DECISION

America Online, Inc. v. Autoleasing On Line

Claim Number: FA0311000209904

PARTIES

Complainant is America Online, Inc., Dulles, VA (“Complainant”) represented by James R. Davis, of Arent Fox Kintner Plotkin & Kahn, 1050 Connecticut Avenue, NW, Washington, DC 20036.  Respondent is Autoleasing On Line, Dearborn, MI (“Respondent”) represented by Joseph F. Page, of Cox, Hodgman & Giarmarco, P.C., 101 West Big Beaver, Tenth Floor, Troy, MI 48084.

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <aolleasing.com> and <aollease.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.

P. Jay Hines as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on November 10, 2003; the Forum received a hard copy of the Complaint on November 12, 2003.

On November 13, 2003, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain names <aolleasing.com> and <aollease.com> are registered with Network Solutions, Inc. and that the Respondent is the current registrant of the names.  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 November 14, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 4, 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@aolleasing.com and postmaster@aollease.com by e-mail.

A timely Response was received and determined to be complete on December 3, 2003.

On December 29, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed P. Jay  Hines as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Complainant 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, issued in 1996.  Complainant uses the AOL mark in connection with computer services, namely, leasing access time to computer databases, computer bulletin boards, computer networks, and computerized research and reference materials in numerous fields including travel and for computerized shopping via telephone and computer terminals.  The AOL mark is famous and distinctive for telecommunications services, namely, electronic transmission of data, images and documents via computer terminals; electronic mail services; and facsimile transmission. 

Complainant uses its AOL.COM domain name and mark in connection with the official AOL Internet website.  It owns U.S. Trademark Registration Nos. 2,325,291 and 2,325,292 for the mark AOL.COM. 

Complainant has approximately 35 million subscribers and operates the most widely-used interactive online service in the world.  Complainant spends millions of dollars annually in advertising its marks and services throughout the United States and the world.  Sales of services under the marks have amounted to many billions of dollars.  As a result, the general public associates the AOL names and marks with Complainant’s online services. 

Long before Respondent registered the domain names <aolleasing.com> and <aollease.com>, Complainant used its mark for computer online services and other Internet-related services, including providing information and services related to automobile purchasing and leasing.  Complainant contends that the subject domain names are merely identical and confusingly similar to the AOL and AOL.COM marks as Respondent has merely added descriptive or generic words to the famous AOL mark in connection with providing information and services related to automobile leasing. 

Complainant has not authorized Respondent to use the AOL mark and Respondent is not named or commonly known as AOL Leasing or AOL Lease.  In fact, once consumers reach Respondent’s website, there is no reference to either AOL or Autoleasing On Line.  Respondent promotes its services as WELEASEBYTEL.  Accordingly, Respondent has no rights and legitimate interests in the domain names. 

Complainant asserts that the subject domain names are not appropriate acronyms for the pseudonym “Autoleasing On Line” as the name does not abbreviate to “AOL Leasing” or AOL Lease” because the “leasing” portion precedes the “On Line” suffix. 

With respect to bad faith, Complainant alleges that Respondent registered and uses the domain names with an intent to capitalize on Complainant’s famous names and marks and to profit from the international domestic goodwill Complainant has established in those marks.  Respondent is also seeking to mislead consumers by registering and using domain names that play off the famous marks.  Both domains route to Respondent’s commercial site at <weleasebytel.com>.  Use of the domains to direct Internet traffic to Respondent’s commercial online services that make no reference to AOL or Autoleasing On Line constitutes bad faith.  Complainant also asserts that the registration of two AOL-based domains demonstrates a pattern in violation of Policy ¶ 4(b)(ii).  Respondent is unable to claim that it had no knowledge of Complainant’s rights in its famous AOL marks.  Finally, Respondent cannot claim a legitimate noncommercial or fair use of the subject domains.

B. Respondent

Respondent denies that there is any confusion between the domain names including the letter string “aol” and Complainant’s name and mark.  To support this, Respondent states that there is no mention of AOL on its website and that, over the past three years of use, no one has ever indicated that they thought they were signing on to AOL. 

Respondent also seeks to distinguish the respective services, indicating that it is in the business of leasing automobiles while Complainant, an Internet access provider, is not.  Advertising pertaining to automobile leasing on Complainant’s website is not the same as leasing automobiles, and none of the advertisers use the designation “aol” as a mark or domain name address for leasing or selling cars.  Respondent risks the loss of existing customers and potential new customers were it to cede the domain names to Complainant. 

Respondent states that as an accommodation to Complainant it has already discontinued its use of <aolleasing.com> in connection with any future advertising.  Respondent asserts that the exhibits submitted with the Complaint demonstrate that there has been no attempt by Respondent to mislead anyone or imply any connection with Complainant or any of its businesses.  Respondent asks that the Complaint be denied or, in the alternative, that Respondent be permitted to continue to use the two domain names with the stipulation that they will not be used in additional advertising and that Respondent will adopt and exclusively use another domain name that does not contain the letters “aol.” 

FINDINGS AND 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

Complainant has established its rights in the marks AOL and AOL.COM, both of which were well-known prior to the registration of the subject domain names by Respondent.  The subject domain names incorporate Complainant’s entire mark and add the descriptive terms “lease” and “leasing.”  The addition of such descriptive terms are insufficient to avoid a potential for confusion, particularly with respect to well-known or famous marks.  Am. Online, Inc. v. Anytime Online Traffic School, FA 146930 (Nat. Arb. Forum Apr. 11, 2003).  While consumers conducting searches on the Internet may not believe that Complainant is in the business of leasing automobiles, it is likely that they would associate Complainant as an online source of information that sponsors or is associated with the domain names <aolleasing.com> or <aollease.com>.  Accordingly, the Panel finds that the subject domain names are confusingly similar to marks in which the Complainant has rights. 

Rights or Legitimate Interests

The owner of the subject domain names is “Autoleasing On Line.”  However, there is no demonstrated use of “Autoleasing On Line” on Respondent’s website and Respondent has not claimed or demonstrated that it has been commonly known as Autoleasing On Line.  Indeed, it appears that Respondent is known as We Lease By Tel or Lease-By-Tel.  Accordingly, this case is distinguishable from Any Time Online Traffic School, supra, (aoltrafficschool.com), in that here there is little basis for finding that the selection of <aolleasing.com> and <aollease.com> was logical and justifiable.  The Panel places less weight on the argument that the domain names are inappropriate acronyms for Autoleasing On Line.  Further distinguishing this case from that of Anytime Online Traffic School, there is no evidence that Respondent employed a disclaimer of any affiliation with Complainant.  Accordingly, the inference is that no actual or contemplated bona fide or legitimate use of the contested domain names may be claimed by Respondent.  Use of Complainant’s well-known marks and the goodwill surrounding those marks as a means of attracting Internet users even to an unrelated business cannot be considered a bona fide offering of goods and services.  Am. Online v. Tencent Comm. Corp. FA 93668 (Nat. Arb. Forum Mar. 21, 2000); U.S. Franchise Sys. Inc. v. Howell, FA 152457 (Nat. Arb. Forum May 6, 2003). 

Registration and Use in Bad Faith

As in Am. Online, Inc. v. Viper, D2000-1198 (WIPO Nov. 28, 2000), an Internet user entering the subject domains is more likely than not expecting to arrive at a website hosted by Complainant.  Complainant’s website <aol.com> is well known, widely advertised and “it is well past the day when Internet users would not make the assumption that use of AOL as part of a domain name links that site in the mind of the user to Complainant,” supra.  Complainant’s marks were registered long before the subject domain names.  Respondent thus had constructive if not actual knowledge of Complainant’s rights.  Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000).  These facts suggest that the domain names at issue were selected with an intent to attract users to Respondent’s site for commercial gain by creating a likelihood of confusion with Complainant’s marks pursuant to Policy ¶ 4(b)(iv). 

The Panel does not believe that the registration and use of two domain names constitutes a showing of a pattern of conduct pursuant to Policy ¶ 4(b)(ii).  Nor does the Panel believe that Respondent’s intent was primarily for the purpose of disrupting the business of a competitor pursuant to Policy ¶ 4(b)(iii).  The Panel finds, however, that Respondent’s registration and use of domain names confusingly similar to Complainant’s marks despite knowledge of Complainant’s rights suggest that the disputed domain names were registered and used in bad faith pursuant to Policy ¶ 4(a)(iv).  Am. Online, Inc. v. Advance Membership Servs., Inc., FA 180703 (Nat. Arb. Forum Sept. 26, 2003).

The Panel notes that Respondent’s request for a conditional ruling in the alternative is beyond the purview of the remedies available in this proceeding. 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <aolleasing.com> and < aollease.com> domain names be TRANSFERRED from Respondent to Complainant.

P. Jay Hines, Panelist
Dated: January 9, 2003

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