WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
American Online Inc. v. Daniel Mullen dba MSN and MSN Networks
Case No. D2000-1605
1. The Parties
The Complainant is American Online Inc. of 22000 AOL Way Dulles, Virginia 20166 U.S.A.
The Respondent is Daniel Mullen dba MSN and MSN Networks PO Box 1900, Charlottetown, PE C1A 7N5, Canada .
2. The Domain Name and Registrar
The Domain Names are and .
The Registrar is Internet Domain Registrars.
3. Procedural History
The Complaint was filed on November 20, 2000. WIPO verified that the Complaint satisfies the Rules and the Supplemental Rules and that payment was properly made. The panelist is satisfied this is the case.
The Complaint was properly notified in accordance with Rules, paragraph 2 (a). No Response was filed by the Respondent. The Respondent is in default.
The administrative panel was properly constituted. The undersigned panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence.
No further submissions were received by WIPO or the Panel as a consequence of which the date scheduled for the issuance of the Panel�s decision was January 25, 2001.
4. Factual Background
The Complainant is the owner of registered trade marks for AOL worldwide, including the USA and Canada.
5. Parties� Contentions
A. Complainant
This complaint states:
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, and Canadian registration No. TMA493161 (evidence of U.S. trademark registrations are included under Annex B). AOL registered and uses its AOL mark 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."
As part of its online service, AOL provides news and current events information to its subscribers and Internet users.
AOL also uses the mark AOL.COM as a domain name for its portal Web site. AOL owns federal trademark registration Nos. 2,325,291 and 2,325,292 for the mark AOL.COM. The mark AOL is used extensively at this portal Web site, which is a significant method of promoting AOL's service. As a result, consumers associate the mark AOL, when used in a domain name, with AOL's services.
Long prior to Respondent�s registration of the domain names and , and at least as early as 1989 for the mark AOL and 1992 for the mark AOL.COM, AOL adopted and began using its marks in connection with computer online services and other Internet-related services. 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.
AOL has invested substantial sums of money in developing and marketing its services and marks.
With over twenty three million subscribers, 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 and AOL.COM marks; millions more are exposed to said marks through advertising and promotion.
The AOL and AOL.COM marks have been and continue to be widely publicized through substantial advertising throughout the United States and the world. Many millions of dollars have been spent in connection with such advertising, which has been disseminated through network and cable television programs, radio broadcasts, and in print media including newspapers and periodicals.
Sales of services under the AOL and AOL.COM marks have amounted to many billions of dollars. As a result, the general public has come to associate the AOL name and marks with services of a high and uniform quality.
Because of these substantial advertising expenditures and sales, the distinctive AOL and AOL.COM marks have become well-known and famous among members of the purchasing public.
On February 11, and March 7, 2000, long after AOL's adoption and first use of the AOL and AOL.COM marks, Respondent registered the domain names and .
The domain names and are nearly identical and confusingly similar to the AOL and AOL.COM marks. Consumer confusion is particularly likely because Respondent is using the mark AOL in connection with the common words "instant" and "world". Consumers, therefore, are likely to believe falsely that AOL is affiliated with, or endorses the operator of the domain name or Web site. Moreover, the domain name routes to a Web site that makes prominent use of AOL�s marks.
Respondent registered and used the domain name with a bad faith intent to capitalize on the famous AOL and AOL.COM marks and profit from the international and domestic goodwill AOL has built up in its famous marks. Respondent registered the domain name with the bad faith intent to prevent AOL from registering a domain name that incorporates its famous mark.
Respondent has no rights or legitimate interests with respect to the domain names and . The following is evidence of Respondent�s bad faith registration and use of the domain names:
(a) Respondent�s bad faith registration of and is evidenced by the fact that it registered the domain names many years after AOL's adoption and first use of the AOL and AOL.COM marks and long after the AOL mark was registered in the United States.
(b) Respondent�s bad faith use of is evidenced by its use of the domain name in connection with a commercial Web site that provides current events and news, as well as links to AOL�s Web site. The news and current events provided by Respondent at the "" Web site are identical to the types of news services provided by AOL.
(c) Respondent�s bad faith intent is further evidenced by its pattern of registering domain names that infringe upon the AOL mark. Respondent�s registration of and demonstrates that Respondent registered these domains for the bad faith purpose of preventing AOL from using its mark in domain names. This pattern of registering AOL domain names is evidence of bad faith registration and use of the domain names under ICANN Rule 4(b)(ii).
(d) Counsel for AOL sent Respondent several letters that set forth AOL�s rights in its AOL marks and requested that Respondent cease using any domain names that infringe upon the AOL mark. Respondent�s bad faith intent is shown by his refusal to transfer the domain name and his continued use of "" in connection with a commercial Web site.
(e) Based upon the fame of AOL's marks, and AOL's numerous trademark registrations for the AOL and AOL.COM marks, as well as Respondent�s use of the AOL marks at his Web site and his pattern of registering infringing AOL domains, Respondent cannot, in good faith, claim that it had no knowledge of AOL's rights in its very famous AOL and AOL.COM marks. Furthermore, Respondent cannot claim, in good faith, that he made a legitimate noncommercial or fair use of the domain name, or that he is commonly known by the name AOL.
B. Respondent
The Respondent has not filed a Response and is in default.
6. Discussion and Findings
According to paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy, the Complainant must prove that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The Domain Name has been registered and is being used in bad faith.
A. Identical or confusing similarity
It is prima facie obvious that the Domain Names contain, and for practical purposes consist, of the Complainant�s famous AOL trade mark. The inclusion of the common words "instant" and "world" does not affect the finding that they are confusingly similar to the Complainant�s mark.
B. Rights or Legitimate Interests of the Respondent
The Respondent has not filed a Response and does not appear to have any rights or legitimate interests in the Domain Names.
C. Bad Faith
Paragraph 4 (b) of the Rules sets out four non exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including
"[the Respondent] has registered the domain name primarily for the purpose of disrupting the business of a competitor;" and
"by using the domain name [the Respondent] has intentionally attempted to attract, for commercial gain, Internet users to [its] web site or other on line location, by creating a likelihood of confusion with the Complainant�s mark as to the source, affiliation or endorsement of [its] web site or location or of a product or service on [its] web site or location."
In the absence of a Response from the Respondent and in the light of its use of the Domain Names to provide identical or similar services for which the Complainant�s AOL trade mark is registered, there appears to be no explanation other than that the Respondent registered the Domain Names in bad faith with an intent to use the Domain Names to attract business to its competing site or to disrupt the business of the Complainant.
7. Decision
In the light of the foregoing, the panelist decides that the Domain Names are confusingly similar to the Complainant�s trade mark and the Respondent has no rights or legitimate interests relating to the Domain Names which were registered and used in bad faith.
Accordingly, in the light of the above, the panelist requires that the registration of the Domain Names and be transferred to the Complainant.
Dawn Osborne
Sole Panelist
Dated: January 25, 2001
Full & Egal Universal Law Academy