America Online, Inc. v. Intellectual-Assets.Com, Inc.

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE PANEL DECISION

America Online, Inc. v. Intellectual-Assets.com, Inc.

Case No. D2000-1043

1. The Parties

The Complainant is America Online, Inc., a corporation organized in the state

of Delaware, United States of America (USA), with a principal place of business

in Virginia therein.

The Respondent is Intellectual-Assets.com, Inc., with an address in Atlanta,

Georgia, USA.

2. The Domain Name and Registrar

The disputed domain name is "<american-online.net.

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:

Complainant initiated the proceeding by the filing of a complaint via e-mail,

received by the WIPO Arbitration and Mediation Center ("WIPO") on

August 14, 2000, and by courier mail received by WIPO on August 16, 2000. Payment

by Complainant of the requisite filing fees accompanied the courier mailing.

On August 24, 2000, WIPO completed its formal filing compliance requirements

checklist.

On August 31, 2000 WIPO transmitted notification of the complaint and initiation

of the proceeding to Respondent via e-mail and registered priority air mail.

This date represents the commencement of this administrative proceeding (Rules

for Uniform Domain Name Dispute Resolution Policy, para. 4(c)). WIPO transmitted

notification of the complaint to ICANN, Network Solutions, and Complainant’s

authorized representative.

On September 21, 2000, WIPO transmitted notification to Respondent of its default

in responding (to the Complaint transmitted on August 31, 2000) by registered

priority air mail and e-mail.

On October 2, 2000, 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 October

16, 2000, which date was extended.

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 (taking

note of Respondent’s default in responding to the complaint). The proceedings

have been conducted in English.

4. Factual Background

Complainant claims that it owns numerous trademark registrations worldwide

for the mark AMERICA ONLINE, including U.S. Registration No. 1,618,148, registered

on October 16, 1990. (Complainant’s Annex Exhibit B) The registration relates

to the services of "leasing access time to a computer data base in the

field of news, sports, financial, entertainment, and educational information."

Complainant operates a website found at the domain name <americaonlin.com>

(Complainant’s Annex Exhibit C) These claims are uncontroverted here.

Network Solutions’ WHOIS database query response indicates that Intellectual-Assets.com,

Inc., with Administrative Contact Bruce Martin (BM16461), is the registrant

of the domain name <american-online.net>. (Complainant’s Annex Exhibit

D) The record of this registration is shown as having been created on September

25, 1999.

The Service Agreement in effect between Respondent and Network Solutions subjects

Respondent to Network Solutions’ dispute settlement policy, which as of that

date is the Uniform Domain Name Dispute Resolution Policy, as adopted by the

Internet Corporation for Assigned Names and Numbers ("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 contends that Respondent has registered a domain name which is

confusingly similar to the service mark registered and used by Complainant,

that Respondent has no rights or legitimate interests in respect to the domain

names at issue, and that Respondent has registered and is using the domain name

at issue in bad faith.

Complainant contends that it has adopted and used the mark AMERICA ONLINE continuously

and extensively in connection with the advertising and sale of computer online

services and other Internet-related services in interstate and international

commerce since 1989. (Complaint, para. 12.3)

Complainant states that it has invested substantial sums of money in developing

and marketing its services and marks. Complainant asserts that it operates the

most widely used interactive online service in the world comprised of over twenty-three

million subscribers, with millions more exposed annually to the AMERICA ONLINE

mark through advertising and promotions. (id., para. 12.4 and para. 12.5)

Complainant states that it has expended many millions of dollars in publicizing

the AMERICA ONLINE mark through substantial advertising throughout the United

States and the world. (id., para. 12.6) Complainant maintains that sales

of services under the AMERICA ONLINE mark have amounted to many billions of

dollars and, as a result, the general public has come to associate the mark

with services of a high and uniform quality. (id., para. 12.7) Due to

these significant sales of service and because of substantial investment in

advertising, Complainant contends that the AMERICA ONLINE mark has become well-known

and famous among members of the purchasing public. (id., para. 12.8)

Complainant avers that Respondent’s domain name <american-online.net>

is nearly identical and confusingly similar to the AMERICA ONLINE mark. Complainant

asserts that Respondent has registered and used the domain name <american-online.net>

in bad faith for purposes of capitalizing on the famous AMERICA ONLINE mark

and profiting from the international and domestic goodwill Complainant has built

up in its mark. (id., para. 12.10 and para. 12.11)

Complainant contends Respondent’s bad faith use of the domain name is evidenced

by the fact that the domain name was registered on September 25, 1999, long

after Complainant’s adoption and first use of the AMERICA ONLINE mark and long

after the mark was registered by Complainant in the United States. (id.,

para. 12.12(a))

Complainant believes Respondent’s bad faith is further evidenced by its offer

to sell the domain name to Complainant for $1,000,000 (one million U.S. dollars)

after having received a "cease and desist letter" from Complainant.

(id., para.12.12 (b)) Respondent’s bad faith is further evidenced, Complainant

maintains, by the use of <american-online.net> as a commercial website

that promotes Respondent’s financial services (id., para. 12.12 (c) and

Complainant’s Annex Exhibit G) and by Respondent’s pattern of registering domain

names that infringe other famous marks, such as "jeep-4x4.com" and

"visa-cards.com". (id., para. 12.12(d) and Complainant’s Annex

Exhibit H)

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Because Respondent has defaulted on its obligation under Paragraph 5 of ICANN

Rules for Uniform Domain Name Dispute Resolution Policy to respond to the Complaint

and meet its allegations with specificity, certain factual conclusions may be

drawn by the Panel on the basis of Complainant’s undisputed representations.

In the absence of direct evidence, the panel must resort to reasonable inferences

from whatever evidence is in the record.

Paragraph 4(a) of the Policy instituted three elements that must be established

by a complainant to merit a finding that a respondent has engaged in abusive

domain name registration, 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 Complainant has rights; and

(ii) respondent has no rights or legitimate interests in respect to the domain

name; and

(iii) respondent’s domain name has been registered and is being used in bad

faith.

Each of these three elements must be proved by a complainant to obtain relief.

Paragraphs 4(b) and 4(c) of the Policy provide further nonexclusive criteria

for determining whether Registrant has engaged in abusive domain name registration

with respect to subparagraphs 4(a)(ii) and 4(a)(iii).

Because Respondent has defaulted in providing a response to the allegations

of Complainant, certain factual conclusions may be drawn by the Panel on the

basis of Complainant’s undisputed representations, and Respondent’s failure,

after notice, to respond.

A. Identity of Respondent’s Domain Name and Complainant’s Trademarks

The Panel finds that Complainant has rights in the service mark AMERICA ONLINE

for a variety of Internet and computer-related services, based on Complainant’s

uncontroverted claims of first use and adoption of the mark as early as 1989,

and Complainant’s registration of the mark on October 16, 1990 in the United

States Patent and Trademark Office, and Complainant’s claimed continued use

of the mark thereafter. The Panel determines that Complainant’s rights in the

mark arose long prior to Respondent’s September 25, 1999 registration of the

disputed domain name <american-online.net>.

The Panel further finds that Respondent’s domain name <american-online.net>

is confusingly similar to Complainant’s mark. "AMERICA ONLINE" could

reasonably be misspelled as "AMERICAN ONLINE." Whether this be a misspelling

or "typosquatting" (or typo-squatting) need not be determined. Furthermore,

computer users could reasonably confuse the domain name <american online>

with >america.online> while looking for Complainant’s website, since Complainant

provides Internet-related services.

Given the phonetic similarity of the domain name and the mark, the Panel finds

that Respondent’s domain name <american-online.net> and Complainant’s

name and trademark AMERICA ONLINE are sufficiently confusingly similar, particularly

here where Respondent has provided no evidence or reason to suggest any weakness

of Complainant’s name, or trademark use by others, or other evidence of a lack

of similarity.

Thus, the Panel finds for the Complainant on the first element.

B. Respondent’s Rights or Legitimate Interests in the Domain Name

The Panel next determines whether Respondent has rights or legitimate interest

in the <american-online.net> domain name, using the guiding criteria found

in Paragraph 4(c) of the Policy.

Under paragraph 4(c) of the Policy, evidence of a registrant’s rights or legitimate

interest in the domain name includes:

(i) Demonstrable preparations to use the domain name in connection with a bona

fide offering of goods or services prior to the dispute;

(ii) An indication that the registrant has been commonly known by the domain

name even if it has acquired no trademark rights; or

(iii) Legitimate noncommercial or fair use of the domain name without intent

to divert consumers or to tarnish the trademark.

The Panel finds that Respondent is not commonly known by the name AMERICAN

ONLINE or the domain name <american-online.net>.

There is no proof on the record submitted by Respondent of rights or legitimate

interests in the domain name <american-online.net>. The Panel finds that

based upon the evidence, which has not been challenged, Respondent is not making

a legitimate noncommercial or fair use of the domain name. The choice of the

subject domain name, without explanation by Respondent, is unlikely to have

been accidental or without knowledge of the significance of its connection to

Complainant’s worldwide commercial services.

Respondent’s conduct of directing users from the domain name <american-online-net>

to its own financial services website could reasonably mislead and divert computer

users looking for Complainant’s website, to the commercial detriment of Complainant.

Given the lack of denial by Respondent, the Panel can reasonably infer that

Respondent is aware of this fact, potentially profits from this fact, and indeed

seeks the occurrence of these events. Furthermore, the Panel finds that based

upon the evidence, which has not been challenged, that Respondent is not making

a legitimate noncommercial or fair use of the domain name, and is using the

domain name with the intent to mislead or divert consumers for commercial gain.

Thus, the Panel finds for the Complainant on the second element.

C. Respondent’s Registration and Use of the Domain Name

The Panel next determines whether Respondent registered and used the domain

name <american-online.net> in bad faith, using the guiding criteria found

in Paragraph 4(b) of the Policy.

Under paragraph 4(b) of the Policy, evidence of Respondent’s bad faith registration

and use includes:

(i) Circumstances indicating the domain name was registered for the purpose

of resale to the trademark owner or competitor for profit;

(ii) A pattern of conduct showing an attempt to prevent others from obtaining

a domain name corresponding to their trademarks;

(iii) Registration of the domain name for the purpose of disrupting the business

of a competitor; or

(iv) Using the domain name to attract, for commercial gain, Internet users

to Respondent’s web site by creating a likelihood of confusion with the trademark

owner’s mark.

The Panel finds that Respondent’s registration was made in bad faith, as evidenced

by the uncontroverted evidence that after receipt of Complainant’s letter objecting

to Respondent’s use and registration of the domain name <american-online.net>

(Complainant’s Annex Exhibit F), Respondent offered to sell the domain name

for $1,000,000 U.S. (Complainant’s Annex Exhibit E) While not determinative

in itself, here the uncontroverted and unexplained evidence that Respondent

has registered these domain names, including the well-known trademarks of others,

supports Complainant’s contention that the registration at issue here was made

in bad faith.

Indeed, Respondent’s offer to sell the subject domain name for $1,000,000 (one

million U.S. dollars) to Complainant after receiving a "cease and desist"

letter appears to be well in excess of any reasonable and legitimate costs incurred

by Respondent directly related to the domain name and therefore may be considered

further evidence of registration and use of a domain name in bad faith.

The Panel finds that Respondent has registered the domain name <american-online.net>

with the primary purpose of either selling the domain name for profit and/or

for diverting potential customers of Complainant to Respondent’s website, and

thus disrupting the business of a competitor, the Complainant.

Respondent first registered the domain name long after Complainant established

rights and Internet web publicity in the mark AMERICA ONLINE for Internet-related

services. In the absence of contrary evidence, the Panel finds that Respondent

knew of or at least should have known of Complainant’s trademark and services,

at the time it registered the domain name <american-online.net, given the

widespread use of Complainant’s AMERICA ONLINE trademark and website.

Furthermore, the Panel finds, in the absence of any contrary evidence, that

Respondent has intentionally used the domain name to attract, for commercial

gain, Internet users to its <american-online.net> website by creating

a likelihood of confusion with Complainant’s mark and domain name as to the

source, sponsorship, affiliation, or endorsement of the <american-online.net>

website.

Thus, the Panel finds for the Complainant on the third element.

7. Decision

The Panel concludes: (a) that the domain name <american-online.net> is

confusingly similar to Complainant’s trademarks; (b) that Respondent has no

rights or legitimate interest in the domain name; and (c) that Respondent registered

and used the domain name in bad faith. Therefore, pursuant to the Policy and

the Rules, the Panel orders that the domain name <american-online.net>

be transferred to Complainant.

Neil A. Smith

Sole Panalist

Dated: December 14, 2000

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