America Online, Inc. v. GSD Internet

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

America

Online, Inc. v. GSD Internet

Case No.

D2001-0629

1. The Parties

The Complainant is America

Online, Inc, 22000 AOL Way, Dulles, Virginia 20166, US.

Represented by James R

Davis, II, Arent Fox Kintner Plotkin & Kahn, 1050 Connecticut Avenue,

NW, Washington, DC 20036, US.

The Respondent is GSD Internet,

PO 1801, Milton, QLD 4064, Australia.

2. The Domain Names

and Registrar

The Domain Names are <aolteen.com>

and <icqporn.com>.

The Registrar is Network

Solutions, Inc.

3. Procedural History

The Complaint was received

by WIPO by email on May 2, 2001, and in hardcopy form on May 7, 2001. WIPO has

verified that the Complaint satisfies the formal requirements of the Policy,

the Rules and the Supplemental Rules and that payment was properly made. The

Administrative Panel ("the Panel") is satisfied that this is the case.

The Complaint was properly

notified in accordance with the Rules, paragraph 2(a). The Registrar has confirmed

that <aolteen.com> and <icqporn.com> ("the Domain Names")

were registered through Network Solutions, Inc., and GSD Internet ("the

Respondent") is the current registrant. The Registrar has further confirmed

that the Policy is applicable to the Domain Names.

On May 10, 2001, WIPO notified

the Respondent of the Complaint in the usual manner and informed the Respondent

inter alia that the last day for sending its Response to the Complainant and

to WIPO was May 29, 2001. No Response was received. On May 30, 2001,

WIPO sent to the Respondent a Notification of Respondent Default.

The Panel was properly

constituted. The undersigned Panellist 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, is June 25, 2001.

4. Factual Background

The Complainant, very well-known

to Internet users, is the registered proprietor of the service marks AOL and

ICQ. The Complainant is the proprietor of registrations of those service marks

in many countries of the world (including the US and Australia) for inter alia

computer services. First use of those marks and registration of them by the

Complainant antedated registration of the Domain Names by the Respondent.

From the WHOIS searches

exhibited to the Complaint it appears that the Respondent registered the Domain

Names in January 1999. The Domain Names are connected to a pornographic website

at <whorecam.com>. <whorecam.com> is a domain name, which is also

registered to the Respondent.

On March 4, 1999, lawyers

representing the Complainant wrote a letter to the Respondent drawing attention

to its service mark rights in the mark AOL and complaining about the domain

name, <aolteen.com> and requesting transfer of that domain name to the

Complainant. The Respondent did not reply.

On May 11, 1999, the Complainant’s

lawyers wrote again to the Respondent referring to the earlier letter and complaining

in addition about a domain name, <aol-boys.com>, which is not the subject

of this Complaint. Again, the Respondent failed to reply.

5. Parties’ Contentions

A. Complainant

The Complainant contends

that the domain name, <aolteen.com>, is identical or confusingly similar

to its service mark AOL and that the domain name <icq.com> is identical

or confusingly similar to its service mark ICQ.

The Complainant further

contends that the Respondent has no rights or legitimate interests in respect

of the Domain Names. The Complainant asserts that the Respondent must have known

of the Complainant’s service marks when it registered the Domain Names. The

Complainant contends that the Respondent is not commonly known by those names

and cannot claim in good faith that it has made a legitimate non-commercial

or fair use of the Domain Names. The Complainant observes that the Domain Names

are not used on the website to which they are linked, that website being at

www.whorecam.com.

The Complainant further

contends that the Domain Names were registered in bad faith and are being used

in bad faith. In support, the Complainant relies upon the following matters:

1. The Domain Names

were registered many years after the Complainant adopted and made first use

of its service marks AOL and ICQ. At the time of registration of the Domain

Names the Respondent will have been well aware of the Complainant’s service

marks.

2. The Respondent failed

to respond to the letters from the Complainant’s lawyers.

3. The Respondent is

using the Complainant’s service marks to attract people to the Respondent’s

pornographic website at <whorecam.com>, thereby profiting from the Complainant’s

goodwill in its service marks.

4. The Respondent registered

the Domain Names with the bad faith intent of preventing the Complainant from

reflecting its service marks in a domain name.

B. Respondent

The Respondent has not

responded.

6. Discussion and Findings

General

According to paragraph

4(a) of the Policy, the Complainant must prove that

(i) The Domain Name

is identical or confusingly similar to a trademark or service mark in which

the Complainant has rights; and

(ii) The Respondent

has no rights or legitimate interest in respect of the Domain Name; and

(iii) The Domain Name

has been registered and is being used in bad faith.

Identical or confusing

similarity

Each of the Domain Names

features in it a prefix, which is a service mark of the Complainant. In the

case of ‘icqporn’, the suffix is explicit as to the likely content of any site

to which it is connected. As to ‘aolteen’, the suffix is not of itself a common

word, but if it is indicative of anything indicates the young (i.e. teenagers).

In the view of the Panel a visitor to a site connected to either of the Domain

Names would not be unduly surprised to find himself/herself at a pornographic

site. In neither case, on the evidence before the Panel, does the suffix indicate

a service product of the Complainant.

The Panel accepts that

people looking at the Domain Names will be likely to make the association with

the Complainant’s service marks (particularly when viewed alongside each other),

but does not believe that any significant number of people will believe the

Domain Names to have anything to do with the Complainant - any more than if

the domain names in issue had been <aolsucks.com> and <ihateicq.com>.

In loose parlance what

the Respondent has done (particularly in relation to <icqporn.com>) amounts

to an abusive use of the Complainant’s service marks. In some jurisdictions

it may amount to trade mark infringement. In the UK for example, it could amount

to trade mark infringement under section 10(3) Trade Marks Act 1994 on the basis

that it causes detriment to the distinctive character or repute of the Complainant’s

service marks. However, that section does not call for confusing similarity.

In the view of the Panel

"confusingly similar" means a similarity likely to lead to confusion

as to trade origin. As indicated, the Panel does not believe that that is a

likely result in the case of either of the Domain Names.

The Panel finds that the

Domain Names are not identical or confusingly similar to trademarks or service

marks in which the Complainant has rights.

Rights or legitimate interest

of the Respondent

In light of the above finding,

it is unnecessary for the Panel to address this issue. Had it been necessary

to do so, the Panel would have held that the Respondent had no rights or legitimate

interests in the Domain Names for the reasons given by the Complainant.

Bad Faith

Again, it is unnecessary

for the Panel to address this issue.

As indicated above, what

the Respondent has done, if done in the United Kingdom, might very well constitute

trademark infringement in the United Kingdom on the basis that it is without

due cause and takes unfair advantage of, or is detrimental to, the distinctive

character or repute of the trademark (S.10(3) Trade Marks Act 1994). Whether

that is enough to constitute bad faith registration and use within the meaning

of the Policy is another question.

The Panel rejects the Complainant’s

contention that the motivation on the part of the Respondent can have been to

prevent the Complainant reflecting its service marks in corresponding domain

names. The Panel does not believe that that can have been the intention, still

less the effect. The Panel does not believe that the Domain Names are names,

which the Complainant would have wished to have registered.

The Panel does not believe

that the Domain Names are names, which people will enter into browsers expecting

to reach the Complainant. Nor does the Panel believe that people will visit

the website linked to the Domain Names expecting to visit a site authorised

or sponsored by the Complainant.

The sole issue is whether

what is a deliberate and, in the view of the Panel, unfair, commercial ‘use’

of the Complainant’s service marks constitutes bad faith registration and use

within the meaning of paragraph 4(a)(iii) of the Policy. It is not necessary

for the Panel to resolve it and the Panel does not seek to do so.

7. Decision

The Complaint is dismissed.

Tony Willoughby

Sole Panelist

Dated: June

25, 2001

More cases by this complainant

• America Online, Inc. v. Chris Hoffman — D2001-1184 · aolipc.com, ipcaol.com, itstimeforaol.com · Transfer · 19 Nov 2001
• America Online, Inc. v. Bill Katsis, Quik-E Inc. — D2001-1141 · icqvideo.com · Transfer · 20 Dec 2001
• America Online, Inc. — D2001-1081 · Terminated
• America Online, Inc. v. M, Mike — D2001-1051 · icqauto.com, icqserv.com · Transfer · 01 Nov 2001
• America Online, Inc. v. Chan Chunkwong — D2001-1043 · china-aol.com · Transfer · 18 Oct 2001
• America Online, Inc. — D2001-0968 · Terminated