WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
America Online, Inc. v. Steven S. Lalwani
Case No. D2001-0835
1. The Parties
The Complainant is America Online, Inc., a corporation organized in the State of Delaware, United States of America (USA), with place of business in Dulles, Virginia, USA.
The Respondent is Steven S. Lalwani, with address in Upper Montclair, New Jersey, USA.
2. The Domain Name and Registrar
The disputed domain name is .
The registrar of the disputed domain name is Network Solutions, Inc., with business address in Herndon, Virginia, USA.
3. Procedural History
The essential procedural history of the administrative proceeding is as follows:
(a) The Complainant initiated the proceeding by the filing of a complaint via e-mail, received by the WIPO Arbitration and Mediation Center ("WIPO") on June 28, 2001 and by courier mail received by WIPO on July 2, 2001. Payment by Complainant of the requisite filing fees accompanied the courier mailing. On July 3, 2000, WIPO transmitted a Request for Registrar Verification to the registrar, Network Solutions, Inc. (with the Registrar�s Response received by WIPO on July 6, 2001).
(b) On July 9, 2001, WIPO transmitted notification of the complaint and commencement of the proceeding to Respondent via e-mail, telefax and courier mail.
(c) On July 19, 2001, Respondent�s response was received via e-mail by WIPO. Respondent also transmitted its response to Complainant.
(d) On July 20, 2001, Complainant transmitted to WIPO and Respondent via e-mail a self-styled Rebuttal by Complainant to Identify Misleading and Untrue Claims Made In Response.
(e) On July 22, 2001, Respondent transmitted via e-mail to WIPO and Complainant a denial of allegations set forth in Complainant�s supplemental submission.
(f) On July 24, 2001, WIPO invited the undersigned to serve as panelist in this administrative proceeding, subject to receipt of an executed Statement of Acceptance and Declaration of Impartiality and Independence ("Statement and Declaration"). On August 2, 2001, the undersigned transmitted via telefax the executed Statement and Declaration to WIPO.
(g) On August 3, 2001, Complainant and Respondent were notified by WIPO of the appointment of the undersigned sole panelist as the Administrative Panel (the "Panel") in this matter. WIPO notified the Panel that, absent exceptional circumstances, it would be required to forward its decision to WIPO by August 17, 2001. The Panel received a hard copy of the file in this matter by courier from WIPO.
(h) Following notification from the Panel of circumstances requiring an extension of the date for decision in this matter, WIPO notified the parties that the projected date for a decision would be extended until August 31, 2001.
The Panel has not received any requests from Complainant or Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties. The proceedings have been conducted in English.
4. Factual Background
Complainant has registered the typed-drawing service mark "AOL" on the Principal Register of the U.S. Patent and Trademark Office ("USPTO"), Reg. No. 1977731, dated June 4, 1996, covering, inter alia, telecommunications services, computer services and electronic storage and retrieval of data and documents (Complaint, para. V.1 & Annex B). Complainant has also registered the typed-drawing service mark "AOL" on the Principal Register of the USPTO, Reg. No. 1984337, dated July 2, 1996, covering, inter alia, computer operating programs and computer operating systems (id.). Complainant has registered the typed-drawing service mark "AOL.COM" on the Principal Register of the USPTO, Reg. No. 2325291, dated March 7, 2000, covering, inter alia, computer services (id., para V.2 & Annex C). Complainant has also registered the typed-drawing service mark "AOL.COM" on the Principal Register of the USPTO, Reg. No. 2325292, dated March 7, 2000, covering, inter alia, telecommunications services (id.).
Use of the "AOL" mark was initiated by Complainant at least as early as 1989, and use of the "AOL.COM" mark was initiated at least as early as 1992 (id., para. V.3). Complainant�s services are advertised and sold in the United States and elsewhere under the "AOL" and "AOL.COM" marks, and Complainant maintains a website at "". Complainant operates the most widely-used interactive online service in the world (Complaint, para. V.5). Complainant�s "AOL" and "AOL.COM" marks are widely used and well known among Internet users throughout the world.
This sole panelist has in previous administrative proceedings involving Complainant determined that Complainant holds rights in the service mark "AOL", that said mark is used in commerce and well-known among consumers and users of the Internet throughout the world [1].
According to the registrar�s verification response to WIPO, dated July 6, 2001, "Steven S. Lalwani" is the listed registrant of the domain name . The Administrative Contact, at the same address, is "Lalwani, Steven". According to a Network Solutions� WHOIS database printout submitted by Complainant, the record of registration for the disputed domain name was created on June 23, 2000, and was last updated on June 8, 2001 (Complaint, Annex F).
A printout of the home page identified by the Internet address (URL) dated June 19, 2001, shows the heading "tmi Telecom Marketing, Inc.", underneath which appears "WE OFFER THE CHEAPEST WORLDWIDE PHONE RATES FOR YOUR HOME AND BUSINESS!". This is followed by further promotional information and links to additional web pages where Internet users may subscribe for the services offered. (Id., Annex D). Complainant has also submitted an identical home page printout dated April 16, 2001. This printout is identified by the URL incorporating a domain name registered by Respondent to which the disputed domain name was directed. (Complainant�s Rebuttal)
As of July 8, 2001, the disputed domain name was directed to a website identified by the URL (WIPO case file printout). The home page of this website begins with the statement "Dear fellow Indians Abroad On Line" (the full text of the statement is not contained within the printout format). This website contains links to various news information services, as well as advertisement of long distance telephone services. The domain name is registered to Respondent (Panel WHOIS research of Sept. 2, 2001). The record for this registration was created on August 7, 1999. Respondent has also registered the domain name , the record for which was created on May 27, 1997 (id.). Respondent asserts that he activated the news service "IndiaH" on May 27, 1997. (Response)
Respondent asserts that since 1998 he has been advertising various products and services on a website identified by the domain name that is owned by another party. (Response) He indicates that in 1999 a change of ownership of that domain name resulted in the removal of his advertisements, and prompted his registration of .
Respondent refers to and submits pages from a newspaper named "India Abroad" founded in 1970, and calls this "our associate newspaper". Respondent provides no indication or evidence of a business link between him and that newspaper. He states "in 2000, we expanded services to 7 Asian countries". Respondent refers to and submits pages from a newspaper named "Asian Seven", in which "Dr. Steven Lalwani" is listed as a member of the board and managing editor. (Response)
Respondent indicates that since 1995 he and his business associates have provided a toll-free telephone number (1-800-US-INDIA) that provides news and services to Indians living in the United States. He indicates "We have been providing products and services to Indians abroad, much before AOL.com existed. IAOL.net is the most appropriate and logical name that identifies our target market on line." (Id.)
Respondent denies that the website identified by has been modified since the initiation of this proceeding. According to Respondent, "During the period from February 14, 2001 till July 10, 2001 our Internet Service Provider who hosts all of our web sites had problems with his old server. At times, during this period, our ISP was pointing to our other web site in order that our patrons do not get errors when logging on to . Our ISP has now completed moving all 15 web sites to a new server. I am providing evidences as attachments here, that clarifies the confusion." (Respondent�s Supplemental Response) The evidence submitted by Respondent consists of an e-mail to users which indicates that IndiaH began using an upgraded server on or about July 11, 2001. There is some additional e-mail correspondence between Respondent and his Internet service provider. While there is one reference to "avoid[ing" problems that you are experiencing with your old server" on May 23, 2001, the messages do not identify a particular set of difficulties.
Respondent has previously been found to have engaged in abusive domain name registration and use (Bennett Coleman & Co Ltd. v. Steven S Lalwani and Bennett Coleman & Co Ltd. v. Long Distance Telephone Company, WIPO Case No. D2000-0014 and 2000-0015, decided March 11, 2000, regarding and (Complaint, Annex H). Domain names currently registered to Respondent include and (WHOIS database printout, June 19, 2001, id., Annex G).
On May 24, 2001, Complainant (via counsel) sent a cease and desist and transfer demand to Respondent, which was followed on June 15, 2001, by request for a response. Complainant asserts that Respondent called its counsel and claimed that is an acronym for Indians Abroad Online. According to Complainant, Respondent was unable to explain why his website made no reference to IAOL or Indians Abroad Online. (Complaint, para. 12(c)).
The Service Agreement in effect between Respondent and Network Solutions subjects Respondent to Network Solutions� dispute settlement policy, the Uniform Domain Name Dispute Resolution Policy, as adopted by ICANN on August 26, 1999, and with implementing documents approved by ICANN on October 24, 1999. The Uniform Domain Name Dispute Resolution Policy (the "Policy") requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which WIPO is one, regarding allegations of abusive domain name registration (Policy, para. 4(a)). Respondent has not contested that it is properly before this Administrative Panel.
5. Parties� Contentions
A. Complainant
Complainant states that it has rights in the service marks "AOL" and "AOL.COM", and that such marks are well known among Internet users (see Factual Background, supra).
Complainant asserts that the disputed domain name is confusingly similar to its mark. Complainant indicates that "Consumer confusion is particularly likely because Respondent is using the very famous and distinctive mark AOL with the prefix letter �i� which has become widely recognized as a symbol for �I�nternet e-commerce (e.g., is used for Internet banking; for Internet business services, etc.). See also WIPO Case No. D2001-0102 ( infringes upon NIKE); WIPO Case No. D2000-0802 ( infringes upon TOYOTA); WIPO Case No. D2000-1166 ( infringes upon NINTENDO); NAF FA0097257 ( infringes upon BLOOMBERG). Moreover, Respondent is using the domain name to promote his telecommunications business. As noted above, Complainant�s AOL mark is registered in International Class 38 for telecommunications services."
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name because it was registered after Complainant�s mark had become famous, and because Respondent has used it to promote his own telecommunications business. Complainant asserts that Respondent�s website identified by the disputed domain name makes no reference to "AOL" or "IAOL".
Complainant contends that Respondent�s claim that "iaol" stands for Indians Abroad Online is an ex post facto effort to justify bad faith conduct. This is evidenced by the lack of reference on his website to Indians Abroad Online.
Complainant asserts that Respondent has engaged in a pattern of trademark infringement, preventing the owners of well known marks from reflecting them in domain names.
Complainant asserts that Respondent is using its trademark to divert Internet traffic to his own commercial website.
Complainant claims that following the initiation of this proceeding, Respondent modified his website to remove references to TMI � Telecom Marketing, Inc., and to add references to Indians Abroad Online. Complainant asserts that such action is evidence of Respondent�s bad faith.
Complainant requests the Panel to direct the registrar to transfer the disputed domain name to it.
B. Respondent
Respondent does not deny Complainant�s rights in or the well-known character of the "AOL" mark. Respondent asserts that is not confusingly similar to . He states "No patron of AOL.Com in right mind will use to log on to AOL.com. Therefore, there is no confusion."
Respondent denies that is used to promote telecommunications services, but instead is used to provide information and "many more services".
Respondent asserts that " stands for and reflects more generally, Indians Abroad On Line and on net and more specifically, Indian Americans On Line. This is my target market and therefore, the domain name is very appropriate and legitimate."
Respondent indicates that the URL "takes you to IndiaHeadlines news and services targeted to Indians Abroad. Last year�s traffic to this site was close to a half million visitors�. Taking away is like depriving our loyal patrons from India from staying in touch with their motherland and of feeling at home when away from home in an easy, free and a fast way."
Respondent denies any bad faith in registering the disputed domain name. He indicates that it was unclear prior to the adoption of the Policy if trademark regulation would apply to the Internet, and that "I have returned any domain names to the organizations who have valid claims and have asked for it. In this case, the claims by AOL are not valid. AOL is illegally trying to extend its trademark rights beyond its scope."
Respondent further states regarding the allegation of bad faith: "Our domain is familiar only to Indians and is not marketed to or used by people of other nationalities. Therefore, there have never been any bad intentions on my part to profit from the letters, A O L. No true evidence has been provided by the complainant to validate this claim. The burden of proof beyond a reasonable doubt of our bad intentions rests on the complainant. On the contrary, I believe I have provided the panel beyond a reasonable doubt that our intentions have been innocent and good in the use of for providing free services to Indians Abroad. We have proved that my domain, is appropriate to our business and we have used it in good faith."
Regarding denies Complainant�s claim that it modified the website identified by the URL "www." subsequent to the initiation of this proceeding. Respondent asserts that from February 14, 2001, until July 10, 2001, his internet service provided was experiencing difficulties, and "At times, during this period, out ISP was pointing to our other website, in order that our patrons do not get errors when logging on to . Our ISP has now completed moving all our over 15 web sites to a new server."
6. Discussion and Findings
The Uniform Domain Name Dispute Resolution Policy (the "Policy") adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999, (with implementing documents approved on October 24, 1999), is addressed to resolving disputes concerning allegations of abusive domain name registration. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy, and the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), establish procedures intended to assure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., paragraph 2(a), Rules).
In this case, the Panel is satisfied that WIPO took all steps reasonably necessary to notify the Respondent of the filing of the complaint and initiation of these proceedings. Respondent has filed a detailed response to the complaint indicating that he received notice and was afforded an adequate opportunity to respond.
As a preliminary matter, the Panel has decided to accept the supplemental submissions of Complainant and Respondent. Complainant�s Rebuttal is directed to drawing the Panel�s attention to changes it alleges that Respondent made to its website identified by the disputed domain name subsequent to filing of the complaint. The actions alleged by Complainant could not reasonably have been foreseen by it at the time of its initial filing, and the Panel considers it appropriate to consider its allegations regarding newly arising facts. The Panel also considers it appropriate to accept and consider Respondent�s explanation and evidence regarding Complainant�s allegations.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:
(i) Respondent�s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) Respondent�s domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
Complainant has established rights in the "AOL" and "AOL.COM" marks as evidenced by registration and extensive use. Such marks are well known among Internet users. Respondent does not dispute that Complainant has rights in the "AOL" marks or that such marks are well known.
There is question as to whether the disputed domain name is confusingly similar to Complainant�s "AOL" and "AOL.COM" marks. Clearly, the disputed domain name directly incorporates the acronym "AOL" which is well known to identify Complainant. Complainant asserts that the prefix "i" has become commonly understood to refer to "Internet" as in "ibank", and that addition of the prefix "i" to its mark promotes Internet user confusion. While "i" might indeed be understood in this way in respect to a common descriptive or generic word such as "bank" or "business", and even as to a mark consisting of a descriptive or arbitrary term (including Complainant�s cited "itoyota" and "inike"), it is not so clear that it serves that function when combined with an acronym such as "AOL" standing for "America Online". There are many combinations of words that might be represented by the acronym "iaol" and as to which the "i" would bear no relation to the Internet. For example, "i" is the first letter of the term "international". Consider the possible acronym for an "International Association of Lawyers", or another international group identified by the letter "L". The letter "i" as the first symbol of an acronym does not appear to bear a special relationship to "Internet", or at least not one so clear that it may not be explained when used in another context.
Nonetheless, "AOL" as an acronym has achieved the status of a well-known mark. Consumers viewing the name "" may well confuse it with "AOL", regardless whether the "i" is understood to stand for "Internet", "international", "information" or "India". In light of the inherent risk of Internet user confusion, it is appropriate to inquire as to Respondent�s motivation for registering and using the disputed domain name. The intention of the party adopting a term is relevant to a determination of confusing similarity. If the term was adopted with the deliberate intention to capitalize on a well known mark, that argues in favor of finding confusing similarity [2].
It is apparent that Respondent has been involved in businesses in which India figures prominently since substantially before he registered the disputed domain name, and before "AOL" became as well known as it is today. For example, he registered and used the domain name in 1997 to identify a news service.
"India" begins with the letter "i", and "Indians Abroad" is plausibly a term that could be used to identify an online service, resulting in the acronym "iaol". However, Respondent used the domain name, that plausibly represents "Indians Abroad Online", to direct Internet users to a long distance telephone service business, "TMI � Telecom Marketing, Inc.", whose website contained no reference to "Indians Abroad Online" or "IAOL". This was the case both as of April 16, 2001, and June 19, 2001. This suggests that Respondent registered and was using in efforts to divert Internet users to a commercial website by using Complainant�s well-known mark up until this proceeding was initiated.
Complainant filed its complaint electronically on June 28, 2001, at which time Respondent received notice of the initiation of the proceeding. Respondent discontinued using the domain name to direct Internet users to its telephone service site on or before July 8, 2001 (the date on which WIPO created its file record of the site identified by the disputed domain name). Respondent asserts that his server upgrade took place on or about July 10, 2001.
Respondent has explained his direction of the disputed domain name to the telephone service marketing site by reference to technical difficulties affecting his internet service provider (ISP). However, the evidence provided on this account is unconvincing. Respondent claims that in order to avoid difficulties with his ISP�s server, he directed to his other website so that customers did not experience difficulties logging on to the disputed domain name. However, in his e-mail to the ISP dated May 23, 2001, he observes that his website is active as well as his website, and there is no explanation why could not just as well have been directed to his news service website (as it was following the initiation of this proceeding) as his telephone marketing website.
A review of the evidence suggests that Respondent in fact registered and used the disputed domain name to direct Internet users to a commercial website by using Complainant�s well known mark, and that his reference to "Indians Abroad Online" was adopted as an ex post facto explanation for this course of conduct. In so finding, the Panel takes the view that was adopted to capitalize on Complainant�s mark, and in this context is confusingly similar to Complainant�s mark.
Respondent�s observation that Internet users would not use the URL to reach Complainant�s website does not adequately address the issue of Internet user confusion. Respondent�s use of the "AOL" mark in is likely to lead Internet users to conclude that his website and business are associated with Complainant. Internet users expect that services identified by Complainant�s mark will in fact be provided by or sponsored by Complainant, and Internet users will be mislead as a consequence of Respondent�s identification with Complainant. This improperly takes advantage of Complainant�s rights in its mark.
Complainant has met the burden of proving that Respondent is the registrant of a domain name that is identical or confusingly similar to a service mark in which the Complainant has rights, and it has thus established the first of the three elements necessary to a finding that Respondent has engaged in abusive domain name registration and use.
The second element of a claim of abusive domain name registration and use is that the respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
"Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii)
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue." (Policy, paragraph 4(c))".
Respondent has claimed that incorporates an acronym for "Indians Abroad Online", and in this sense that he has been commonly known by the domain name. However, there is no evidence that Respondent has been known by the "Indians Abroad" name. He has submitted pages from a newspaper named "India Abroad", but nothing to indicate that there is connection between him and that paper. Instead, he has submitted evidence that he is connected with a newspaper named "Asian Seven", and merely stated that the former paper is "our associate newspaper". In light of the fact that Respondent has previously been found to have engaged in abusive domain name registration and use in connection with the names of other periodicals, the Panel is not inclined to accept Respondent�s mere assertion that he is directly connected with the "India Abroad" newspaper such that he might be considered commonly known by that name.
Respondent has failed to establish rights or legitimate interests in the disputed domain name. Thus, Complainant has established the second element necessary to prevail on its claim that Respondent has engaged in abusive domain name registration and use.
The Policy indicates that certain circumstances may, "in particular but without limitation", be evidence of bad faith (Policy, paragraph 4(b)). Among these circumstances are (1) that a respondent has registered the domain name "in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct" (id., paragraph 4(b)(ii)), and (2) that a respondent "by using the domain name, � [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, sponsorship, affiliation, or endorsement of [respondent�s] web site or location of a product or service on [its] web site or location" (id., paragraph 4(b)(iv)).
The Panel has determined that the disputed domain name is confusingly similar to Complainant�s mark. A substantial element of that determination is that Respondent registered and used the disputed domain name for the purpose of directing Internet users to his commercial website by creating confusion regarding Complainant�s sponsorship of or affiliation with that site. This conduct constitutes bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
Respondent�s registration of precludes Complainant from using its mark in that same name. Respondent has also registered the well-known marks "Financial Times" and "Yahoo" in the domain names and . This reflects a pattern of such conduct, and constitutes bad faith within the meaning of paragraph 4(b)(ii) of the Policy.
Complainant has established the third and final element necessary for a finding that the Respondent has engaged in abusive domain name registration and use.
The Panel will therefore request the registrar to transfer the domain name to the Complainant.
7. Decision
Based on its finding that the Respondent, Steven S. Lalwani, has engaged in abusive registration and use of the domain name within the meaning of paragraph 4(a) of the Policy, the Panel orders that the domain name be transferred to the Complainant, America Online, Inc.
Frederick M. Abbott
Sole Panelist
Dated: September 2, 2001
Footnotes:
1. America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713, decided August 24, 2000, and America Online, Inc. v. John Zuccarini, also known as Cupcake Message, Cupcake Messenger, The Cupcake Secret, Cupcake Patrol, Cupcake City, and The Cupcake Incident, WIPO Case No. D2000-1495, decided January 22, 2001.
2. See Brookfield Communications v. West Coast Entertainment, 174 F.3d 1036, 1059 (9th Cir. 1999), citing, e.g., Pacific Telesis v. International Telesis Comms., 994 F.2d 1364, 1369 (9th Cir. 1993).
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