DECISION

America Online, Inc. v. Bob Sherin

Claim Number: FA0205000113980

PARTIES

Complainant is America Online, Inc., Dulles, VA (“Complainant”) represented by James R. Davis, of Arent Fox Kintner Plotkin & Kahn.  Respondent is Bob Sherin, a/k/a Robert Sherin, Miami, FL (“Respondent”).  He is acting pro se.

.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <aolfl.com>, registered with Dotster, Inc.

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.

Richard DiSalle is the Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on May 15, 2002; the Forum received a hard copy of the Complaint on May 17, 2002.

On May 15, 2002, Dotster, Inc. confirmed by e-mail to the Forum that the domain name <aolfl.com> is registered with Dotster, Inc. and that the Respondent is the current registrant of the name.  Dotster, Inc. has verified that Respondent is bound by the Dotster, Inc. 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 May 17, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 6, 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@aolfl.com by e-mail.

A timely Response was received and determined to be complete on May 20, 2002.

On May 29, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Richard DiSalle as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A.  Complainant

            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.  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.”

            AOL uses its mark AOL.COM as a domain name for its website.  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 website, 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.

            AOL has invested substantial sums of money in developing and marketing its services and marks.  As a result, AOL is one of the most readily recognized and famous marks on the Internet.  With over thirty-four 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.

            Complainant contends that long prior to Respondent’s registration of the domain name <aolfl.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, including online shopping and music. 

            It claims that the domain <aolfl.com> 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 postal abbreviation for Florida, namely, “fl.”  Moreover, Respondent prominently promotes itself as a Florida LLC, hence the use of the acronym AOL FL.  In addition, Respondent provides music and shopping services at the <aolfl.com> site that are identical to the types of services provided by AOL through its proprietary service and at the AOL.COM site.  Consumers, therefore, are likely to recognize the famous AOL mark in the infringing <aolfl.com> domain and believe falsely that AOL endorses or is affiliated with Respondent or its online commercial site.

            The Complainant also contends that Respondent has no rights or legitimate interests in respect to the infringing domain; that Respondent is not licensed or authorized to use the AOL mark;  that Respondent’s bad faith registration of <aolfl.com> is evidenced by the fact that the domain was registered many years after the AOL marks were registered and had become famous; and that Respondent’s bad faith use of <aolfl.com> is demonstrated by the fact that Respondent is using the domain to promote Respondent’s commercial website which uses the transparent name Advertise On Line, A Florida LLC (hence the infringing name AOL FL).

            It says that Respondent has attempted to justify its bad faith actions, in this case by claiming that AOL FL is an acronym for Advertise On Line Florida, and that Respondent’s bad faith intent is further evidenced by Respondent’s filing of a  trademark application with the U.S. Patent and Trademark Office for the mark AOL for use in connection with various Internet services. 

B.  Respondent

Respondent avers that he launched his computer business in 1965 and has been at it continuously since.  During the punched card era, Respondent owned and operated the largest punched card service in South Florida, Nova Computing Services Inc.  Respondent incorporated as Advertise OnLine, a Fla. LLC, on November 29, 2001.  He claims he checked the Florida Corporate Name List, finding the name “Advertising Online Inc.” abandoned.  He decided on Advertise OnLine, a shortened, action trade name.  And to create no uncertainty, he decided to add “a Fla. LLC” whenever the company is referred to.  He contends that he has an entirely legitimate interest in the domain name, which comports closely to the corporate name and is intentionally constructed with a different look and feel than that of America Online.

Respondent contends that his disclaimers are prominently featured: “Advertise OnLine, a Fla. LLC, is not affiliated with America Online, a registered trademark of Time-Warner.”  A link follows on the front page: “Want to Visit America Online? (Click here)”

Interestingly, Respondent concedes that “Aolfl.com might be considered confusingly similar to Petitioner’s [sic] domain, AOL.COM.”

There were no additional submissions.

FINDINGS

(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.

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 or Confusingly Similar  Policy ¶ 4(a)(i).

Complainant asserts that it has rights to its AOL mark because it has registered the mark with the United States Patent and Trademark Office as Registration Numbers 1,977,731 and 1,984,337 on July 4, 1996 and July 2, 1996, respectively, and that Respondent’s <aolfl.com> domain name is confusingly similar to Complainant’s mark because it incorporates the entirety of Complainant’s mark and merely adds the two letters “fl” to the end.  The addition of letters or generic terms to another’s mark does not create a distinct mark capable of overcoming a claim of confusing similarity.  See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a Respondent does not create a distinct mark but nevertheless renders it confusingly similar to Complainant’s marks); see also Kelson Physician Partners, Inc. v. Mason, CPR003 (CPR 2000) (finding that <kelsonmd.com> is identical or confusingly similar to Complainant’s federally registered service mark, “Kelson”).

Complainant also asserts that the addition of a generic top-level domain name does not create a distinct mark capable of overcoming a claim of confusing similarity.  See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Blue Sky Software Corp. v. Digital Sierra Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the domain name <robohelp.com> is identical to Complainant’s registered ROBOHELP trademark, and that the “addition of .com is not a distinguishing difference”).  We agree that Respondent’s mark is confusingly similar.  Indeed, as noted, Respondent concedes this.

Rights and Legitimate Interests  Policy ¶ 4(a)(ii).

Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name because Respondent is attempting to attract Complainant’s customers to Respondent’s website by creating a likelihood of confusion as to the source, sponsorship and affiliation of Respondent’s website.  This type of use is not considered to be a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(ii).  See Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D.Mass 2002) (finding that, because the Respondent's sole purpose in selecting the domain names was to cause confusion with the Complainant's website and marks, its use of the names was not in connection with the offering of goods or services or any other fair use); see also Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name).

Complainant asserts that Respondent, Bob Sherin, is not commonly known as <aolfl.com>, and therefore has no rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).

Registration and Use in Bad Faith   Policy ¶ 4(a)(iii).

Complainant asserts that Respondent registered the disputed domain name in bad faith because it was on notice as to Complainant’s rights in the AOL mark when it registered the disputed domain name.  Complainant asserts that based on the fame of its AOL mark Respondent had constructive and actual notice of Complainant’s rights in the mark and therefore its registration of the domain name despite this notice is evidence of bad faith.  See Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the world-wide prominence of the mark and thus Respondent registered the domain name in bad faith); see also Ty Inc. v. Parvin, D2000-0688 (WIPO Nov. 9, 2000) (finding that Respondent’s registration and use of an identical and/or confusingly similar domain name was in bad faith where Complainant’s BEANIE BABIES mark was famous and Respondent should have been aware of it).

Complainant asserts that Respondent is using the disputed domain name in order to promote Respondent’s commercial website and therefore Respondent is acting in bad faith.  Complainant asserts that Respondent is using <aolfl.com> in order to create a likelihood of confusion as to the source, sponsorship and affiliation of Respondent’s website in order to attract Complainant’s customers to Respondent’s website and benefit commercially.  This type of use is evidence of bad faith pursuant to Policy ¶ 4(b)(iv).  See State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where Respondent registered the domain name <bigtex.net> to infringe on Complainant’s goodwill and attract Internet users to Respondent’s website); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent registered and used an infringing domain name to attract users to a website sponsored by Respondent).

DECISION

            The Respondent is directed to transfer the domain name <aolfl.com> to the Complainant.

Richard DiSalle, Panelist
Dated:   June 12, 2002

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2002/854.html