DECISION

America Online, Inc. v. Jeffrey Berns

Claim Number: FA0405000273412

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 Jeffrey Berns (“Respondent”), represented by Robert J. Schaap of Law Offices of Robert J. Schaap, 21241 Ventura Boulevard, Suite 188, Woodland Hills, CA 91364.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <aolove.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.

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on May 14, 2004; the Forum received a hard copy of the Complaint on May 17, 2004.

On May 19, 2004, Network Solutions, Inc. confirmed by e-mail to the Forum that the <aolove.com> domain name is registered with Network Solutions, Inc. and that 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 May 20, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 9, 2004, 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@aolove.com by e-mail.

A timely Response was received and determined to be complete on June 9, 2004.

On June 24, 2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Complainant, America Online, Inc., contends that the <aolove.com> domain name is nearly identical and confusingly similar to the AOL, LOVE@AOL, AOL.COM and LOVE.COM marks.  Consumer confusion is particularly likely because Respondent is using the very famous and distinctive mark AOL as a prefix in the domain name that merges the AOL brand with LOVE.  Moreover, the initial commercial impression of the domain name is that the services provided are part of the AOL dating network.  The AOL portion of the domain, therefore, is the sole distinctive element and consumers are likely to recognize the famous AOL mark in connection with the <aolove.com> domain name and falsely believe that the services provided therein are part of the extensive AOL dating service.  Moreover, Respondent’s online dating services are identical to those provided by AOL under its AOL, LOVE@AOL, AOL.COM and LOVE.COM brands.  Respondent, Jeffrey Berns, registered and uses the <aolove.com> domain with a bad faith intent to capitalize on the famous AOL, LOVE@AOL, AOL.COM and LOVE.COM marks, and profit from the international and domestic goodwill AOL has built up in its famous brands.  Respondent has no rights or legitimate interests in respect to the infringing domain.  Respondent is not licensed or authorized to use the AOL mark, and Respondent is not commonly known as AOL.  Respondent’s bad faith use of the domain name is demonstrated by his use of <aolove.com> to provide online dating services that compete directly with those offered by AOL under its LOVE@AOL, LOVE.COM, AOL and AOL.COM marks.  At various times, Respondent’s site has used the AOL TRIANGLE LOGO.  When counsel for AOL objected, Respondent removed the logo but continued to promote the site by capitalizing the “AOL” portion of the domain to emphasize the famous AOL brand, i.e., AOLove. 

            B. Respondent

            Respondent contends as follows:

1.      The <aolove.com> domain name is not identical or confusingly similar to any of the domains owned by Complainant, i.e., “AOL.COM”; “LOVE.COM”; LOVE@AOL.COM.

2. The trademark “AOL” always appears in capital letters, i.e., “AOL.COM;” LOVE@AOL.COM, and is distinctive.  The letters “a” “o” and “l,” which are part of the Respondent’s domain name, <aolove.com> are not necessarily represented in upper case.  They are never distinctive; in fact, they are never used as an identifier or a title of a website, which is “An Only Love,” but only as the domain name.

3. In its registrations, the trademark “AOL” is nearly always separated from the remainder of the title, i.e., “AOL.COM;” LOVE@AOL.COM.  In the few exceptions (i.e, AOLBANK.COM), the title “AOL” is always an entity of its own, usually accompanying other whole English words.  The letters “a” “o” and “l,” which are part of the Respondent’s domain name, “aolove.com” are part of the entire site name, and the expression “aol” cannot be separated from the domain name, because, by doing so, the word “love” ceases to exist.  The word “love,” and not “aol,” is the centerpiece of the domain name.

4. Respondent has not attempted to register the <aollove.com> domain name but was only presently interested in registering the domain name corresponding to the acronym of the three words “An Only Love” and, therefore, registered <aolove.com>.  Furthermore, Respondent argues that the <aolove.com> domain name is not confusingly similar to any of Complainant’s marks, because the domain name is used to describe Respondent’s pre-existing website “An Only Love.”  Thus, Respondent further asserts that the AOL mark itself is not contained in the disputed domain name as the “l” is not separate from the word “love,” which is part of the title of the website.

5. LOVE.COM does not even contain the letters “AOL.” Complainant seems to allege that it owns the rights to the work “Love.”  Respondent does not contest that Complainant has rights in the AOL mark.  However, Respondent asserts that AOL does not have rights to the word “love,” as it is a generic term that bears no relation to Complainant’s AOL mark. 

6. Complainant suggests that no one can register or use a domain name comprised of the letters “aol” along with other letters. 

7. Respondent has a legitimate interest in the <aolove.com> domain name.

8. Respondent only registered the <aolove.com> domain name while involved in discussions with Complainant about a potential co-branding arrangement. 

9. Respondent has been in the dating service business since September 1996, and he began using his mark “An Only Love” in 2003. 

10. The <aolove.com> domain name was not registered or used in bad faith.

11. Respondent expended a substantial amount of time, effort and money in attempting to obtain a co-branded web site which would be suitable to both AOL and Respondent.  After devoting almost seven months to this effort, AOL abruptly terminated any further discussions.  In offering to sell the domain name to Complainant for $50,000, Respondent was seeking reimbursement for all of the time, effort and money it would not otherwise have expended, except for the encouragement of AOL.  The <aolove.com> domain name is valuable to Respondent because it contains the name of his enterprise.   

           

FINDINGS

1. Complainant owns the AOL, LOVE@AOL, AOL.COM and LOVE.COM marks.  The marks are used in connection with, among other things, providing a wide variety of goods and services on the Internet, including online dating services.

2. Complainant America Online, Inc. ("AOL") 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, which were registered on June 4, 1996, and July 2, 1996, respectively. 

      3.      AOL uses its LOVE@AOL, LOVE.COM and AOL.COM marks in connection with providing online dating services.  AOL owns United States federal trademark registration Nos. 2,317,490 and 2,325,078 for the LOVE@AOL mark; Reg. No. 2,836,717 for the LOVE.COM mark; and Reg. Nos. 2,325,291 and 2,325,292 for the AOL.COM mark.  The AOL mark is used extensively in connection with these marks and services to promote AOL's services.  As a result, consumers associate the AOL mark, when used in a domain name.

      4.      Long prior to Respondent’s registration of the <aolove.com> domain name, and at least as early as 1989 for the AOL mark, 1992 for the AOL.COM mark, 1996 for the LOVE@AOL mark, and 2003 for the LOVE.COM mark, AOL adopted and began using its marks in connection with computer online services and other Internet-related services.  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.  AOL 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.

      5.      AOL 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 on the Internet.

6. With tens of millions of users, AOL operates the most widely-used interactive online service in the world and each year millions of AOL customers worldwide obtain services offered under the AOL, LOVE@AOL, AOL.COM and LOVE.COM marks; millions more are exposed to said marks through advertising and promotion.

7. Respondent, an AOL user with an AOL e-mail address, had actual knowledge of AOL’s trademark rights at the time he registered the <aolove.com> domain name. 

8. AOL’s counsel spoke with Respondent’s attorney in an attempt to resolve this matter amicably.  During a telephone conversation, Respondent’s counsel explained that his client would be willing to transfer the domain name if AOL paid $50,000.  That amount is far beyond Respondent’s actual out-of-pocket registration fees. 

9. In about 1996, Respondent started a dating service using media such as the Internet, telephone and fax.  In about July 2003, Respondent also developed the terminology “An Only Love” which included a design of a heart with a halo surrounding the heart and the words “An Only Love” extending through the middle of the heart. 

10. Respondent contacted AOL about a co-branding arrangement and spoke with the AOL representative Eric Thorne, who was the Interactive Marketing Director of AOL.  Mr. Thorne was interested in Respondent’s proposal.  Numerous discussions between Complainant and Respondent occurred about a co-branding arrangement.  

11. In connection with the potential co-branding arrangement with AOL, Respondent registered the <aolove.com> domain name on August 15, 2003.  Thereafter, Respondent registered the <anonlylove.com> domain name on April 7, 2004. 

12. In about September 2003, Mr. Thorne terminated his employment with AOL.  In January 2004, Respondent was informed that AOL was no longer interested in pursuing any co-branding arrangement.  After terminating the discussions with Respondent regarding co-branding, AOL’s counsel demanded that Respondent “deactivate and transfer” its domain name to AOL without compensation.  Respondent refused to transfer the domain name to AOL. 

13. Respondent uses the <aolove.com> domain name to offer dating services on the “An Only Love” website located at the disputed domain name as well as at the <anonlylove.com> domain name. 

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; and

(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 rights under Policy ¶ 4(a)(i) in the AOL (Reg. No. 1,977,731 issued June 4, 1996), LOVE@AOL (Reg. No. 2,317,490 issued February 15, 2000), LOVE.COM (Reg. No. 2,836,717 issued April 27, 2004), and AOL.COM (Reg. No. 2,325,292 issued March 7, 2000) marks by registering them with the U.S. Patent and Trademark Office and through continuous use.  See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption).

            Respondent’s <aolove.com> domain name is confusingly similar to Complainant’s AOL and LOVE.COM marks because the domain name is a combination of those two marks, deviating only by the deletion of the letter “l.”  The combination of Complainant’s marks and the deletion of one letter constitute confusing similarity pursuant to Policy ¶ 4(a)(i).  See Nintendo of Am. Inc v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding confusing similarity where Respondent combined Complainant’s POKEMON and PIKACHU marks to form the <pokemonpikachu.com> domain name); see also Am. Online, Inc. v. Anytime Online Traffic School, FA 146930 (Nat. Arb. Forum Apr. 11, 2003) (finding that Respondent’s domain names, which incorporated Complainant’s entire mark and merely added the descriptive terms “traffic school,” “defensive driving,” and “driver improvement” did not add any distinctive features capable of overcoming a claim of confusing similarity); see also Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive). 

            Furthermore, Respondent’s <aolove.com> domain name is confusingly similar to Complainant’s AOL mark. Respondent has only added the letters “ove” to Complainant’s famous AOL mark, which remains the distinctive feature of the domain name.  This minor variation is insufficient to defeat a finding of confusing similarity pursuant to Policy ¶ 4(a)(i).  See Am. Online, Inc. v. iDomainNames.com, FA 93766 (Nat. Arb. Forum Mar. 24, 2000) (finding that Respondent’s domain name <go2AOL.com> was confusingly similar to Complainant’s AOL mark); see also 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).  In a case involving a domain name nearly identical to the subject domain name, the Panel held that <aollovers.com> was confusingly similar to the AOL mark.  See Am. Online, Inc. v. Steven Brom, FA105855 (Nat. Arb. Forum April 18, 2002). 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

.

Rights or Legitimate Interests

Respondent is not commonly known by the <aolove.com> domain name. Therefore, Respondent lacks rights and legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii).  See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).

Respondent’s <aolove.com> domain name is linked to a website that competes with Complainant’s matchmaking services offered in association with Complainant’s marks.   Respondent uses Complainant’s well-known marks to attract Internet users and divert them to a competing website that displayed Complainant’s triangle logo.  Respondent’s use of a domain name confusingly similar to Complainant’s mark to divert Internet users to Complainant’s competitors does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (“[I]t 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 the Complainant’s mark and for the same business.”); see also Am. Online Inc. v. Shenzhen JZT Computer Software Co., D2000-0809 (WIPO Sept. 6, 2000) (finding that Respondent’s operation of a website offering essentially the same services as Complainant and displaying Complainant’s mark was insufficient for a finding of bona fide offering of goods or services);  see also Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because Respondent's sole purpose in selecting the domain names was to cause confusion with Complainant's website and marks, its use of the names was not in connection with the offering of goods or services or any other fair use);  see also Nike, Inc. v. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate interests where 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).

Accordingly, the Panel finds that Complainant has established Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent registered the <aolove.com> domain name solely for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant for the amount of $50,000, which is in excess of Respondent’s out-of-pocket costs.  Therefore, Respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(i).  See World Wrestling Fed’n Entmt., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000) (finding that Respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out-of-pocket costs); see also Dynojet Research, Inc. v. Norman, AF-0316 (eResolution Sept. 26, 2000) (finding that Respondent demonstrated bad faith when he requested monetary compensation beyond out-of-pocket costs in exchange for the registered domain name).

Respondent was aware of Complainant’s rights in its marks and nevertheless registered the <aolove.com> domain name primarily for the purpose of attracting Internet users interested in Complainant’s services to Respondent’s competing website.  Respondent’s use of a confusingly similar domain name to disrupt the business of a competitor is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).  See Lubbock Radio Paging v. Venture Tele-Messaging, FA 96102 (Nat. Arb. Forum Dec. 23, 2000) (concluding that domain names were registered and used in bad faith where Respondent and Complainant were in the same line of business in the same market area); see also EBAY, Inc. v. MEOdesigns, D2000-1368 (Dec. 15, 2000) (finding that Respondent registered and used the domain name <eebay.com> in bad faith where Respondent has used the domain name to promote competing auction sites). 

Respondent is using the <aolove.com> domain name to intentionally attempt to attract Internet users to its own website for Respondent’s commercial gain by creating a likelihood of confusion between Complainant’s marks and Respondent’s services, thereby constituting bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent registered and used an infringing domain name to attract users to a website sponsored by Respondent); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the Complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain). 

            The dominant feature of Respondent’s infringing domain name is Complainant’s famous and distinctive AOL mark.  Respondent had actual knowledge of Complainant’s rights in the AOL mark prior to registration of the <aolove.com> domain name.  Such opportunistic registration of a domain name is evidence of bad faith under Policy ¶ 4(a)(iii). See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”); see also Reuters Ltd. v. Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000) (finding that Respondent demonstrated bad faith where Respondent was aware of the Complainant’s famous mark when registering the domain name as well as aware of the deception and confusion that would inevitably follow if he used the domain name).

Accordingly, the Panel finds that Complainant has established 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 <aolove.com> domain name be TRANSFERRED from Respondent to Complainant.

The Honorable Charles K. McCotter, Jr. (Ret.)

Dated: July 8, 2004

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