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America
Online, Inc. v. Anthony Griffin
Claim Number: FA0112000102745
PARTIES
The Complainant is America Online, Inc., Dulles, VA (“Complainant”) represented by James R. Davis, of Arent Fox Kintner Plotkin & Kahn. The Respondent is Anthony Griffin, Egremont, Cumbria, UK (“Respondent”).
REGISTRAR AND
DISPUTED DOMAIN NAME
The domain name at issue is <worldofaol.com>, registered with DomainBank, 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.
Rodney C. Kyle as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on December 5, 2001; the Forum received a hard copy of the Complaint on December 7, 2001.
On December 10, 2001, DomainBank, Inc. confirmed by e-mail to the Forum that the domain name <worldofaol.com> is registered with DomainBank, Inc. and that the Respondent is the current registrant of the name. DomainBank, Inc. has verified that Respondent is bound by the DomainBank, 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 December 11, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 31, 2001 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@worldofaol.com by e-mail.
A timely Response was received and determined to be complete on December 31, 2001.
On January 9, 2002, an Additional Submission was received from the Complainant. The Additional Submission was received after the deadline for submission and therefore does not comply with the Forum's Supplemental Rule 7 and so was not otherwise considered by the Panel.
On
January 8, 2002, pursuant to the Complainant’s request to have the dispute
decided by a single-member Panel,
the Forum appointed Rodney C. Kyle as Panelist.
RELIEF SOUGHT
The Complainant requests that the domain name at issue be transferred from the Respondent to the Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The Complainant has in its Complaint made three main categories of contentions.
First, in effect the Complainant contends that under Policy ¶ 4(a)(i) the domain name at issue is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. More particularly, the Complainant contends in Complaint ¶ 4(c) that the "Complainant owns the mark AOL" and that "The mark is used in connection with, among other things, providing information and services on the Internet" in the sense stated
(i) in Complaint ¶ 5(1), of being "the owner [and user] of numerous trademark registrations worldwide for the mark AOL, including in the United Kingdom and United States, which were registered as early as 1995 and 1996, respectively … 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.'";
(ii) in Complaint ¶ 5(2), that the Complainant "owns [United States] federal trademark registration Nos. 2,325,291 and 2,325,292 for the mark AOL.COM";
(iii) in Complaint ¶ 5(2), that "consumers associate the mark AOL, when used in a domain name, with [the Complainant's] services" because
(a) the Complainant has a web site "which is a significant method of promoting AOL's service",
(b) the Complainant "uses its mark AOL.COM as a domain name for its Web site", and
(c) at that web site "[t]he mark AOL is used extensively";
(iv) in Complaint ¶ 5(3), that "at least as early as 1989 for the mark AOL, and 1992 for the mark AOL.COM," the Complainant "adopted and began using its marks in connection with computer online services and other Internet-related services" such as "online shopping and games services";
(v) in Complaint ¶ 5(3), that the Complainant "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";
(vi) in Complaint ¶ 5(9), that "[o]n June 24, 2000, many years after [the Complainant's] adoption and first use of the AOL and AOL.COM marks, both in the United States and the United Kingdom, Respondent registered the [domain name at issue] and began using it in connection with a commercial Web site"; and
(vii) in Complaint ¶ 5(10), that the domain name at issue "is nearly identical and confusingly similar to the AOL and AOL.COM marks" and "likely to conjure up the false impression of an AOL-affiliated [or Complainant-endorsed] site" through "[c]onsumer confusion [that] is particularly likely because Respondent is using the very famous and distinctive mark AOL in connection with a site that discusses the AOL services" and because that site "is used in connection with the sale of goods and services, some of which are identical to those offered by AOL under its famous AOL brand and <SHOP@AOL> service".
(Contentions similar to, or that are background to, contentions "iii(a)", "iii(c)", and "v" are also set out in Complaint ¶¶ 5(4) through 5(8).)
In making the seven contentions referred to in the immediately preceding paragraph of these reasons for decision, the Complainant also contends that evidence submitted by the Complainant that is rationally probative of each of those contentions is respectively in the Complaint's Annexes B (as to "i"), C (as to "ii"), D (as to "iii"), E (as to "iv" and "vii"), and H (as to "vi").
Second, in effect the Complainant contends in Complaint ¶ 5(12) that under Policy
¶ 4(a)(ii) the "Respondent has no rights or legitimate interests in respect of the [domain
name at issue]", under Policy ¶ 4(c). More particularly, the Complainant further
contends,
(i) in that same ¶ 5(12), that the "Respondent is not named AOL and is not licensed or authorized to use the AOL mark"; and
(ii) in item "e" in the paragraph immediately following Complaint ¶ 5(12), that "Based upon (1) the fame of the AOL mark; (2) AOL’s federal trademark registrations; (3) Respondent’s use of the [domain at issue] in connection with a
commercial Web site that references AOL’s services; and (4) Respondent’s
failure to terminate the site after receiving notice of AOL’s objections,
Respondent cannot in good faith claim that he 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".
Third, in effect the
Complainant contends that under Policy ¶ 4(a)(iii) there has been registration,
and is use, of the domain name at
issue in bad faith, under at least Policy ¶
4(b)(iv). More particularly, the Complainant contends,
(i) in Complaint ¶ 5(11), that the "Respondent registered and uses the [domain name at issue] with a bad faith intent to capitalize on the famous AOL and AOL.COM marks, and profit from the international and domestic goodwill [the Complainant] 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"; and
(ii) in five items labeled "a", "b", "c", "d", and "e" that are in a paragraph after Complaint ¶ 5(12), that there "is evidence of Respondent's bad faith registration and use of the [domain name at issue]".
(Those five items are set out as Appendix A, immediately following the signature block of these reasons for decision.)
In making the second of the two contentions ("i" and "ii") referred to in the immediately preceding paragraph of these reasons for decision, the Complainant also contends that evidence submitted by the Complainant that is rationally probative of that second contention is in the Complaint's Annexes E, F, and G.
B. Respondent
The Respondent has in its Response made three main categories of contentions.
First, beginning in the second ¶ of page 2 of 8 (which extends over to page 3 of 8) of the Response, the Respondent "address[es]" the Complainant' contention, set out above as the first-quoted passage in "First" contention "vii", i.e. the Complainant's substantive contention that the domain name at issue "is nearly identical and confusingly similar to the AOL and AOL.COM marks". The Respondent does so as follows:
(i) that "on August 17th, 1999, the Respondent became the sole creator of" a "software package 'Trivium Trivia Quiz for AOL' … designed as an independent add-on to AOL, which allows members of AOL's service to host quiz contests within an AOL chat room";
(ii) that "on January 1st, 2000" the software "was officially released";
(iii) that "[b]y June 2000, many members of AOL, including officials of the AOL service, had requested and become users of this software";
(iv) that the domain name at issue "was chosen to demonstrate the environment of AOL's service in which Trivium was becoming a noticeable part, and not to mislead or confuse visitors that the site was owned or endorsed by AOL itself";
(v) that "on June 24, 2000 … the Respondent purchased the domain name [at issue]";
(vi) that "Information regarding Trivium is, and has always been at the very top of the opening page of the disputed domain, and could be missed by no visitor to the site";
(vii) that the Complainant is "using this software as an enhancement of their own service", such as "within their chat rooms to host official weekly quizzes" and therefore that "AOL do endorse the Respondents software";
(viii) that the software "is not only condoned by AOL, it is actively promoted by the AOL service" and that "AOL do endorse the Respondents software";
(ix) that "Over 8,000 AOL members in countries such as Brazil, the USA, the UK, Germany, France, Japan and elsewhere currently use the Respondent's software, and have done so since July 2000";
(x) that "contained within the software" is "[t]he email address for support, upgrades, help or advice" concerning the software and consisting of the name-- or at least part of the name-- of the software coupled, by "@", to the domain name at issue and that,
(a) "the domain has become the established focal point for the … software, and in particular the email address at the domain",
(b) "Transferral of the domain name would include the loss of this email address" and
(c) if the domain name at issue were "simply" transferred to the Complainant, "each and every user of this software would then have no email address for support, upgrades, help or advice";
(xi) that
(a) the domain name at issue "is the only outlet (in the world) for" the software and
(b) "AOL representatives have been users of this software since June 2000", so
(c) "these representatives must have visited the disputed domain to acquire the software as it is impossible to acquire from any other source" yet
(d) "the Complainant took a further year and a half to issue a complaint, during which time the domain had become completely established"; and
(xii) that
(a) the "Respondents AOL endorsed software has been available for almost 18 months from the disputed domain" and
(b) by e-mail from the Respondent to the Complaint in response to the Complainant commencing the dispute (as contrasted with commencing this proceeding), "the Respondent offered to place a dislcaimer on the web site -- without prompt -- to this effect, and indeed a disclaimer now appears on the initial page of the website" so
(c) "There can be no confusion as to whether the site is owned or endorsed by AOL".
In making the twelve contentions referred to in the immediately preceding paragraph of these reasons for decision, the Respondent also contends that evidence submitted (or seemingly adopted) by the Respondent that is rationally probative of those contentions is respectively in
(i) the Response's Annexes A (as to "viii"), B (as to "xii(b)"), C (as to "vi"), and D (as to "ix" and "xi(b)"); and
(ii) seemingly, the Complaint's Annex G (as to "xii(b)").
Second, in effect the Respondent contends that under Policy ¶ 4(a)(ii) the Respondent has rights or legitimate interests in respect of the domain name at issue, under Policy ¶ 4(c). More particularly, beginning in the first full ¶ of page 3 of 8 of the Response, the Respondent contends specifically against the Complainant's contention, set out above as the first sentence of the "Second" contention "i", i.e. the Complainant's contention that the "Respondent has no rights or legitimate interests in respect of the [domain name at issue]". The Respondent does so as follows:
(i) "disputed for the reasons laid out above" i.e. for the contentions "i" through "xi" stated in the two immediately preceding paragraphs of these reasons for decision, and seemingly also for the contention "xii" stated above herein;
(ii) on page 4 of 8 of the Response that "As an active member of AOL's service, and the author of software condoned, promoted and used by AOL members and staff, the Respondent believes he has a legitimate interest in the domain name"; and
(iii) that those contentions stated in the two immediately preceding paragraphs of these reasons for decision "[demonstrate] rights to and legitimate interests in the domain name [at issue]" within the meaning of Policy ¶ 4(c)(i) which the Respondent cites and quotes as stating that "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".
Third, in effect the Respondent contends that under Policy ¶ 4(a)(iii) there has not been registration, and use, of the domain name at issue in bad faith attributable to the Respondent under at least Policy ¶¶ 4(b)(iv). More particularly, beginning on page 3 of 8 of the Response, Respondent contends specifically against the Complainant's contentions, respectively set out above in items "d" and "a" referred to in the "Third" contention: i.e. the Complainant's contentions as put in item "d", that "Respondent's WorldOfAOL site is not an AOL fan site. It is a blatant attempt to conjure up images of the AOL service and profit from the confusion that is being caused … If Respondent were, indeed, a fan of the AOL service, Respondent would not refuse to cease its unauthorized and improper use of the AOL mark" and, as put in item "a", that "use of the prefix 'World Of' insinuates improperly that the content at the site is affiliated with or endorsed by AOL". The Respondent basically does so by contending
(i) as to that first part of the quoted passage from item "d", that it "is pure conjecture and validated with no proof or evidence" and does not refer to the software;
(ii) as to the second part of that quoted passage from item "d", that "the software … is purely for, and officially endorsed by, the AOL service" so "[h]ow the Respondent could cease to use the AOL mark … is unclear";
(iii) seemingly as to item "d" generally, that "Despite the fact that the web stores objected to by the Complainant … did not, in their entire existence, earn a single penny for the Respondent, or any other individual or company, they were completely removed from the website entirely as a means of goodwill";
(iv) seemingly as to item "a", that the Respondent's software "is not only affiliated with, and endorsed by the AOL service, it is used by official AOL representatives and employees many times each day … [and is] available exclusively from the disputed domain", which domain "has actually attracted over 25 new members to AOL's service, and the Respondent has even been financially rewarded by America Online Inc. for these new members" and which domain "the Respondent believes - and indeed hopes - the domain in dispute is equally beneficial to AOL"; and
(v) seemingly as to item "a", that the Respondent's belief (referred to in item "ii" of the immediately preceding paragraph of these reasons for decision) that the Respondent has a legitimate interest in the domain name at issue rebuts, or at least is a factor in rebutting, the Complainant's contentions regarding Policy ¶ 4(a)(iii).
FINDINGS
In
view of Complainant’s and Respondent’s contentions there are three substantive
topics to be discussed and decided upon in these
reasons for decision.
Those
substantive topics are:
(1) whether under Policy ¶ 4(a)(i) 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) whether under Policy ¶ 4(a)(ii) the Respondent has any rights or legitimate interests in respect of the domain name; and
(3) whether under Policy ¶ 4(a)(iii) the domain name has been registered and is being used in bad faith.
DISCUSSION
In the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) ¶15(a) 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.”
The Policy's ¶4(a) requires that the Complainant must prove each of the following three elements to obtain an order that a domain name be cancelled or transferred:
(1) the domain name 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.
As set out below, the Panel finds that all three of the elements listed in the immediately preceding paragraph have been proven in this proceeding.
In view of the "Parties' Contentions" as set out above under that heading, and in view of the very general issues that result and are set out above under the heading of "Findings", the Panel notes two things. Firstly, that Rule 10(d) provides that "The Panel shall determine the admissibility, relevance, materiality and weight of the evidence." Secondly, that the rule of law that applies to the parties' contentions is as follows: a complainant’s pleading of fact that is not disputed (or, phrased differently, not "put in issue") by a respondent against whom it is contended, is an admission by that respondent, so evidence tendered to establish that fact becomes immaterial, and hence inadmissible, as to establishing that fact. (As for characterizing undisputed facts as admissions, see e.g. W.N. Hohfeld, "Some Fundamental Legal Conceptions as Applied in Judicial Reasoning", (1913-14) 23 Yale L. J. at 27, footnote 23:
"Both
[dispositive] and evidential facts must, under the law, be ascertained in some one or more of four possible modes: 1. By
judicial admission (what is not disputed); 2. By judicial notice, or knowledge
(what is known or easily knowable); 3. By judicial perception (what is
ascertained directly through the senses; cf. ‘real evidence’);
4. By judicial
inference (what is ascertained by reasoning from facts already ascertained by
one or more of the four methods here
outlined)."
As
for characterizing evidence tendered to establish undisputed facts as
immaterial, and hence inadmissible, see e.g. Delisle, Evidence Principles
and Problems, (1984), Carswell, Toronto, at 5:
"The
concept of relevancy is simply dictated by our own present insistence on a
rational method of fact-finding.
"However, not only must the evidence
tendered be rationally probative of the fact sought to be established; the fact
sought to
be established must concern a matter in issue between the parties,
i.e. it must be material. …
"The law of evidence then principally consists of the study of canons of exclusion, rules regarding admissibility, which deny receipt into evidence of information which is rationally probative of a matter in issue between the parties.')
Identical or
Confusingly Similar
In view of all of the above, the Panel makes three findings on this topic. Firstly, the Respondent's twelve substantive contentions on this topic do not actually dispute or put in issue the Complainant's seven substantive contentions on this topic. The closest the Respondent comes is in contention xii(a) i.e. that "There can be no confusion as to whether the site is owned or endorsed by AOL", but that contention is as to whether there is confusion as to the Respondent's web site being owned or endorsed by the Complainant rather than as to whether the domain name at issue is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. Secondly, for the purposes of this proceeding the Respondent therefore admits the Complainant's seven substantive contentions on this topic, so, within the meaning of Policy ¶ 4(a)(i),"[the Respondent’s] domain name is identical or confusingly similar to a trademark or service mark in which the [C]omplainant has rights". Thirdly, in relation to establishing those facts, the evidence contained in Complaint Annexes B, C, D, E, and H is therefore immaterial and hence inadmissible.
Rights or Legitimate Interests
In view of all of
the above, the Panel makes two findings on this topic. Firstly, the
Respondent's three substantive contentions on
this topic do not actually
dispute or put in issue the Complainant's two substantive contentions on this
topic. The closest the Respondent
comes in those three contentions are
contentions of use or promotion or endorsement or condonation (by persons of
some unspecified authority in or for the Complainant) of software
purported by the Respondent to have been authored by the Respondent, rather
than contentions of authorization or license (by persons in or for the
Complainant and having authority to authorize or licence) that the Respondent
may
use any of the Complainant’s family of marks. (In Webster's New Collegiate Dictionary , Thomas Allen
& Son Limited, Toronto, Ontario, 1980, the entry for each of (i)(a) "condone" and "condonation" at 233 is respectively "to pardon or overlook voluntarily;
esp: to treat as trivial, harmless, or of no importance … syn see excuse"
and "implied pardon of an offense by treating the offender as if it
had not been committed"; (b)"endorse" and
"endorsement"
at 373 is respectively "to express approval of
publicly and definitely … syn
see approve" and "an act or process of endorsing"; and (c)
"promote" and "promotion" at
914 is respectively "to
present (merchandise) for public acceptance through advertising and
publicity" and "the act of furthering the growth or development of something; esp: the furtherance of the
acceptance and sale of merchandise through advertising and publicity"; and
in contrast,
(ii)(a) "authority" and "authorize" at 75 respectively includes "a conclusive
statement or set of statements … [of] freedom granted by one in authority"
and "to invest esp. with legal authority"; and (b)
"license" and "licensing" at 656 includes respectively
"a permission granted by
competent authority to engage in … an
activity otherwise unlawful" and "to permit or authorize
esp. by formal license". It is therefore clear that a contention of
software use or promotion or endorsement or condonation, is not a contention of
mark license or authorization. That is especially so in this case in view of
four factors. Firstly, that the Complainant is, and
was known to the Respondent
to be, a very large organization and yet there is a lack of any real Respondent
contention that persons
in or for that very large organization, and having
actual or apparent legal authority to grant mark licenses or authorizations,
made
such things as formal conclusive statements granting legal freedoms to the
Respondent regarding any of the Complainant's marks. Secondly,
that the
preamble of the Respondent's substantive contention "x" indicates (at
best, from the Respondent's perspective)
imprudence by the Respondent and (at
worst, from the Respondent's perspective) stealth by the Respondent. Thirdly,
if it was merely
imprudence, it does not result in the Respondent having (to use
terminology and concepts from the Hohfeld paper cited above) a
"right"
(i.e. an affirmative
claim against a person for that person to do something or not do something) or
a "legitimate interest" (i.e.
a legal interest such as a right, or a
privilege, or a power, or an immunity) that avails the Respondent under Policy
¶ 4(c). Fourthly,
if it was stealth then it was a stealth which vitiates any
semblance of any person (that had actual or apparent authority in or for
the
Complainant) behaving with voluntariness, or excusing or pardoning, or
definitely approving, or presenting merchandise for public
acceptance.)
Secondly, for the purposes of this proceeding the Respondent therefore admits
the Complainant's two substantive contentions
on this topic, so, within the
meaning of Policy ¶ 4(a)(ii), the "Respondent
has no rights or legitimate interests in respect of the [domain name at
issue]".
In case the Panel erred in reaching the conclusions set out in the immediately preceding paragraph, the Panel also notes Guerlain S.A. v. SL, Blancel Web, Case No. D2000-1191 (WIPO Nov. 21, 2000), Nilfisk-Advance A/S v. Leong Tak Lang, Case No. D2000-1299 (WIPO Dec. 27, 2000), and Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000). As in those cases, so too in this case: there was pleaded by the Complainant that the Respondent lacks authorization or license to use any of the Complainant’s family of marks, so there is a prima facie case that the Respondent has “no right or legitimate interest” and the burden of proof was shifted to the Respondent to demonstrate that such a right or legitimate interest exists. The Respondent does not appear to have specifically denied, and affirmatively pleaded against, that contended lack of authorization or license, and, even if it has implicitly so denied and pleaded, the evidence the Respondent submitted has not discharged its burden of proof.
Moreover, (i) as in The Chip Merchant, Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) so too in this case: the domain name at issue being confusingly similar to the complainant’s marks, the respondent's offering services identical to those offered by the complainant under its marks is an illegitimate use rather than a bona fide offering of goods pursuant to Policy ¶ 4(c)(i); (ii) as in Victoria’s Secret et al v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) so to in this case: the respondent cannot be commonly known by a domain name confusingly similar to complainant’s marks pursuant to Policy ¶ 4(c)(ii) because of the complainant’s well-established use of the mark; (iii) as in Caterpillar Inc. v. Quin, D2000-0314 (WIPO June 12, 2000) so too in this case: the respondent’s offering some of the same services as the complainant under a confusingly similar domain name suggests a false connection with Complainant’s business and is not a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii); and (iv) as in Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) so too in this case: a respondent has no rights or legitimate interests in a domain name if it is not commonly known by the complainant’s marks and the respondent has not used the domain name at issue in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use.
Registration and
Use in Bad Faith
DECISION
It is the decision of the Panel that the registration of the domain name at issue, <worldofaol.com> be transferred from the Respondent to the Complainant.
Rodney C. Kyle, Panelist
Dated: January 22, 2002
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