America Online, Inc. v. Media Dial Communications

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

America Online Inc. v. Media Dial Communications

Case No. D2001-0799

1. The Parties

The Complainant in this administrative proceeding is America Online, Inc. AOL

is a Delaware corporation with its principal place of business in Virginia,

USA.

The Respondent is Media Dial Communications of Halifax, Nova Scotia, Canada.

2. The Domain Names and Registrars

This dispute concerns the domain names identified below:

<aolfind.com> and <nudescape.com> (the "Domain Names")

The registrars with whom the domain names are registered are:

<aolfind.com>

Tucows.com, Inc.

96 Mowat Avenue

Toronto, ON M6K 3M1

Canada

<nudescape.com>

Network Solutions, Inc.

505 Huntmar Park Drive

Herndon, Virginia 20170

USA

The Domain Name <aolfind.com> was initially registered on March 24, 1998.

The Respondent renewed its registration on or about March 24, 2001.

The Domain Name <nudescape.com> was initially registered on September

30, 1997. The Respondent renewed its registration on or about October 1, 2000.

3. Procedural History

A Complaint pursuant to the Uniform Domain Name Dispute Resolution Policy ("the

Policy") and the Rules for Uniform Domain Name Dispute Resolution Policy

("the Rules") both of which are implemented by ICANN on October 24,

1999, was received by the Center in electronic format on June 17, 2001, and

in hardcopy on June 22, 2001. Payment in the required amount to the Center

has been made by the Complainant.

On June 20, 2001, a request for registrar verification was sent to the two

Registrars requesting confirmation that they had received a copy of the Complaint

from the Complainant, that the Domain Name was currently registered with it

and that the policy was in effect, and requesting full details of the holder

of the Domain Name and advice as to the current status of the Domain Name.

Registrar verifications were received on June 22 and 25, 2001.

On June 26, 2001, the Administrative Proceeding began.

On July 17, 2001, Notification of Respondent Default was issued.

On July 25, 2001, Notification of Appointment of an Administrative Panelist

and Projected Decision Date ("the appointment notification") was sent

to the Complainant and the Respondent. In accordance with the Complainant’s

request, the appointment notification informed the parties that the administrative

Panel would comprise of one Panelist, Clive Elliott and advised that the decision

should be forwarded to WIPO by August 8, 2001.

On August 8, 2001, a decision was submitted to the Center.

4. Factual Background

The Complainant, America Online, Inc., and its affiliate NETSCAPE Communications

Corp. (herein referred to at times collectively as "AOL"), are the owners of

numerous trademark registrations world-wide for their AOL and NETSCAPE marks,

including U.S. Trademark Registration Nos. 1,977,731 and 1,984,337 (for AOL),

and U.S. Trademark Registration No. 2,027,552 (for NETSCAPE), as well as Canadian

trademark registrations TMA493161 and TMA495741 (for AOL) and TMA493604 (for

NETSCAPE). The Complainant registered and uses its AOL and NETSCAPE marks in

connection with, among other things, providing information, services, and online

database search services.

The Complainant says that it uses the marks AOL.COM and NETSCAPE.COM as domain

names for its Websites. AOL owns U.S. Trademark Registration Nos. 2,325,291

and 2,325,292, and Canadian trademark TMA540998 for the mark AOL.COM. It is

stated that the marks AOL and NETSCAPE are used extensively at these Websites,

which are significant methods of promoting AOL's services and that as a result,

consumers associate the marks AOL and NETSCAPE, when used in a domain name,

with AOL's services.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that AOL has invested substantial sums of money in

developing and marketing its services and marks. The AOL, AOL.COM, and NETSCAPE

marks have been and continue to be widely publicized through substantial advertising

throughout the United States, Canada, and the world. 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.

The Complainant claims that many years prior to the Respondent’s registration

of the domain names <aolfind.com> and <nudescape.com> and at least

as early as 1989 for the mark AOL, 1992 for the mark AOL.COM, and 1994 for the

mark NETSCAPE, AOL adopted and began using its marks in connection with computer

online services and other Internet-related services. Moreover, the marks AOL

and NETSCAPE were registered and used in both the United States and Canada several

years before the Respondent registered and used the domain names <aolfind.com>

and <nudescape.com>. The Complainant points out that it

has used its famous and distinctive marks continuously and extensively in interstate

and international commerce in connection with the advertising and sale of its

services.

The Complainant claims, with over twenty-eight million subscribers, AOL operates

the most widely-used interactive online service in the world and each year millions

of AOL customers world-wide obtain services offered under the AOL and AOL.COM

marks; millions more are exposed to the said marks through advertising and promotion.

The NETSCAPE.COM Website is said to be one of the most visited sites on the

Internet during daytime hours with over thirty-six million registrants. Each

year millions of NETSCAPE customers worldwide obtain products and services offered

under the NETSCAPE Marks; millions more are exposed to said marks through advertising

and promotion.

The Complainant alleges that sales of services under the AOL, AOL.COM, and

NETSCAPE marks have amounted to billions of dollars. The Complainant claims

that as a result, the general public has come to associate the AOL and NETSCAPE

names and marks with services of a high and uniform quality. See America

Online, Inc. v. AOL International, WIPO

Case No. D2000-0654; NETSCAPE Communications Corp. v. Baltic Consultants

Limited, WIPO Case No. D2001-0519 ("NETSCAPE"

is obviously a well-known mark").

The Complainant says that on September 30, 1997, and March 24, 1998, many years

after AOL's adoption and first use of the AOL, AOL.COM, and NETSCAPE marks,

and several years after the AOL and NETSCAPE marks were registered in the United

States and Canada, the Respondent registered the domain names <nudescape.com>

and <aolfind.com> (as well as two other AOL-based domains). The Complainant

also claims that despite having full knowledge of AOL’s trademark rights in

the famous AOL and NETSCAPE marks, as demonstrated below, the Respondent proceeded

to use the domain names <nudescape.com> and <aolfind.com> in connection

with pornographic Websites in a bad faith effort to profit from the goodwill

AOL has created in its famous and distinctive marks.

It is contended that the Domain Names <aolfind.com> and <nudescape.com>

are nearly identical and confusingly similar to the AOL, AOL.COM, and NETSCAPE

marks. The Complainant submits that consumer confusion is particularly likely

because the Respondent makes a prominent reference to the AOL service at its

pornographic <nudescape.com> site to create the impression that the Respondent’s

offensive pornographic services are provided by, or affiliated with, AOL.

Further, it is asserted that confusion is also likely given the fact that AOL

provides online search services; therefore, the use of the domain name <aolfind.com>

is likely to confuse consumers who may believe that the site is operated by

AOL in connection with its online search services.

The Complainant alleges that in 1997 and 1998, the Respondent registered the

Domain Names <aolsearchengine.com> <aol-online.com> <aolfind.com>

and <nudescape.com>". In late 1998 and early 1999, the Complainant

became aware of the Respondent’s registration of the three AOL-based domain

names, and its use of those domain names in connection with offensive pornographic

Websites. At that time, counsel for AOL sent the Respondent a letter, demanding

that the Respondent cease using the famous AOL mark to promote the Respondent’s

pornographic Websites. The Respondent initially offered to sell the three AOL-based

domain names to AOL for $100,000. The Complainant says that it refused to pay

the amount and the Respondent eventually deleted its registrations for <aol-online.com>

and <aolsearchengine.com> (AOL subsequently registered the domains); the

pornographic content at <aolfind.com> was replaced with a disclaimer stating

that the site is not associated with America Online. Based upon the Respondent’s

deletion of two of the AOL-based domains, and the partial deactivation of <aolfind.com>

AOL began monitoring the <aolfind.com> Domain Name for use. At that time,

the Complainant was not aware that the Respondent already had registered the

infringing <nudescape.com> Domain Name.

In March 2001, Counsel for AOL became aware that the Respondent was using the

domain name <nudescape.com> in connection with a pornographic Website

that uses a prominent banner claiming "Nudescape.com - The Site of Choice

for AOL Users." Counsel for AOL sent the Respondent two letters, objecting

to the unauthorised use of a domain name that is confusingly similar to the

famous and distinctive NETSCAPE mark, and the misleading references to the AOL

service. The Respondent failed to respond to either letter.

B. Respondent

No response was received from the Respondent.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires that the Complainant must prove each

of the following:

- The Domain Names are identical or confusingly similar to the trademarks;

and

- The Respondent has no right or legitimate interest in respect of the Domain

Names; and

- The Domain Names have been registered and are being used in bad faith.

Paragraph 4(b) of the Policy sets out four illustrative circumstances that,

if proved, constitute evidence of bad faith as required by paragraph 4(a)(iii)

referred to above.

Paragraph 4(c) of the Policy sets out three illustrative circumstances that,

if proved, constitute evidence of a right or legitimate interest as described

in paragraph 4(a)(ii) referred to above.

<aolfind.com>

Domain Name identical to or confusingly similar

There can be no real dispute that AOL is the name/trademark of substantial

reputation and widespread repute. The uncontested evidence is that the Complainant

has used this name/trademark widely and consistently for some years now. AOL

has thus acquired a well-known and exclusive meaning – associated with the Complainant

alone.

While AOL and "aolfind" are not identical the position of the descriptive

term "find" for an information service has obvious descriptive connotations.

That is, to provide access to or search facilities for a service provided by

the Complainant. Without the addition of the prefix "AOL" "aolfind"

is somewhat meaningless and there is a strong likelihood that Internet users

would regard AOL Find as a derivative or associated mark/name of the Complainant.

On this basis the domain name <aolfind.com> is confusingly similar to

the trademark/name AOL.

No Right or Legitimate Interest

Given the comments above about the obvious and exclusive meaning and repute

associated with the trademark/name AOL it is found that the Respondent has no

right or legitimate interest in <aolfind.com>. This fact is supported

by the conduct of the Respondent in both offering to sell and then relinquishing

"AOL" containing domains, when challenged by the Complainant. On this

basis it appears that the Respondent has no right or legitimate interests in

the domain name <aolfind.com> or indeed any other "AOL" containing

domain and it has effectively acknowledged this by its own conduct.

Domain Name Registered and Being Used in Bad Faith

On the evidence, it appears that the Complainant has rights in the domain name

<aol.com>. It appears from the Complainant’s assertions that the Complainant

commenced use of the AOL mark in 1989 and the AOL.COM mark in 1992. From this

date the marks were used in the course of trade and while there is no clear

indication of the nature and extent of the use of these marks during this period,

it is apparent that at the registration date of the domain name, i.e. 1998 that

the Complainant had rights in the mark AOL. Accordingly, it is found that the

domain name was registered in bad faith on that date.

In terms of use of the <aolfind.com> domain name by the Respondent, it

is asserted that this domain name, along with others belonging to the Respondent,

was used and resolved to a pornographic website. It appears that the Respondent

offered to sell the <aolfind.com> domain name, amongst others, to the

Complainant for an amount well in excess of its registration cost. Both aspects

of this conduct amount to evidence of use of the domain name in bad faith.

The Respondent has failed to file a response and accordingly the Complainant’s

assertions are accepted as correct and as establishing the necessary grounds

for transfer.

<Nudescape.com>

Domain Name Identical to or Confusingly Similar

The Panel accepts that the NETSCAPE mark/domain has been used extensively by

the Complainant and that it has rights in this name/mark. Having said this,

Nudescape and Netscape are clearly not identical. It is accepted that both names

contain the common commencing letter "N" and the concluding word "scape".

However, the word "scape" is a common English word which is an appropriate

descriptive for something providing a view or outlook, for example, a "landscape".

It is also accepted that "NETSCAPE" has a particular and distinctive

meaning in relation to the Internet.

By the same token, the word "Nude" has a particular and well understood

meaning in the English language. In relation to a pornographic website the word

has an even more obvious and direct meaning and one which would be well understood

by Internet users.

The question arises as to whether Netscape and Nudescape are confusingly similar.

In deciding this question, the first issue is whether the two marks sound the

same. While there are clearly similarities phonetically, they are not identical

and are at best similar. As to the look or type of the two marks, they are dominated

to an extent by the word "scape" and the commencing letter "N".

However, nude is a four letter word while net is a three letter word and once

again there is some similarity but not necessarily a close similarity. As to

the meaning of the two marks, there is however quite a difference. As indicated

above, nude has a particular meaning as, does net and the two are quite different.

Accordingly, while there are similarities in the two marks, there are also

important differences.

At the end of day, some form of value judgment has to be made and the Panel

cannot avoid the feeling that notwithstanding the similarity between Nudescape

and Netscape, there are significant differences, particularly in terms of meaning

and accordingly that it is difficult to form a clear view as to confusing similarity.

In the final analysis, it is felt that the scales are relatively evenly balanced

on this issue.

No Right or Legitimate Interest

In answering this question one has to bear in mind that the Respondent, even

though it has chosen not to lodge any response or try and explain its actions,

registered the <nudescape.com> domain name some years ago, i.e., in 1997.

Further, it renewed the domain name in 2000. This means that the domain name

has been registered for almost four years and this is the first effort by the

Complainant to have it returned.

If the domain name were a problem for the Complainant, it would have been thought

that steps would have been taken before now to have the domain name removed

or to prevent the Respondent from using it. Even though the NETSCAPE mark was

first used in 1994, it does not necessarily give the Complainant rights to prevent

the Respondent from using a word that, although similar, is apt for use as a

domain name for a particular line of services. As a trademark "Nudescape"

is apt for use for pornographic services, leaving aside the ethical debate that

may revolve around the provision of such services.

If the Respondent had chosen a name, which was similar to NETSCAPE and had

no other obvious descriptive meaning, it might be inferred that the intent must

have been to derive some benefit from the Complainant. However, this is not

necessarily the case in the particular situation before the Panel.

The question has to be answered to some extent by asking whether the Respondent

has the right to use the words "nude" and "scape" to describe

its pornographic services. That is, quite apart from whether the Complainant

may have rights in these or similar words. It seems to the Panel that there

is a reasonably good argument that the Respondent should have a right to use

these common English words to describe its pornographic services. Otherwise,

parts of the English language would soon be acquired and removed from common

use by those wishing to name their businesses or describe their services.

Once again, the scales are evenly balanced; an issue that will be raised again

below.

Domain Name Registered and Being Used in Bad Faith

Given the comments made above it is hard to find that in 1997 the domain name

<nudescape.com> was registered in bad faith. That is, as it is arguably

not confusingly similar to NETSCAPE and it has its own obvious descriptive qualities.

Accordingly, there is an arguable case that it was not registered in bad faith.

The Panel makes this finding, notwithstanding the acceptance that the Respondent

had improperly registered various AOL containing domain names.

It is noted that the Complainant alleges that the Respondent has used a prominent

banner claiming "nudescape.com – the site of choice for AOL users".

This use is inappropriate and suggests that the Respondent is seeking to benefit

from the Complainant’s reputation in its AOL mark. It is found that this use

is inappropriate and amounts to evidence of bad faith.

To conclude, while the questions of confusing similarity and legitimate interest

are evenly balanced, as is the question of registration in bad faith, it is

found that the domain name has been or is being used in bad faith. However,

the difficulty the Complainant faces is that the test is a cumulative one and

if all factors are balanced together, the Panel feels that the case for the

Complainant is far from compelling.

At the end of the day the Panel has to weigh the up rights and interests of

both parties, notwithstanding the fact that the Respondent has failed to file

a response. Given the public interest of allowing members of the public to use

common English words to describe their goods and services and the fact that

ultimately the onus rests on the Complainant, it is felt that it has failed,

albeit just, to make out its case. Accordingly, in relation to the domain name

<nudescape.com> the Complaint is denied.

7. Decision

The domain name <aolfind.com> should be transferred to the Complainant

but the Complaint in relation to <nudescape.com> is denied.

Clive L. Elliott

Sole Panelist

Dated: August 8, 2001

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