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Generic Top Level Domain Name (gTLD) Decisions |
America Online, Inc. v Louis Tullo
Claim Number: FA0303000150811
PARTIES
Complainant
is America Online, Inc., Dulles, VA
(“Complainant”) represented by James R.
Davis, of Arent Fox Kintner Plotkin
& Kahn. Respondent is Louis Tullo, Hewlett, NY
(“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <3daol.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.
Hugues
G. Richard as panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on March 20, 2003; the Forum received
a hard copy of the
Complaint on March 24, 2003.
On
March 25, 2003, Network Solutions, Inc. confirmed by e-mail to the Forum that
the domain name <3daol.com> is
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
March 25, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of April 14,
2003 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@3daol.com by e-mail.
A
timely Response was received and determined to be complete on March 27, 2003.
On April 1, 2003 pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the Forum appointed Hugues H.
Richard as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name
be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant contends that the <3daol.com>
domain name is nearly identical or confusingly similar to Complainant’s “AOL”
and “AOL.COM” trademarks. Complainant
submits that consumer confusion is particularly likely because Respondent is
using the famous and distinctive mark “AOL”
in connection with the prefix “3d”
to sell software, monitors and projectors that enable consumers to provide and
view three-dimensional
images. Furthermore,
Complainant argues that the likelihood of consumer confusion is enhanced by the
fact that AOL is world renowned for its
software and technology capabilities
and sells monitors and projectors similar to those offered by Respondent.
Complainant
claims that Respondent has no rights or legitimate interests in the domain
name. According to Complainant,
Respondent is not named “AOL” and is not licensed or authorized to use the “AOL” trademark.
Complainant
contends that Respondent registered and used the <3daol.com>
domain name in bad faith. Complainant
argues that: (1) Respondent registered the domain name long after AOL’s
adoption and use of the “AOL” and “AOL.COM” trademarks;
(2) Respondent uses the
<3daol.com> domain name to route Internet users to his commercial
website that sells software, monitors, projectors, and other products that
allow consumers to create and view three-dimensional objects, and therefore
Respondent profits from the consumer confusion that may
be created when
consumers encounter the famous AOL mark in the domain name <3daol.com>;
(3) despite several attempts by Complainant’s counsel to resolve the dispute
amicably, a resolution was not reached; (4) Respondent’s
contention regarding
his use of “AOL” as an acronym for his company constitutes an attempt to play
off the famous “AOL” name and
mark and would not be a bona fide and legitimate
use of the disputed domain name and (5) Respondent cannot in good faith claim
that
he had no knowledge of Complainant’s rights in its famous “AOL” and
“AOL.COM” marks and that he made a legitimate noncommercial or
fair use of the
disputed domain name, or that he is commonly known as AOL.
B.
Respondent
Respondent submits that the Complainant’s
contentions constitute non-factual claims and self-serving statements of fact
because no
evidence to support with proof such contentions was produced.
Respondent contends that the disputed
domain name <3daol.com> is not identical or confusingly similar to
the “AOL” and “AOL.COM” trademarks because the company Airimages Inc., which
sells Patented
3D Projectors, has never authorized AOL to sell its
products. Respondent thus submits that
it is AOL, in selling its products, that is infringing. Respondent also argues that Complainant
changed the way the disputed domain name <3daol.com> is used (<3daol.com>
vs. <AOL.COM>) in order to self-serve and create the necessary confusion
required. Moreover, Respondent contends
that Airimages Unlimited Inc. has never experienced any confusion because of
the use of the <3daol.com> domain name.
Respondent claims that he has rights and
legitimate interests in the domain name.
He states that the domain name <3daol.com> stands for
“Three Dimensional Airimages On Line.”
In addition, Respondent explains that the most important use of the <3daol.com>
domain name is the e-mail address “ltullo@3daol.com.” Respondent also argues that Airimages Unlimited, Inc. makes a
legitimate commercial and fair use of the domain name, that it is commonly
known as “3daol” and that its identity is based on its patented 3D product
line.
Finally, Respondent submits that he has
not registered and is not using the domain name in bad faith. He explains that the company Airimages Inc.,
which sells Patented 3D Projectors, has never authorized AOL to sell its
products and
therefore, submits that it is AOL, in selling its products, that
is infringing. Additionally, Respondent
claims that its domain name stands for “Three Dimensional Airimages On Line.” Furthermore, Respondent contends that
Airimages Unlimited, Inc. was willing to settle but that the Complainant was
acting in bad faith
in attempting to place undue responsibilities on Louis
Tullo in the future.
FINDINGS
The Complainant, America Online, Inc.
(thereafter AOL), is the owner of numerous trademark registrations worldwide
for the mark “AOL,”
including the following U.S. registrations: 1,977,731 and
1,984,337, registered on June 4, 1996 and July 2, 1996 respectively, as
it
appears from the produced trademark registrations.
AOL has used and is using its “AOL”
trademark 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 also owns the trademark “AOL.COM”
(trademark registrations Nos. 2,325,291 and 2,325,292) in connection with,
among other things:
“Computer services, namely, providing
multiple user access to computer networks and bulletin boards for the transfer
and dissemination
of a wide range of information; providing a wide range of
general interest information via computer networks; telecommunications
services, namely, electronic transmission of data, images and documents via
computer terminals; electronic store-and-forward messaging;
electronic mail
services, and facsimile transmission.”
The Complainant has used the trademarks
“AOL” and “AOL.COM” since at least 1989 for “AOL” and 1992 for “AOL.COM.”
AOL has used its “AOL” and “AOL.COM”
trademarks continuously and extensively in interstate and international
commerce in connection
with the advertising and sale of its Internet and
computer-related services.
AOL has spent millions of dollars
advertising and promoting its services under the “AOL” marks, resulting in over
thirty-five million
subscribers worldwide and billions of dollars in sales.
On February 2, 2000, the Respondent
registered the domain name <3daol.com>. The domain name is connected to a website at <airimagesinc.com>.
On December 17, 2002, the representative
of AOL sent a “cease and desist” letter to the Respondent requesting the
transfer of the
disputed domain name.
Having reviewed the evidence submitted by
the parties and their written representations, the Panel makes the following
findings:
1. The disputed domain name <3daol.com>
is confusingly similar to Complainant’s trademarks “AOL” and “AOL.COM.”
2. The Respondent does not have any rights
or legitimate interests in respect of the domain name.
3. The domain name has been registered by
the Respondent 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.
On this issue, the Panel is of the
opinion that the disputed domain name is confusingly similar to Complainant’s
registered trademarks
for the following reasons.
As previously stated, the Complainant has
provided evidence to the effect that the trademarks “AOL” and “AOL.COM” have
been registered.
Those registrations are sufficient to establish prima facie
Complainant’s rights over the said trademarks.
Previous
decisions have recognized that the adaptation of a trademark in a domain name
by variation in spelling or by deletion, addition
or insertion of letters or
numbers does not escape a finding of confusing similarity. As stated in America Online, Inc. v. Fu,
WIPO Case No. D2000-1374 <icq.502.com> <icq520.com>, the addition
of the suffixes “502” and “520” to the “ICQ” trademark
does little to reduce
the potential for confusion. Also, in America Online Inc. v. Chinese ICQ Network, WIPO Case No.
D2000-0808, the Panel found that adding the numeral 4 in the domain name
<4icq.com> does nothing to deflect
the impact on the viewer of the ICQ
mark and is therefore confusingly similar.[1]
In
the present case, the Respondent has registered the domain name <3daol.com>. The Panel is of the view that the addition
of the prefix “3d” does nothing to “distinguish” Respondent’s domain name from
Complainant’s
registered trademarks.
This is even more so if one considers that Respondent is providing
online services that are very similar or identical to those provided
by the
Complainant.
Respondent
argues that the company Airimages Inc., which sells Patented 3D Projectors, has
never authorized AOL to sell its products.
It therefore submits that AOL, in
selling its products, is infringing its rights. Obviously, the Panel does not see the relevance of this argument
in relation to the confusion issue. If
AOL were selling Respondent’s products on its website (which has not been
established), supposedly without its authorization, this
would not justify the
use by the Respondent of the disputed domain name.
The
acronym “AOL” has acquired, for the public, a distinctive meaning, which points
out to Complainant business and services.
Respondent’s use of the prefix “3d” with the distinctive acronym “AOL”
to sell software, monitors and projectors that enable consumers
to provide and
view three-dimensional images makes the association with AOL almost
natural. In fact, AOL, renowned for its
software and technology capabilities, also sells monitors and projectors
similar to those offered by
Respondent at the disputed domain name. As stated in Société des Bains de Mer Et du Cercle Des Etrangers A Monaco v. Global Productions-Domain For Sale, WIPO
Case No. D2000-1332 <monacogambling.com>, “the words (in that case
“monaco” and “gambling”) used together create a strong
similarity and
impression that could easily induce the general public into believing that the
domain name, the domain name proprietor
and any web site operated from the
domain name are associated with the Complainant (owner of the trademark “Casino
de Monte-Carlo”)”.
The
Panel therefore finds that it is perfectly plausible for a consumer to be
confused by the terminology used in the Respondent’s
domain name. Any Internet user may be led into thinking
that the <3daol.com> web site is provided or endorsed by the
Complainant.
Under
ICANN Policy ¶ 4 (c), any of the following circumstances, in particular but
without limitation, if found by the Panel, shall
demonstrate Respondent’s
rights or legitimate interests to the domain name:
(i) The 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; or
(ii) The fact that the Respondent has been
commonly known by the domain name; or
(iii)
A legitimate non-commercial or fair use of the domain name, without intent for
commercial gain to misleadingly divert
consumers or to tarnish the trademark or service mark at issue.
Apart from Respondent’s mere registration
of the <3daol.com> domain name, the Panel does not find any
evidence of any rights or legitimate interests the Respondent may have with
respect to “3daol”
or the disputed domain name. In fact, the Panel undertook to verify whether the domain name <3daol.com>
is currently in operation, and it seems that any person visiting this website
is immediately redirected to another web site using
the domain name <airimages.com>. Moreover, no goods or services seem to be
offered under the name or the mark “3daol”.
Thus, this type of use cannot be said to be a bona fide offering of
goods or services within the meaning of the ICANN Policy. On this point, it has been decided in Vapor Blast Mfg. Co. v. R & S Tech. Inc, FA 96577 (Feb. 27,
2001) <vaporblast.com>, that the commercial use of the domain name to
confuse and divert Internet traffic
was not a legitimate use of the domain
name. In Kosmea Pty Ltd. v. Krpan,
WIPO Case No. D2000-0948 <kosmea.com>, the Panel found that the
Respondent had no rights in the domain name because of its
intention to divert
consumers of Complainant’s products to Respondent’s site by using Complainant’s
mark.
The Respondent does not dispute the fact
that because of the substantial advertising expenditures and sales, the
distinctive AOL.COM
mark has become very well-known and famous among members of
the purchasing public.
Furthermore, the Panel accepts
Complainant’s contention to the effect that Respondent’s appropriation of the
“AOL” mark to market
products that compete with Complainant’s goods does not
constitute a bona fide offering of goods and services. As stated in America Online, Inc. v. Fu,
WIPO Case No. D2000-1374 <icq502.com> <icq520.com>, “it would be
unconscionable to find a bona fide offering of services
in a respondent’s
operation of a web site using a domain name which is confusingly similar to
Complainant’s mark and for the same
business.”[2]
Regarding Policy ¶ 4(c)(ii), it is not
plausible for Respondent to claim that he has been commonly known by the domain
name. As mentioned above, the Panel
finds no evidence that Respondent was commonly known by the disputed domain
name. Besides, the Panel cannot accept
Respondent’s assertion that “3daol” in his domain name stands for “Three
Dimensional Airimages On
Line.” The
acronym “AOL” is now clearly associated in the mind of the public with the
marks “AOL” and “AOL.COM,” so it is highly unlikely
that Respondent is commonly
known as “AOL” or “3daol.” In fact, the
domain name <3daol.com> would naturally point towards
Complainant’s business rather than Respondent’s alleged website. In this regard, see Nike, Inc. v. B. B. de Boer,
WIPO Case No. D2000-1397 <nike-shoes.com>, where the Panel found one
“would be hard pressed to find a person who may show
a right or legitimate
interest” in a domain name containing Complainant’s distinct and famous Nike
Trademark. Also, in Nokia Corp. v. Private, WIPO Case No. D2000-1271 <wwwnokia.com>, the Panel
stated that the Respondent was not commonly known by the mark contained
in the
domain name where Complainant has not permitted Respondent to use the NOKIA
mark and no other facts or elements can justify
prior rights or a legitimate
connection to the names “Nokia.”
In
relation to Policy ¶ 4(c)(iii), there is no indication that the Respondent is
making a legitimate non-commercial or fair use of
the domain name. Respondent argues that the most important
use of the <3daol.com> domain name is by the use of the e-mail
address <ltullo@3daol.com>.
However, the Panel is of the opinion that this explanation does not
legitimate the use by the Respondent of the disputed domain name.
Incidentally, the Panel refers to the
decision Pivotal Corporation v. Discovery Street Trading Co. Ltd, WIPO
Case No. D2000-0648 <pivotalsoftware.com>. As referred therein, once lack of legitimate rights or interest
has been sufficiently alleged by a Complainant, the failure of Respondent
to
address this issue adequately may authorize the Panel to draw an adverse
inference, as the Panel does in the present case. Having
failed to do so, the
Panel thus finds that Respondent has no rights or legitimate interests in the
domain name.
As stated in Charles Jourdan AG v. AAIM,
WIPO Case No. D2000-0403 <charlesjourdan.com> “the Panel finds that the
Respondent has no legitimate rights or interest in
that (i) Respondent is not a
licensee of Complainant, nor has he received any permission or consent to use
the trademark; (ii) Complainant
has prior rights in that trademark which
precede Respondent’s registration of the domain name; (iii) Respondent is not
(either as
an individual, business or other organization) commonly known” by
the name used (“3daol”) in the disputed domain name.
Policy ¶ 4(b) states that the following
circumstances, in particular but without limitation, shall be evidence of the
registration
and use of a domain name in bad faith:
(i) Circumstances indicating that the
Respondent has registered or has acquired the
domain name primarily for the purpose of
selling […] for a valuable consideration in excess of Respondent’s documented
out-of-pocket
costs directly related to the domain name; or
(ii) that the domain name has been registered
in order to prevent the owner of the
trademark from reflecting the mark in a
corresponding domain name, provided that you have engaged in a pattern of such
conduct; or
(iii) that the domain name has been registered
primarily for the purpose of disrupting the
business of a competitor; or
(iv) that the domain is used to intentionally
attempt to attract, for commercial gain,
Internet users to respondent’s web site
or other on-line location, by creating a likelihood of confusion with the
complainant’s mark
as to the source, sponsorship, affiliation, or endorsement
of respondent’s web site or location or of a product or service on respondent’s
web site or location.
As mentioned above, the Panel finds that
the <3daol.com> domain name is so confusingly similar to
Complainant’s marks that the Internet user will likely believe that there is an
affiliation
between Respondent and Complainant or that Complainant has at least
endorsed this use of it. In fact, when
the Respondent registered the domain name in dispute, long after the
Complainant had adopted and first used its trademarks,
AOL already had a
worldwide reputation, as alleged by the Complainant and confirmed in a number
of decisions.[3] Thus, the Respondent should have known about
Complainant’s trademarks and services at the time he registered the domain name
given
the “widespread use and fame” of the Complainant’s “AOL” and “AOL.COM”
marks. In fact, with respect to the
trademark AOL.COM, this has not been disputed by the Respondent. In Perot
Sys. Corp. v. Perot.net, FA 95312
(NAF August 29, 2000) <perot.net>, the Panel found bad faith where the
domain name in question was obviously connected
with Complainant’s well-known
marks, thus creating a likelihood of confusion strictly for commercial gain.
Furthermore, the Panel, following many decisions
on this subject,[4] cannot
accept the Respondent’s explanation as to the choice of the acronym “3daol” for
“Three Dimensional Airimages On Line”. As
stated in America Online, Inc. v. Cucamonga
Electric Corp. FA 103364 (NAF Feb. 26, 2002) <aolutility.com>, “[I]n
this age it is not a coincidence when a firm uses the acronym AOL in
any new
sitting. In the absence of a credible
explanation, I will infer that its purpose is to mislead Internet users into
thinking that whatever activities
are carried on the site, AOL Inc. has some
connection with them.”
Moreover, the fact that the disputed
domain name is used solely to attract attention and then divert traffic to
another site, at which
there is absolutely no use of or even reference to the
disputed domain name, is convincing evidence of bad faith use.[5] In America
Online, Inc. v. Tencent Comm. Corp.,
FA 93668 (NAF March 17, 2000) <oicq.com> <oicq.net>, it was decided
that the fact that Respondent registered and used
an infringing domain name to
attract users to a website sponsored by Respondent constituted bad faith.
Respondent once again argues that the
company Airimages Inc., which sells Patented 3D Projectors, has never
authorized AOL to sell
its products, and therefore submits that AOL, in selling
its products, is infringing its rights.
Obviously, as mentioned above, the Panel does not see the relevance of
this argument in relation to the bad faith issue. If AOL were selling Respondent’s products on its website (which
has not been established), supposedly without its authorization, it
would not
justify Respondent’s use of the disputed domain name.
Based on the foregoing, the Panel
concludes that the Respondent has intentionally attempted to attract, for
commercial gain, Internet
users to Airimages’ website.
Consequently, this Panel finds that
Respondent has registered and used the disputed domain name in bad faith.
DECISION
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it is Ordered that the <3daol.com> domain name be TRANSFERRED from Respondent to
Complainant.
Hugues G.
Richard, Panelist
Dated: April 15, 2003
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