WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
America Online, Inc. v. Frank Albanese
Case No. D2000-1604
1. Parties
The Complainant in this administrative proceeding is America Online, Inc., a Delaware corporation with its principal place of business at 22000 AOL Way, Dulles, Virginia, U.S.A.
The Respondent is Frank Albanese, whose address is 319 E. Madison Suite 3E, Springfield, Illinois 62701, U.S.A.
2. Domain Name and Registrar
The domain name in dispute is as follows: The domain name was registered by Respondent with Network Solutions, Inc. (NSI) on March 22, 2000.
3. Procedural Background
On November 20, 2000, the WIPO Arbitration and Mediation Center received from Complainant via e-mail a complaint for decision in accordance with the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation of Assigned Names and Numbers (ICANN) on August 26, 1999 ("Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999 ("Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (Supplemental Rules).
The Complaint was filed in compliance with the requirements of the Rules and the Supplemental Rules, payment was properly made, the administrative panel was properly constituted, and the panelist submitted the required Statement of Acceptance and Declaration of Impartiality and Independence.
The instant Administrative Proceeding was commenced on December 12, 2000.
On December 29, 2000, WIPO received a Response from Respondent via e-mail. A "corrected" Response was received by WIPO via e-mail on January 5, 2001.
The decision of the Panel was due to WIPO on or before January 25, 2001.
4. Factual Background
With over 23 million subscribers, Complainant America Online, Inc. (AOL) operates the most widely used interactive online service in the world. Complainant owns numerous U.S. trademark registrations for the mark AOL, as used since 1989 in connection with various computer services, including computerized research and reference materials in the fields of business and finance. See Complaint, Annex B. AOL also uses the mark AOL.COM as a domain name for its portal Web site. also is the subject of two U.S. trademark registrations owned by Complainant. See Complaint, Annex C.
Complainant's marks have been and continue to be widely publicized throughout the U.S. and the world. Sales of services under the marks have amounted to many billions of dollars.
As noted above, Respondent registered the domain name in dispute with NSI on March 22, 2000. The domain name is used in connection with a commercial Web site that provides stock trading services. See Complaint, Annex D.
Complainant's counsel, on July 10, 2000, August 28, 2000, September 20, 2000, and September 29, 2000, sent "cease and desist" letters to Respondent or his attorney requesting the transfer to Complainant of the disputed domain name. The parties' counsel, apparently, discussed the matter on October 3, 2000. In a letter dated October 4, 2000, Complainant's counsel indicated to Respondent's counsel that "[AOL] is willing to reimburse Mr. Albanese for his $70 domain registration fee; however, AOL rejects your offer to pay Mr. Albanese an amount in excess of the registration fee. AOL also rejects your client's offer to enter into a licensing agreement whereby Mr. Albanese would share his profits with AOL." See Complaint, Annex E.
5. Parties' Contentions
Complainant contends that the domain name in issue is nearly identical and confusingly similar to Complainant's registered marks AOL and AOL.COM and that Respondent has no rights or legitimate interests in the domain name.
In support of its contention that the domain name was registered and is being "used" in "bad faith," Complainant notes and argues that: (1) Respondent registered the domain name long after AOL's adoption and use of the AOL and AOL.COM marks; (2) the services and information provided by Respondent at its web site are nearly identical to those provided by Complainant at its online financial page; (3) Respondent has registered numerous other domain names that infringe upon famous marks, including , , , and ; and (4) Respondent refused to transfer the disputed domain name, requested that AOL pay a premium in stock or cash to resolve the matter, and failed to terminate its site after receiving letters from Complainant's counsel that explained AOL's rights in the marks AOL and AOL.COM.
In its Response, Respondent contends that: (1) the disputed domain name is not identical nor confusingly similar to a trademark or service mark in which AOL has rights; (2) it has a right or legitimate interest in respect of the domain name because it is in the business of providing investment and trading advice on stocks, options and mutual funds; and (3) the domain name was not registered and is not being used in bad faith because Respondent is not trying to divert clients from the America Online site of AOL.COM and Respondent posted a notation on its web site stating that "This site is not affiliated with American Online."
According to Respondent, "My site is a place where someone who is interested in trading the America Online stock via a brokerage transaction can come to me for advice on what the best available purchase/sale price may be at the time. Therefore, because I trade the stock AOL, I bought the domain name ."
Respondent further argues that the parties' web sites are not confusingly similar since it is not in the business of advertising or selling Internet computer-related services.
6 . Discussion and Findings
The Panel has carefully reviewed the evidence presented and determines that Complainant has not met all the requirements set forth in para. 4.a. of the Policy.
First, there is no question that the domain name in dispute is confusingly similar to Complainant's AOL and AOL.COM marks. (Footnote 1) The inclusion of the generic term "trader" in Respondent's domain name is without legal significance.
It is also clear that Complainant, through its long use of, and registrations covering, the AOL and AOL.COM marks, has rights in the marks.
However, the Panel determines that Respondent has rights or legitimate interests with respect to the domain name. More specifically, the Panel finds, based on the above-recited facts, that, prior to notice to Respondent of this dispute, Respondent used the domain name in connection with a bona fide offering of services, i.e., online stock brokerage services, within the meaning of para. 4.c.(i) of the Policy. (Footnote 2) The Panel further concludes that Respondent is making a "fair use" of the disputed domain name, within the meaning of para. 4.c.(iii) of the Policy. The evidence indicates that consumers may trade in AOL stock at Respondent's web site. Thus, Respondent's use of the domain name appears to be merely descriptive of the services offered by Respondent. Further, Respondent's disclaimer on its web site of any affiliation with Complainant supports a determination of "good faith," for purposes of application of the "fair use" doctrine. See 15 U.S.C. �1115(4).
While the Panel's finding on the issue of "rights or legitimate interests" is dispositive of the instant matter, for the sake of completeness, it will address the issue of "bad faith" registration and use. The Panel finds that there is evidence of "bad faith" registration and use. In particular, Respondent concedes in his Response that he offered to sell the domain name to Complainant for $5,000, which is far in excess of his documented out of pocket expenses directly related to the domain name, within the meaning of para. 4.b.(i) of the Policy.
In the Panel's view, however, such a finding does not detract from the fact, as determined above, that Respondent used the domain name in connection with a bona fide offering of services, within the meaning of para. 4.c.(i) of the Policy. Pursuant to para. 4.c. of the Policy, such circumstance "shall demonstrate" one's rights or legitimate interests to the domain name. (emphasis added). The Policy is clear that "the complainant must prove that each of these three elements [i.e., confusing similarity, no rights or legitimate interests, and bad faith] are present." This it has failed to do.
7. Decision
In view of the above, the Panel DENIES Complainant's request for transfer to it of the domain name .
Jeffrey M. Samuels
Sole Panelist
Dated: January 25, 2001
Footnotes:
1. The Panel emphasizes that the issue of whether a domain name is identical or confusingly similar to a mark in which Complainant has rights, under para. 4.a.(i) of the Policy, is different than whether a likelihood of confusion exists. Whether a likelihood of confusion exists, which must be determined in the context of the goods and services upon which the parties' marks and domain name are used, is beyond the purview of the Panel. Thus, the parties' arguments with respect to the issue of likelihood of confusion are not relevant to the instant proceeding.
2. It should be noted that a finding of legitimate right to a domain name means only that the streamlined dispute-resolution procedure is not available and that the dispute is a "legitimate" one that should be decided by the courts. Even though the dispute is "legitimate," the domain name holder's rights may not ultimately prevail over a trademark in court. See Second Staff Report on Implementation Documents for Uniform Dispute Resolution Policy.
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