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Generic Top Level Domain Name (gTLD) Decisions |
America Online, Inc. v. Anytime Online
Traffic School
Claim Number: FA0302000146930
PARTIES
Complainant
is America Online, Inc., Dulles, VA
(“Complainant”) represented by James R.
Davis, of Arent Fox Kintner Plotkin & Kahn. Respondent is Anytime Online Traffic School, Sebastopol, CA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <aoltrafficschool.com>,
<aoldefensivedriving.com>, and
<aoldriverimprovement.com>, registered with Network Solutions, 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.
Petter
Rindforth as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on February 26, 2003; the Forum received
a hard copy of the
Complaint on February 28, 2003.
On
February 28, 2003, Network Solutions, Inc. confirmed by e-mail to the Forum
that the domain names <aoltrafficschool.com>,
<aoldefensivedriving.com>,
and
<aoldriverimprovement.com> are registered with Network Solutions,
Inc. and that the Respondent is the current registrant of the name. Network Solutions, Inc. has verified that
Respondent is bound by the Network Solutions, 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
February 28, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”),
setting a deadline
of March 20, 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@aoltrafficschool.com,
postmaster@aoldefensivedriving.com, and postmaster@aoldriverimprovement.com by
e-mail.
A
timely Response was received and determined to be complete on March 20, 2003.
On March 28, 2003, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the Forum appointed Mr. P-E Petter
Rindforth as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The
Complainant is the owner of numerous trademark registrations worldwide for the
mark AOL, including U.S. trademarks registered
since 1996 (copies of
registration details from the USPTO website are provided as Annex B of the
Complaint). Complainant is also
the owner of the U.S. trademark registration
AOL.COM.
Long
prior to Respondent’s registration of the disputed domain names, and at least
as early as 1989 for the mark AOL, the Complainant
adopted and began using its
marks in connection with computer online services and other Internet-related
services, including providing
information regarding driver’s licenses and
tickets. 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.
The
Complainant 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. With over thirty-four million
subscribers, the Complainant
operates the most widely used interactive online service in the world.
The
AOL marks have been and continue to be widely publicized through substantial
advertising throughout the United States and the
world. Sales of services under the AOL 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.
The Respondent, which had knowledge of
the AOL marks by the time of the registration of the disputed domain names,
registered the
domain names with a bad faith intent to profit from the
confusion that would be generated from these domains. The disputed domains
are
nearly identical and confusingly similar to the AOL and AOL.COM marks. Consumer
confusion is particularly likely because Respondent
is using the famous and
distinctive mark AOL as a prefix to generic words like “traffic” “school” and
“driving.”
Respondent
has no rights or legitimate interests in respect to the domain names.
Respondent is not licensed or authorized to use the
AOL mark.
Respondent initially used the domain
names in connection with a website that used the name “AOL TrafficSchool.com”
and the AOL mark
in the HTML code (copy of the HTML version of the website is
provided as Annex G of the Complaint).
Respondent has since renamed the website, but continues to use AOL in
the domain names and HTML code.
Respondent’s
bad faith registration and use of the domain names is shown by the pattern of
registering three AOL-based domain names.
In
an attempt to resolve the matter amicably, counsel for the Complainant
contacted
Respondent
and requested that all unauthorized use of the AOL mark cease (copy of letter
provided as Annex F of the Complaint).
Despite several attempts by the counsel to resolve the dispute amicably,
Respondent refused to cease using and to transfer the domain
names.
Respondent claims he uses “AOL” as an
acronym for Anytime Online Traffic School.
This overused excuse is a transparent attempt to play off the famous AOL
name and mark and is not a bona fide or legitimate use of
the domains.
Respondent
cannot in good faith claim that he had no knowledge of AOL’s rights in its
famous AOL and AOL.COM marks.
Furthermore, Respondent cannot claim in good faith that he made a
legitimate noncommercial or fair use of the subject domains, or
that he is
commonly known as AOL.
The
Complainant’s contentions are supported by a number of prior UDRP cases,
referred to in the Complaint.
B.
Respondent
Anytime
OnLine Traffic School is an Internet based company offering an alternative to
traditional “Traffic School.” This web-based
course enables students to
completed traffic school, “anytime & on-line.”
The
disputed domain names are not identical or confusingly similar to the
Complainant’s mark. The Complainant is relying on a “likelihood”
of dilution.
In a recent decision (Mosley et al., d/b/a Victor’s Little Secret v Victoria’s
Secret Catalogue, Inc., et. al., decided
March 4, 2003 – US Supreme Court) the
United States Supreme Court made it very clear that the Federal Trademark
Dilution Act requires
proof of actual dilution, not a “likelihood” of dilution.
It is the plaintiff’s obligation to demonstrate that there has in fact
been a
reduction in the capacity of the famous mark to identify goods or services.
The
Complainant lists a wide range of business activities (Section 1 of Factual and
Legal Grounds of the Complaint”), but “traffic
school” is not among them.
Unlike the Complainant, Respondent is an on-line traffic school and is
straightforward in its mission.
Complainant’s
statement that customers may believe that “AOL endorses or is affiliated with
the services sold at the site” is not
true. On the contrary, Respondent is
using the following disclaimer at the website:
“Anytime Online is not affiliated with, sponsored by, or
associated with America Online, Incorporated” (copy of the website
provided as Annex D of the Response).
Respondent
has not received any complaints about confusion or connections with the
Complainant.
Respondent
has legitimate interests in the domain names. Prior to notice to Respondent of
this dispute, Respondent used the domain
names in connection with a bona fide
offering of services.
The
Complainant is not remotely involved in providing traffic school instruction.
The Respondent conducted thorough research including
consultations with experts
in the field of traffic school programs and Internet providers. The experts
agree that the domain names
are an appropriate marketing strategy and that “shorter
names attract a larger percentage of the lazier customers who would otherwise
look for a competitors website with a shorter
web address when presented with
multiple opinions” (Expert Testimony from Scott Nader provided as Annex E
of the Response). Based upon this expert analysis, the Respondent followed
the
advice and used the letters “a”, “o”, “l,” as well as “trafficschool” in the
website address. The practice of using short addresses
is commonly accepted and
widely used in the Internet industry, even if it means that parts of the web
address would include other’s
trademarks as acronyms (examples of similar web
addresses provided as Annex F of the Response).
The
disputed domain names differ from the three lettered trademark of the
Complainant. Complainant has no rights to all other names
including the letters
AOL or for all services.
The
Complainant has failed to prove that the disputed domain names are registered and
used in bad faith. Respondent has placed a disclaimer on its home page in
good faith.
The
reason for registering the three domain names and not only one is that not all
states in the USA recognize and/or categorize traffic
school programs. In
California, this type of program is called “Traffic School”; in Virginia
“Driver Improvement”; in New Jersey
and Colorado it is called “Defensive
Driving.” Three different addresses are therefore necessary for marketing
reasons.
The
Respondent’s contentions are supported by a number of prior UDRP cases,
referred to in the Response.
DISCUSSION AND FINDINGS
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.
Complainant
holds numerous registrations for its AOL mark throughout the world. Complainant asserts that its mark is famous
and recognized globally as indicative of Complainant’s Internet services, and
this Panel
agrees that the AOL trademark is indeed well known.
The
disputed domain names are not identical to Complainant’s marks AOL or AOL.COM;
however, they are confusingly similar to the AOL
mark, because they incorporate Complainant’s entire mark and merely add the
descriptive terms “traffic school,” “defensive driving,” and
“driver
improvement.” These additional terms do not add any distinctive features
capable of overcoming a claim of confusing similarity (see Arthur Guinness Son & Co. (Dublin)
Ltd. v. Healy/BOSTH, D2001-0026,
WIPO; Mar. 23, 2001, finding confusing similarity where the domain name in
dispute contains the identical mark of the
Complainant combined with a generic
word or term).
The
Panel finds that <aoltrafficschool.com>, <aoldefensivedriving.com>,
and <aoldriverimprovement.com> are confusingly
similar to (at least) the
Complainant’s AOL trademark and accordingly finds for Complainant under
Paragraph 4 (a) (i) of the Policy.
It
is an undisputed fact that the Respondent is not licensed or authorized by the
Complainant to use the AOL trademark. Nor has the
Respondent proved that he is
commonly known by the domain names. The disputed domain names were registered
in September/October 2002
and the websites seem to have been created in 2003
(according to copyright notices, Annex G of the complaint and Annex D of the
Response).
However,
the Panel accepts the fact that Respondent, before any notice of this dispute,
has used the domain names in connection with
a bona fide offering of services,
namely, traffic school services. Even if such services seem to have been
advertised on the Complainant’s
website, Complainant cannot reasonably claim
that the AOL trademark also covers traffic school services.
The
Panel also notes that the Respondent’s business name is Anytime OnLine Traffic
School and that it is therefore not far-fetched
to use <aoltrafficschool.com>
as a domain name for Respondent’s business. The fact that Respondent is using
the abovementioned
visible disclaimer on its website further indicates a bona
fide offering of the traffic school services (See Realmark Cape Harbour L.L.C. v. Lewis, D2000-1435; WIPO Dec. 11,
2000).
Accordingly,
this Panel finds that, prior to notice to Respondent of the dispute, Respondent
used the domain names in connection with
a bona fide offering of services,
within the meaning of Paragraph 4 (c) (i) of the Policy.
The Complainant states that Respondent
initially used the domain names in connection with a website that used the name
“AOL TrafficSchool.com”
and the AOL mark in the HTML code. The Panel has
carefully viewed the HTML code in Annex G of the Complaint, but could only find
references to “aoltrafficschool,” “AOLTSB.jpg” and “AOL Traffic School.” The
Panel therefore concludes that the Respondent has not
used the AOL mark alone
within the HTML code.
The
Complainant further states that Respondent’s bad faith registration and use of
the domain names is shown by the pattern of registering
three AOL-based domain
names. It is the opinion of this Panel, however, that the Respondent has
provided an acceptable explanation
for the three registrations (see
above).
Respondent
argues that its use of a disclaimer on its website is evidence of good
faith. The Panel concludes that the
said disclaimer is at least evidence of good faith use of the domain names. (See
Al-Anon Family Group Headquarters
Inc. v. Reid, D2000-0232; WIPO June 5, 2000).
The
Panel is therefore not convinced by the Complainant’s argument that the
Respondent “registered the domain names with a bad faith
intent to profit from
the confusion that would be generated from these domains.”
The
Panel concludes that the Complainant has failed to prove that the domain names
were registered and used in bad faith.
DECISION
The Panel concludes (a) that the disputed domain
names are confusingly similar to Complainant’s trademark AOL, (b) that the Respondent has rights and/or
legitimate interests in the domain names, and (c) that the Complainant has
failed to prove
that the Respondent registered and used the domain names in bad
faith.
Therefore, as the Complainant has failed to prove
all three elements under Section 4(a) of the policy, the Complainant’s request
to
transfer the domain names <aoltrafficschool.com>,
<aoldefensivedriving.com>, and < aoldriverimprovement.com> to the Complainant America Online, Inc. is DENIED.
Petter
Rindforth, Panelist
Dated: April 11, 2003
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