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Generic Top Level Domain Name (gTLD) Decisions |
America Online, Inc. v. Am Tech Video,
Inc.
Claim Number: FA0203000105931
PARTIES
The
Complainant is America Online, Inc.,
Dulles, VA (“Complainant”) represented by James
R. Davis, of Arent Fox Kintner
Plotkin & Kahn. The Respondent
is Am Tech Video, Inc., Brooke Park,
OH (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <aolvoices.com>
and <aolvideos.com>, registered with Network Solutions.
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.
Bruce
E. Meyerson as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically
on March 18, 2002; the Forum received
a hard copy of the Complaint on March 20,
2002.
On
March 20, 2002, Network Solutions confirmed by e-mail to the Forum that the
domain names <aolvoices.com> and <aolvideos.com> are 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
March 20, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of April 9,
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@aolvoices.com and postmaster@aolvideos.com by
e-mail.
A
timely Response was received and determined to be complete on April 5, 2002.
On April 11, 2002, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the Forum appointed Bruce E.
Meyerson as Panelist.
RELIEF SOUGHT
The
Complainant requests that the domain names be transferred from Respondent to
Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant
owns the marks “AOL” and “AOL.COM” in connection with its Internet service
business. Complainant asserts that it
has invested “substantial sums of money” in developing its services and marks
and that the “distinctive”
“AOL” and “AOL.COM” marks “have become very
well-known and famous.” Complainant
claims that the disputed domain names are nearly identical and confusingly
similar to its marks. Complainant
states that Respondent is unfairly profiting from consumer confusion caused by
the alleged unauthorized use of the AOL’s
names and marks. Finally, Complainant contends that that
Respondent has no rights or legitimate interests in the disputed domain
because, among other
things, Respondent’s use of the domain names came many
years after the mark “AOL” had become “famous and well-known to consumers.”
B. Respondent
Respondent
contends that there is little danger of consumer confusion as consumers would
not associate the domain names with AOL because
Respondent offers audio and
voice production, and encoding services for commercial web sites, and it is not
an Internet service provider.
Respondent states that it has also placed a disclaimer on it site to
clarify that its business is not affiliated with AOL. Respondent denies that it has acted in bad faith.
FINDINGS
Complainant
is the owner of the numerous AOL family of marks. Complainant first began using its service mark “AOL” in commerce
in 1989 and registered AOL on June 4, 1996 and registered AOL.COM
on March 7,
2000. Complainant has used these marks
in connection with computer online services and other Internet related services
and has subsequently
invested substantial sums in developing and marketing its
services and marks. Respondent Am Tech
Video, Inc. first used the service mark “Audio on Line & Videos” in
November 2001.
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
The
domain names in dispute incorporate Complainant’s mark in its entirety and add
only the generic terms “voices” and “videos.”
Such a minor difference does not distinguish the domain names from
Complainant’s AOL mark; thus, the disputed domain names are confusingly
similar
to the mark. E.g., America
Online, Inc. v. Cucamonga Electric Corp., FA 103364 (Nat. Arb. Forum Feb. 26, 2002) (<aolutility.com> is
confusingly similar to “AOL”); America Online, Inc. v. Tella, FA 101820
(Nat. Arb. Forum Dec. 28, 2001) (<aol.box> and AOL are
confusingly similar); America Online, Inc. v. Viper, D2000-1198 (WIPO
Nov. 28, 2000) (<aolgirls.com> is confusingly similar to “AOL”).
Rights or Legitimate Interests
Respondent has not demonstrated rights or
legitimate interests in the disputed domain names. Respondent has failed to come forward with facts demonstrating
that it is known in its industry by the acronym “aol.” Indeed, nothing in Respondent’s web site
refers to “aol” except the disclaimer stating that Respondent is not affiliated
with “America
On Line.” Although
Respondent uses the service mark “Audio On Line &
Videos,” the documentation submitted by Respondent makes no reference to “AOL”
as used by anyone to identify Respondent’s
business. In fact, it appears that Respondent begin using the mark “Audio
On Line & Videos,” only after this dispute began, as it had
formerly used the mark “VIDEOONTHE WEB.NET.”
Thus, Respondent has not demonstrated
rights or legitimate interests in its use of “AOL.”
Registration and Use in Bad Faith
Under the circumstances, there is a
strong inference that Respondent’s purpose in using the disputed domain names,
knowing that the
Complainant’s “AOL mark was already considered famous before Respondent
registered the disputed domain” names, America Online, Inc. v. TouchTone
Pictures, LLC, FA 105776 ( Nat. Arb. Forum April 11, 2002), was to create a likelihood of confusion with
the Complainant’s mark, thereby using the Complainant’s goodwill associated
with its
mark to attract business to Respondent’s web site. See America Online, Inc. v. Cucamonga
Elec. Corp.; America Online, Inc. v. Yeteck Communication, Inc.,
D2001-0055 (WIPO April 23, 2001); America Online, Inc. v. Viper.
DECISION
The domain names <aolvoices.com> and <aolvideos.com> are hereby transferred
to Complainant.
Bruce E. Meyerson, Panelist
Dated: April 22, 2002
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