DECISION

America Online, Inc. v. Alf Temme

Claim Number: FA0408000316680

PARTIES

Complainant is America Online, Inc. (“Complainant”), represented by James R. Davis, of Arent Fox PLLC, 1050 Connecticut Avenue, NW, Washington, DC 20036.  Respondent is Alf Temme (“Respondent”), 8137 Lankershim Blvd, North Hollywood, CA 91605.

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <8icq.com>, <9icq.com>, <nwetscape.com>, <nretscape.com>, <neytscape.com>, <nedtscape.com>, <nbetscape.com>, <netswcape.com>, <netsvcape.com>, <netsdcape.com>, <netscxape.com>, <netscvape.com>, <netscqape.com>, <netscaqpe.com>, <netyscape.com>, <netgscape.com>, <netdscape.com>, <mapqu4est.com>, <mapqu7est.com>, <mzapquest.com>, <ma0pquest.com>, <mazpquest.com>, <mjapquest.com>,     <ma-quest.com>, <map2quest.com>, <mapqueszt.com>, <jmapquest.com>, <kmapquest.com>, <mapques5t.com>, <mapques6t.com>, <mapquesgt.com>, <mapquesxt.com>, <map0quest.com>, <map1quest.com>, <mapqu3est.com>, <mkapquest.com>, <mapqjuest.com>, <mapqudest.com>, <mapquestg.com>,    <ma-pquest.com>, <mapquest5.com>, <mapquest6.com>, <mapqu8est.com>, <mapque3st.com>, <mapque4st.com>, <mapquezst.com>, <mapqujest.com>, <mapqjuest.com>, <mapq1uest.com>, <mapq2uest.com>, <mapq7uest.com>, <mapq8uest.com>, <aolamo.com> and <laoll.com>, registered with Moniker Online Services, 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.

Dennis A. Foster  as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on August 20, 2004; the Forum received a hard copy of the Complaint on August 23, 2004.

On August 26, 2004, Moniker Online Services, Inc. confirmed by e-mail to the Forum that the domain names <8icq.com>, <9icq.com>, <nwetscape.com>, <nretscape.com>, <neytscape.com>, <nedtscape.com>, <nbetscape.com>, <netswcape.com>, <netsvcape.com>, <netsdcape.com>, <netscxape.com>, <netscvape.com>, <netscqape.com>, <netscaqpe.com>, <netyscape.com>, <netgscape.com>, <netdscape.com>, <mapqu4est.com>, <mapqu7est.com>, <mzapquest.com>, <ma0pquest.com>, <mazpquest.com>, <mjapquest.com>,     <ma-quest.com>, <map2quest.com>, <mapqueszt.com>, <jmapquest.com>, <kmapquest.com>, <mapques5t.com>, <mapques6t.com>, <mapquesgt.com>, <mapquesxt.com>, <map0quest.com>, <map1quest.com>, <mapqu3est.com>, <mkapquest.com>, <mapqjuest.com>, <mapqudest.com>, <mapquestg.com>,    <ma-pquest.com>, <mapquest5.com>, <mapquest6.com>, <mapqu8est.com>, <mapque3st.com>, <mapque4st.com>, <mapquezst.com>, <mapqujest.com>, <mapqjuest.com>, <mapq1uest.com>, <mapq2uest.com>, <mapq7uest.com>, <mapq8uest.com>, <aolamo.com> and <laoll.com> are registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the names.  Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, 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 August 31, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 20, 2004 by which Respondent could file a Response to 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@8icq.com, postmaster@9icq.com, postmaster@nwetscape.com, postmaster@nretscape.com, postmaster@neytscape.com, postmaster@nedtscape.com, postmaster@nbetscape.com, postmaster@netswcape.com, postmaster@netsvcape.com, postmaster@netsdcape.com, postmaster@netscxape.com, postmaster@netscvape.com, postmaster@netscqape.com, postmaster@netscaqpe.com, postmaster@netyscape.com, postmaster@netgscape.com, postmaster@netdscape.com, postmaster@mapqu4est.com, postmaster@mapqu7est.com, postmaster@mzapquest.com, postmaster@ma0pquest.com, postmaster@mazpquest.com, postmaster@mjapquest.com, postmaster@ma-quest.com, postmaster@map2quest.com, postmaster@mapqueszt.com, postmaster@jmapquest.com, postmaster@kmapquest.com, postmaster@mapques5t.com, postmaster@mapques6t.com, postmaster@mapquesgt.com, postmaster@mapquesxt.com, postmaster@map0quest.com, postmaster@map1quest.com, postmaster@mapqu3est.com, postmaster@mkapquest.com, postmaster@mapqjuest.com, postmaster@mapqudest.com, postmaster@mapquestg.com, postmaster@ma-pquest.com, postmaster@mapquest5.com, postmaster@mapquest6.com, postmaster@mapqu8est.com, postmaster@mapque3st.com, postmaster@mapque4st.com, postmaster@mapquezst.com, postmaster@mapqujest.com, postmaster@mapqjuest.com, postmaster@mapq1uest.com, postmaster@mapq2uest.com, postmaster@mapq7uest.com, postmaster@mapq8uest.com, postmaster@aolamo.com, and postmaster@laoll.com by e-mail.

A timely Response was received and determined to be complete on October 15, 2004.

On October 22, 2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Dennis A. Foster as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

--Complainant America Online, Inc. and its affiliated entities (collectively “AOL”), is the owner of numerous trademarks worldwide for AOL, ICQ, NETSCAPE  and MAPQUEST (collectively the “AOL Marks”).  See Annex C.  Complainant owns numerous trademark registrations worldwide for many of its AOL marks, including U.S. registrations for AOL, ICQ, NETSCAPE and MAPQUEST.  Evidence of U.S. trademark registrations and AOL’s ownership interest are attached as Annex B.

--Complainant also uses its AOL marks in connection with its domain names for its various web sites (AOL.COM, ICQ.COM, NETSCAPE.COM, and MAPQUEST.COM).  Complainant owns federal trademark registrations for the marks AOL.COM and MAPQUEST.COM and pending federal applications for NETSCAPE.COM.  See Annex C.  The AOL marks are used extensively at these web sites, which are a significant method of promoting Complainant’s goods and services.  See Annex D.

--Many years after Complainant’s adoption and first use of its AOL marks, and long after the AOL marks became well-known and famous, Respondent registered the domain names at issue in this proceeding for the bad faith purpose of profiting from the goodwill Complainant has created in its AOL marks.  Specifically, Respondent uses the infringing domain names to connect to commercial websites.  Respondent, therefore, has registered and is using the infringing domain names for the sole purpose of confusing and leading unknowing consumers to Respondent’s commercial website.

--The infringing domain names are confusingly similar or nearly identical to the AOL marks.  Consumer confusion is particularly likely because Respondent’s domain names are all merely misspellings of the famous AOL arks.  The majority, if not all, of the traffic routed to Respondent’s web sites, therefore, occurs when unsuspecting AOL users misspell one of the AOL domain names while attempting to visit an authorized AOL site.

--Respondent registered, used, and continues to use the infringing domain names in bad faith to capitalize on the famous AOL marks and to confuse consumers.  Respondent is not licensed or otherwise authorized to register or use domain names that are nearly identical to the AOL marks.

--Respondent has no rights or legitimate interests in respect to the infringing domain names. 

--Respondent’s bad faith registration of the infringing domain names is evidenced by the fact that he registered the domain names many years after the AOL marks had become famous.  The domain names are clearly common misspellings of the famous mark and domain names, which shows that Respondent registered the domain names to benefit from any traffic created when an Internet user inadvertently misspells one of the AOL brands while attempting to visit an AOL site. 

--Respondent’s prolific and systematic approach is shown by the fact that most of the misspellings include a single letter or number on the keypad that is contiguous to the letters in the mark, e.g., <8icq.com>.  Therefore, Respondent’s registration of the infringing domain names were made in bad faith to play off the already famous AOL marks and to profit from the international good will Complainant has created in its brands.

--Respondent’s bad faith use of the infringing domain names is demonstrated by how he uses the website at the disputed domain names.  See Annex F.  Specifically, Respondent uses the infringing domain names to route to a commercial web site <fastexercise.com> that is owned and operated by Respondent.  This is an obvious attempt by Respondent to profit off the consumer confusion created as a result of these domain names that are nearly identical to the AOL marks.

--Respondent’s bad faith registration and use of the infringing domain names is further evidenced by the significant bad faith pattern of registering domain names that violate AOL’s various trademarks.  In addition to the domain names in this case, Respondent already has lost a UDRP proceeding involving a mark owned by Alaska Airlines, Inc.  See Alaska Airlines Inc. v. Alf Temme, D2000-0080 (WIPO Apr. 3, 2000) re <alaskaairlines.org>, and continues to own the infringing domain names <3ediets.com>, “go9gle.com”, “411disney.com” and “411amazon.com.”  See Annex E.  Such actions violate Section 4(b)(ii) of ICANN’s Uniform Domain Name Dispute Resolution Policy.

--The Panel should issue a decision that the disputed domain names be transferred to Complainant.       

 

B. Respondent

--The domain names at issue are typographical errors of Complainant’s trademarked names.  Customers who make typing errors do not type those URL’s because they are confused by the similarity to the underlying trademark; they type those URL’s because they do not hit the correct keys on their computer keyboards.

--A further allegation made in association with domain names that are typographical errors is that they are used for “Initial Interest Diversion”.  This term is another fabrication by the legal professionals who have created the term as if this were a culpable act.  In actuality, Initial Interest Diversion is another term for advertising in general.  The losses the trademark owners are claiming to their business are vastly compensated for by allowing their potential customers a faster comparison shopping experience and a faster decision making process for the purchasing decision.

--There is no infringement when a trademarked word is used other than for selling a product or a service claiming that it is the trademark holder’s product while it is not (Oliver Wendell Holmes judgment, Annex C).

--The reality is that 5% or less of typed words are mistyped. Respondent registered the disputed domain names because he knew of the statistical realities of mistyping domain names.

--Misspelling is not the same as mistyping because misspelling could be associated with confusion, but mistyping can only be associated with poor typing skills, not confusion.

--Complainant correctly cites the Alaska Airlines domain name dispute in which I envisioned a domain name registration advisory service to large corporations that were holders of famous trademarks.  My idea was that many of these large corporations have no clue about their true needs in domain name registration and that expert domain name registration services should recommend the registration of large numbers of domain names to cover the corporation’s needs and to cover the corporation’s future advertising needs and to cover their basic domain name registration coverage as well.

--The disputed domain names should not be transferred to Complainant.

FINDINGS

Complainant, AOL, is one of the world’s better known companies operating in the Internet sector.  Complainant also controls many trademarks that are famous or well-known on the Internet, including those contained in the disputed domain names in this case.

Respondent is an individual whose business is selling exercise equipment via the Internet at the domain name <fastexercise.com>.  To attract customers, Respondent has misspelled certain of Complainant’s trademark names, registered them as domain names, and connected them to Respondent’s web site that sells exercise equipment.

Complainant first put Respondent on notice of the dispute in this proceeding in the fall of 2003.  Also, during the second half of September, 2004, the parties suspended this proceeding because they believed they would reach a settlement.  However, no settlement agreement having been signed, Complainant re-instituted this proceeding at the beginning of October, 2004. 

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 Complainant 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(2) 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 produced as annexes to the Complaint copies of its trademark registrations for the AOL, ICQ, NETSCAPE and MAPQUEST marks.  The details of the registrations in the United States for these trademarks are as follows (Complaint Annex B): AOL.COM, Reg. No. 2,325,292 issued March 7, 2000 in international class 38 for telecommunications services; ICQ, Reg. No. 2,411,657 issued December 12, 2000 in international classes 9, 35, 38 and 42 for, inter alia, computer operating programs; NETSCAPE, Reg. No. 2,027,552 issued December 31, 1996 in international class 9 for computer software for information networks; MAPQUEST, Reg No. 2,129,378 issued January 13, 1998 in international class 42 for on-line information services.

The Panel observes that only the AOL trademark is registered in the name of Complainant.  However, Complainant has exhibited semi-official corporate documents at Annex B tending to show that the above trademark registrations do belong to Complainant.  Also, the Panel’s judicial notice substantiates this information since the Panel has knowledge of these trademarks and their ownership.  Nonetheless, the Panel finds that Complainant, represented by legal counsel, ought to have chosen a more professional way to show its trademark ownership.   

The 54 disputed domain names are based on Complainant’s trademarks listed at the beginning and at the end of this Decision.  All of the disputed domain names have at least one added letter or number and at times also one omitted letter, e.g., <8icq.com>, <nwetscape.com>, <mapqu4est.com> and <laoll.com>.  The question, then, is whether Respondent’s domain name registrations are identical or confusingly similar to Complainant’s trademarks in violation of Policy ¶ 4(a)(i).  Certainly, none of the disputed domain names is identical to Complainant’s trademarks because they all contain at least one different letter or number.  However, the Panel finds Complainant’s trademarks are still readily recognizable to the public in the disputed domain names.  The Panel also is convinced that Internet search engines would routinely include Respondent’s domain names in any search an internaut initiated looking for Complainant’s trademarks or similar names.

The vast majority of previous panels have reached a similar conclusion when faced with a similar fact pattern.  See, e.g., <oicq.net> found confusingly similar to ICQ in America Online Inc. v. Tencent Communications Corp., FA 93668, (Nat. Arb. Forum, Mar. 21, 2000); see also <reuers.com> and <ruters.com> both confusingly similar to REUTERS in Reuters Ltd., v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000).

Therefore, the Panel finds that all 54 of the disputed domain names are confusingly similar to Complainant’s trademarks, and that Complainant has carried its burden of proof under Policy paragraph 4(a)(i).  

Rights or Legitimate Interests

Complainant has asserted that Respondent has no permission or license to use any of Complainant’s trademarks found in the disputed domain names.  In reply, Respondent has constructed a defense based on Policy paragraph 4(c)(i): Respondent claims that the 54 disputed domain names were crafted according to a practice known as “typosquatting”, and that this should be an acceptable practice.  Respondent claims to know that 5% of internauts will make an error when typing Complainant’s trademarks and Respondent should be allowed to attract that 5 % using the disputed domain names and then connecting those persons to Respondent’s <fastexercise.com> web site where Respondent is selling exercise equipment.

Respondent has not produced for the Panel any Policy or Rules provisions, any previous Policy decisions or any United States court decisions that support Respondent’s position.  Respondent has several times referred to the famous U.S. Judge Oliver Wendell Holmes’s saying that a trademark holder can only prevent others from using the same word for the same type goods.  That citation has no apparent application to the proceeding at hand.  In point of fact, the consensus of decisions under the Policy is that Respondent’s practice, whether termed typosquatting or deliberate misspelling of trademarks for domain names, is a violation of the Policy and is not a bona fide use of Complainant’s trademark under Policy paragraph ¶ 4(c)(i). 

In both Encyclopaedia Britannica, Inc. v. Zuccarini, D2000-0330 (WIPO June 7, 2000) and National Association of Professional Baseball Leagues v. Zuccarini, D2002-1011 (WIPO January 21, 2003), typosquatting was found not to be a legitimate right or interest in a disputed domain name .

The Panel finds Complainant has also discharged its burden of proof under Policy paragraph 4(c)(i).    

Registration and Use in Bad Faith

Complainant alleges Respondent has violated the bad faith provisions of Policy paragraph 4(b)(ii), i.e., that Respondent registered the 54 disputed domain names to prevent Complainant from doing so and has engaged in a pattern of this conduct.  The Panel certainly can see the pattern in 54 domain name registrations but, in the Panel’s view, Respondent’s addition of numbers and letters has not resulted in domain names Complainant ever would have wanted to register.     

The Panel does however agree with Complainant’s contention that Respondent’s business model flies in the face of the bad faith provisions of the Policy ¶ 4(b)(iv).  Respondent has registered and is using the 54 confusingly similar disputed domain names in bad faith because he intended to and is using them to attract the public to his  <fastexercise.com> web site to sell to the public Respondent’s exercise equipment.  (cf. Respondent’s similar practice in National Association of Professional Baseball Leagues supra).  The Panel finds Complainant has carried its burden of proof under Policy ¶ 4(a)(iii).  

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 <8icq.com>, <9icq.com>, <nwetscape.com>, <nretscape.com>, <neytscape.com>, <nedtscape.com>, <nbetscape.com>, <netswcape.com>, <netsvcape.com>, <netsdcape.com>, <netscxape.com>, <netscvape.com>, <netscqape.com>, <netscaqpe.com>, <netyscape.com>, <netgscape.com>, <netdscape.com>, <mapqu4est.com>, <mapqu7est.com>, <mzapquest.com>, <ma0pquest.com>, <mazpquest.com>, <mjapquest.com>,     <ma-quest.com>, <map2quest.com>, <mapqueszt.com>, <jmapquest.com>, <kmapquest.com>, <mapques5t.com>, <mapques6t.com>, <mapquesgt.com>, <mapquesxt.com>, <map0quest.com>, <map1quest.com>, <mapqu3est.com>, <mkapquest.com>, <mapqjuest.com>, <mapqudest.com>, <mapquestg.com>,    <ma-pquest.com>, <mapquest5.com>, <mapquest6.com>, <mapqu8est.com>, <mapque3st.com>, <mapque4st.com>, <mapquezst.com>, <mapqujest.com>, <mapqjuest.com>, <mapq1uest.com>, <mapq2uest.com>, <mapq7uest.com>, <mapq8uest.com>, <aolamo.com> and <laoll.com> domain names be TRANSFERRED from Respondent to Complainant.

Dennis A. Foster, Panelist
Dated: November 5, 2004

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