bad faith element is actually two elements, requiring the Complainant to show both bad faith registration and bad faith use. World Wrestling Federation Entertainment, Inc. v. Brosman, Case No. D99-0001 (WIPO Jan. 14, 2000) ("the name must not only be registered in bad faith, but it must also be used in bad faith").

We emphasize that the Uniform Domain Name Dispute Policy requires that Complainant must prove bad faith both at the time of registration and in the current use of the domain name.  A close examination of Complainant’s filing does not provide adequate proof or evidence to support the allegation that Respondent acted in bad faith.  In fact, we will address each of Complainant’s allegations with respect to the question of whether Complainant has proven bad faith – both at the time of registration and in the current use of the domain name. 

Complainant’s Statement Attempting to prove bad faith:

Respondent’s bad faith registration of <aolutility.com> is evidenced by the fact that he registered the domain many years after the AOL Marks had become famous and well-known to consumers. 

Respondent’s Response

Bad faith is not proven by the mere fact that Respondent may have registered a long word (that contains the three letters A, O and L) “many” years after the trademark registration of the letters A, O and L for much different services.

Complainant’s Statement Attempting to prove bad faith:

Respondent’s bad faith use of <aolutility.com> is demonstrated by the Web site that Respondent uses in connection with the domain.  …  Visitors to the <aolutility.com> site are likely to believe that AOL operates or endorses the online business services conducted under the name AOL Utility.  Further evidence of Respondent’s bad faith is shown by the use of the name “America On Line Utility” at the site.

Respondent’s Response

Respondent states that the use of the words America On Line was due to a programming error.

Complainant’s Statement Attempting to prove bad faith:

The Complaint refers to a telephone conversation in which counsel for Complainant asked the reason that the letters aol were used as the first three letters of the domain name.  Respondent’s decision not to answer these questions are then construed by Complainant as evidence of bad faith.  Complainant states that “This inability to justify its use of such a famous mark as AOL, is strong evidence that Respondent registered and used <aolutility.com> in an effort to piggyback off the immense worldwide goodwill AOL has created in its name and mark.”

. 

Respondent’s Response

Respondent was under no obligation to answer all questions that may be posed to him during an unsolicited telephone conversation.  This is certainly not proof of bad faith.

Complainant’s Statement Attempting to prove bad faith:

Complainant alleges that Respondent offered to transfer the domain name <aolutility.com> to AOL if it invested $5 million in Respondent’s company. 

Respondent’s Response

Respondent states as follows:

“During the conversation that Mr. Davis asked about our business and unofficially I told him that electric deregulation is a good business and if they are willing they can invest in our company as a line of credit, 5 Million dollars in exchange of 25% of the company. There was no discussion about the domain name of aolutility.com at all. Mr. Davis comments are completely wrong and misleading. The way I understand he was taping the conversation, I would suggest him to present the tape to NAF to prove his comment.”

Accordingly, the Complaint does not provide adequate proof or evidence to support the allegation that Respondent acted in bad faith both at the time of registration and in the current use of the domain name.

Evidence of the Absence of Bad Faith

Although the Complainant has the burden of proving bad faith and the Respondent does not have the burden of proving that there is not bad faith, we will, nevertheless,  provide evidence to prove that there was not bad faith.

We note that Section 4 of the Uniform Domain Name Dispute Resolution Policy, provides that certain circumstances shall be evidence of bad faith.  It provides as follows:

b. Evidence of Registration and Use in Bad Faith. 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:

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

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

you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

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.

Although Respondent does not have a burden of proof in this matter, we submit evidence to prove that none of the foregoing circumstances exist in this situation, as follows:

Neither Respondent nor any of his associates have registered or acquired the domain name in question for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is alleged to be the owner of a trademark or service mark in the LETTERS  “AOL” or to a competitor of the Complainant, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name. (Affidavit attached hereto as Exhibits A & D)

Neither Respondent nor any of his associates have registered the domain name in question in order to prevent the owner of any trademark or service mark from reflecting the mark in a corresponding domain name.  Furthermore, neither Respondent nor any of his associates have engaged in a pattern of such conduct.  (Affidavit attached hereto as Exhibits A & D)

Neither Respondent nor any of his associates have registered the domain name for the purpose of disrupting the business of the Complainant or any competitor. (Affidavit attached hereto as Exhibits A & D)

By using the domain name in question, neither Respondent nor any of his associates have attempted to attract, for commercial gain, Internet users to a web site or other on-line location, by creating a likelihood of confusion with the Complainant's alleged mark as to the source, sponsorship, affiliation, or endorsement of a web site or location or of a product or service on a web site or location. (Affidavit attached hereto as Exhibits A & D)

Furthermore, as additional support for Respondent’s position in this domain name dispute, we point out that neither Respondent nor any of his associates have had any intent for commercial gain to misleadingly divert consumers or to tarnish any alleged trademark/service mark. (Affidavit attached hereto as Exhibits A & D)

In situations such as the instant situation, UDRP decisions have held that when no proof of bad faith is presented by the Complainant, the Complainant fails to establish the element of bad faith.  For example, in the case of WPP GROUP PLC v. WPP AF-0530 (eResolution Jan. 21, 2000) the decision states that [emphasis added]:

There has been absolutely no evidence presented by Complainant before the Panel to show one of the circumstances set out above or any other circumstance of bad faith…. The Complainant has therefore failed to establish this element.

Similarly, in the instant case there has not been any conclusive evidence presented by Complainant to show one of the listed circumstances or any other circumstance of bad faith. Therefore, the Complainant has failed to establish this required element.  Complainant has failed to prove that there was bad faith both at the time of registration and in the current use of the domain names.

Since Complainant has failed to prove the element of bad faith, Complainant’s request for the transfer of the domain name should, therefore, be denied.

DISCUSSION 

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this 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.”

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

Identical and/or Confusingly Similar

Despite all the verbiage in the submissions, the issues are very simple.  Is there any risk that a user calling the name <aolutility.com> may think he is calling a site about some form of utility that is owned by AOL, Inc. or associated with AOL INC.?

            The answer is yes.  Given the ubiquitous nature of AOL Inc., there is no doubt some Internet users when they discover <aolutility.com> will think they have reached a site operated under the aegis of AOL, Inc.  See, for example, America Online, Inc. v. Viper, WIPO Case D2000-1198 (“it is well past the day when Internet users would not make the assumption that use of AOL as part of a domain name links that site in the mind of the user to Complainant”);

Rights or Legitimate Interests

AOL Inc. has made the three letters AOL the powerful symbol they are today, and obviously have an interest in them.

The Respondent contends it has legitimate business interests involving the electrical energy and other industries, and some are related to the site in question, although the site itself remains “under construction”. But that does not address the point, which is:  What business interest or legal interest does it have in using the acronym AOL in connection with any of its activities?  The Respondent offers no reason whatever for this usage.  What drove it to employ this famous acronym to describe its business?  There is no answer.

At the same time, the acronym is now so famous that coincidence is incredible.  The result is that one must infer that the name was chosen precisely because it matched that of this large enterprise, AOL, Inc.  To seek to use the goodwill of another enterprise is not to create any rights or legitimate interests.  On the contrary.

Registration and Use in Bad Faith

I do not draw any inference from the negotiations.

Contrary to the submissions of the council for the Respondent “AOL” are not merely three more letters.  That argument assumes that I am a fool.  The three letters together symbolize a large American enterprise.  I simply repeat that in this age it is not a coincidence when a firm uses the acronym AOL in any new setting.  In the absence of a credible explanation, I will infer that its purpose is to mislead Internet users into thinking that whatever activities are carried on on the site, AOL Inc. has some connection with them.  This is fraud within the meaning of the rules, and the law.  See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”).

            I will say only for this Respondent that it has unlike others spared me the pathetic attempts to suggest an unrelated origin for its use of AOL: America Online, Inc., v. Yeteck Communication, Inc., D2001-0055 (WIPO Apr. 23, 2001) (Respondent held to have acted in bad faith despite claims that <aolcasino.com> was an acronym for “Adults On Line Casino”); America Online, Inc. v. East Coast Exotics, D2001-0661 (WIPO July 10, 2001) (bad faith registration and use despite Respondent’s claim that AOL is an acronym for “Amateurs On Line”).

DECISION

I order a transfer of name

Hon Roger P. Kerans Panelist
Dated: February 26, 2002

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