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Generic Top Level Domain Name (gTLD) Decisions |
America Online, Inc. v Bongwoo Chun
Claim Number: FA0202000104974
PARTIES
The
Complainant is America Online, Inc.,
Dulles, Virginia, USA (“Complainant”) represented by James R. Davis, of Arent Fox
Kintner Plotkin & Kahn. The
Respondent is Bongwoo Chun, San
Jose, COSTA RICA (“Respondent”).
The
domain name at issue is <casinoaol.com>,
registered July, 2001, with Network
Solutions.
PANEL
The
undersigned panelist, Robert R. Merhige, Jr., 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.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (“the Forum”)
electronically on February 21, 2002; the Forum received
a hard copy of the
Complaint on February 25, 2002.
On
February 22, 2002, Network Solutions confirmed by e-mail to the Forum that the
domain name <casinoaol.com> is
registered with Network Solutions and that the Respondent is the current
registrant of the name. Network
Solutions has verified that Respondent is bound by the Network Solutions
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
February 25, 2002, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”),
setting a deadline
of March 18, 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@casinoaol.com by e-mail.
A
timely Response was received and determined to be complete on March 11, 2002.
On March 15, 2002, pursuant to the parties’ agreement to
have the dispute decided by a single-member
Panel, the Forum appointed Robert R.
Merhige, Jr. as Panelist.
RELIEF SOUGHT
The
Complainant requests that the domain name be transferred from the Respondent to
the Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
America
Online, Inc. (“AOL”) is the owner of a substantial number of trademark
registrations worldwide for the mark “AOL,” at least
two of which were
registered in June and July 1996, as well as Costa Rican trademark
registrations completed in August 1996.
It uses its AOL mark in connection with several endeavors including
computer services, computerized research and reference materials,
computer
software, games, including music, theater, movies, travel, education,
lifestyles, hobbies and topics of general interest. Included in its services are computer consultation services, shopping
via telephone or computer terminals in the fields of computer
goods and
services and general consumer goods, as well as telecommunications
services. Its endeavors are numerous.
Complainant
contends that its marks are world-wide known and famous among members of the
purchasing public.
Complainant
further contends that subsequent to its adoption and first use of the AOL and
AOL.COM marks, Respondent registered the
domain name in issue, <casinoaol.com>
with a bad-faith intent to profit and that the <casinoaol.com> is
nearly identical and confusingly similar to the AOL and AOL.COM marks.
B.
Respondent
Respondent,
though not denying any of the Complainant’s asserted facts, admits that he
registered the domain name in issue in July,
2001, “through NetSol Inc.,” and
asserts that there is “no related issue with America Online, Inc., regarding
this Complaint.”
FINDINGS
The unrefuted evidence reflects that
Complainant herein is the owner of 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;
as well
as Costa Rican trademark registration Nos. 956871, 95870, 96050 and 95882, each
registered in August 1996.
The evidence reflects as well that
Complainant registered and uses its 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. Additionally, Complainant uses its mark
AOL.COM as the domain name for its web site.
It is unrefuted, and I find that
approximately 8-10 years prior to Respondent’s registration of <casinoaol.com>
Complainant had adopted and begun using its marks AOL.COM and AOL in connection
with computer-online services and other internet-related
services. With over 30,000,000 subscribers,
Complainant operates one of the most widely-used interactive online service in
the world and its
customers, worldwide, obtain services offered under the AOL
and AOL.COM marks.
Respondent’s use of the domain name <casinoaol.com>
is primarily in connection with a commercial gambling site promoted under the
name CasinoAOL. The record establishes
that the letters AOL are set aside and used prominently, leading a reasonable
person to believe that the services
offered are affiliated with or endorsed by
Complainant. The conclusion is
buttressed by the fact that the font and size of the letters AOL used by
Respondent is similar to those used by
America Online to promote its AOL
service.
Premised upon the fame of the AOL marks,
its U.S. and Costa Rican trademark registration, a reasonable conclusion leads
one to believe
that Respondent had knowledge of Complainant’s rights in its
famous AOL and AOL.COM marks.
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
I conclude that Respondent’s <casinoaol.com>,
the domain name in issue, is confusingly similar to Complainant’s
mark. Indeed, Respondent has simply
incorporated the entirety of Complainant’s mark supplemented by the generic
term “casino.”
The mere addition of a generic term to a
famous mark as in the instant case does not create a distinct mark capable of
overcoming
Complainant’s claim of identical or confusing similarity. See Arthur Guinness Son & Co.
(Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001). See also Reed Elsevier, Inc., et al. v.
Cepeda, No. FAO 106000097689, National Arbitration Forum, July 27, 2001.
It is obvious that the domain name
registered by the Respondent is confusingly similar to Complainant’s trademark.
I conclude that Respondent has no rights
or legitimate interests in the domain name in issue.
I conclude as well that the Respondent is
not using the disputed domain name in a fair manner because it can be inferred
that the
Respondent is using the domain name in order to attract Complainant’s
customers to its website by exploiting the goodwill associated
with
Complainant’s AOL mark. See Kosmea
Pty. Ltd. v. Krpan, D2000-0948 (WIPO Oct. 3, 2000).
Bad Faith
The registration of a domain name
encompasses an assertion that said registration “would not infringe upon or
otherwise violate the
rights of any third party.” Under the circumstances existing, it is reasonable to conclude
that any such representation by Respondent in the registering of the
domain
name in issue was erroneous when made and its use of Complainant’s legitimate
registered marks constitutes bad faith.
See Marcor International v. Langevin, National Arbitration Forum
No. FAO 012000096317, 1/12/01. See also WIPO case D2001-0055 (America
Online, Inc. v. Yeteck Communication, Inc.), wherein it was held that the
unauthorized use of <aolcasino.com> in connection with an online gambling
site violates the
Uniform Domain Name Dispute Resolution and constitutes
wrongful use of the subject domain.
DECISION
For the reasons heretofore stated, pursuant to the authority
vested in the undersigned, it is DIRECTED that the domain name <casinoaol.com>
be forthwith transferred to the Complainant.
Robert
R. Merhige, Jr., Panelist
U.S.D.J.,
Retired
Dated: March 22,
2002
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URL: http://www.worldlii.org/int/other/GENDND/2002/434.html