America Online, Inc. v. Mark Anthony, Popixel Art dba America Online Latino

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

America Online, Inc. v. Popixel Art d/b/a America Online Latino

Case Number D2001-0957

1. The Parties

Complainant is America Online, Inc., and according to its complaint, it is

a corporation incorporated under the laws of the State of Delaware, U.S.A.,

with its principal place of business in Dulles, Virginia. Complainant is represented

by Attorney James R. Davis, II of the law firm Arent Fox Kintner Plotkin &

Kahn, Washington, D.C.

The Respondent in this proceeding is the entity Popixel Art, doing business

as America Online Latino, based in New York, N.Y. Mr. Mark Anthony Esposito

is listed as the administrative and billing contact for the Respondent, and

is representing Respondent in this case.

2. The Domain Names and Registrar

The dispute is with respect to the following domain names (hereafter "the

domain names"):

<americaonlinelatino.com>

<aol2it.com>

<latinaol2it.com>

<aolsi1.com>

<celulaol.com>

The registrar with which the domain names are registered is Dotster, Inc.,

11807 N.E. 99th Street, Suite 1100, Vancouver, WA U.S.A., (hereafter

"the registrar").

3. Procedural History

The procedures for resolving Complaints like this one are governed by the

Uniform Domain Name Dispute Resolution Policy (hereafter "The Policy",

or "UDRP") adopted by the Internet Corporation for Assigned Names

and Numbers ("ICANN") on August 26, 1999, ICANN’s Rules

for Uniform Domain Name Dispute Resolution Policy (hereafter "The Rules"),

as well as the Supplemental Rules of the WIPO Arbitration and Mediation Center

(hereafter "The Supplemental Rules").

The current dispute lies within the scope of the Policy, so that this Panel

does have proper jurisdiction to hear and decide this dispute. The terms and

conditions of the registration agreement between Registrar Dotster and the Respondents

clearly incorporate the Policy, so that Respondents were notified of the existence

of the Policy’s provisions for domain name dispute resolution. The Policy contains

in its Paragraph 4(a) the elements to be pleaded in order for a mandatory administrative

proceeding such as this one to be held: Complainant must allege 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 the domain name; and (iii) Respondent’s domain name has been registered

and is being used in bad faith. See the Policy, Paragraph 4 (a). In order to

successfully make its case, the Complainant must prove each of these three elements.

An electronic copy of the complaint was filed on July 25, 2001. A hardcopy

of the complaint was filed on July 27, 2001. A request for Registrar Verification

was made to the Registrar on July 26, 2001, and such Verification was made on

August 21, 2001. On August 23, 2001, the Center requested that the Complainant

sent a copy of the complaint to the Registrar. On August 23, 2001, notification

of the complaint was sent to Respondent. Respondent requested an extension of

time for its Response on September 12, 2001, and formally filed its

Response on September 20, 2001. On November 14, 2001, Respondent sent

a supplemental email to the WIPO Center Case Manager which was forwarded to

the Panel for its consideration in this case. Although late, the Panel does

accept receipt of this email communication.

According to the Center’s compliance checklist document, the Complaint has

been filed in accordance with the formal requirements of the Rules and the Center’s

Supplemental Rules.

The Panel consists of a single Panelist pursuant to Complainant’s request,

with which the Respondent agreed in its Response, see Section IV of Response,

paragraph 13. The Panelist was duly appointed by the Center. A Statement of

Acceptance and Impartiality and Independence was submitted to the Center by

the Panelist on November 1, 2001, and the Panelist was appointed by the Center

on November 2, 2001. A decision on the Complaint is normally due within 14 days

of the appointment of the Panel under Paragraph 15(b) of the Rules.

There is one other important procedural aspect to note here. In its Response,

the Respondent has asked this Panel for relief in the forms of large monetary

damages, an emergency order, and a cease-and-desist order against the Complainant,

among other things.

Without passing on the merits of Respondent’s requests and counterclaims in

this regard, we must point out that under the Policy, Rules and Supplemental

Rules, the power of this Panel is expressly limited to deciding whether or not

to issue an order to the Registrar canceling or transferring the domain names

to Complainant. Any other remedies requested by either party must be taken to

a national court. The UDRP and the Rules also provide that either party to this

kind of UDRP proceeding may initiate a de novo case in a national court

to reverse the decision of a UDRP Administrative Panel.

4. Factual Background

Of the five domain names in dispute here, the Panel only found one that resolved

to an active website during an exploration on November 8, 2001. The active domain

name and website is: <americaonlinelatino.com>. This is consistent with

Respondent’s statement in Paragraph 7 of its Response that it did not intend

to renew the registrations of the other four domain names.

Respondent states that its company has been active in pursuing the Hispanic

internet market in the United States for some time, and that it does business

on a daily basis in both Spanish and English. See Response, Paragraph 7. Respondent,

in paragraphs 8 (c), (d), and (e) of its Response, states that it has been in

negotiations with Complainant for "nearly a year and a half to purchase

our business model".

Complainant states that for a long time prior to Respondent’s registration

of the domain names, Complainant has continuously owned and used the names and

trademarks "AMERICAONLINE" and "AOL" in connection with

its computer and internet communication related products and services, with

numerous trademark registrations worldwide for these names and two prominent

trademarks of Complainant registered with the U.S. Patent & Trademark Office,

Registration Number 1,984,337 ("AOL"), registered on July 2, 1996,

in International Class 009 (computer operating programs and operating systems;

prerecorded computer programs for accessing computer networks, computer online

systems), and Registration Number 1,618,148 ("AMERICA ONLINE"),

registered on October 16, 1990, in international class 042 (leasing access time

to computer database in the field of news, sports, financial, entertainment,

and educational information). See Complaint, paragraph 12 (2) and Annex B thereto.

Complainant also states therein that it has registered with the U.S. Patent

& Trademark Office the trademark "AOL.COM", on March 7, 2000,

Registration Number 2,325,292 in international class 38 (telecommunications

services, namely electronic transmission of data, images and documents via computer

terminals; electronic store-and-forward messaging; electronic mail services,

and facsimile transmission). See Complaint, paragraph 12(2) and Annex B thereto.

Paragraph 12 (2) of the Complaint declares that Complainant has created and

registered the domain name <aol.com> for its website. A visit to this

website by the Panel on November 6, 2001, confirms that it is functioning viably

and legitimately in Complainant’s name.

In addition, Complainant points out that from its many years of widespread

advertising using these marks, the "AOL" trademark has become one

of a class of "famous marks" worldwide. See Complaint, Paragraph 12(8).

5. Parties’ Contentions

A. Complainant

Complainant alleges the elements of its case as follows:

i) The domain names as registered and used by Respondent are confusingly similar

or nearly identical to the AOL marks and "obviously play off of AOL’s entrance

into the Latin American market" (see Complaint, paragraph 12(10); and

ii) It has legitimate intellectual property interests in the domain names,

and that Respondent has no such interests (see Complaint, paragraph 12(12);

and

iii) Respondent has registered and used the domain names in bad faith, as

shown by:

- the timing of Respondent’s registration of the domain names soon after Complainant

publicly announced its intention to enter the Latin American internet market

(see Complaint, paragraphs 12(9) and 12(12)(b), and by

- attempts by Respondent to sell the domain names to Complainant, and to offer

them for auction on the internet (see Complaint, paragraph 12(12)(c), and by

- an allegedly "significant pattern" by Respondent in registering

other non-AOL related allegedly infringing domain names (see Complaint, paragraph

12(12)(d).

As a result, Complainant asks this Panel to issue a decision to the effect

that the domain names be transferred to Complainant, in accordance with Paragraph

4(i) of the Policy.

B. Respondent

1. On element (i), confusion between the domain names and Complainant’s trademarks,

Respondent challenges by:

a. noting that Complainant merely pleaded this element in the Complaint, but

did not submit any evidence of actual confusion by potential or current customers

(see Response, paragraph 12c); and

b. observing that Respondent’s activity is aimed at the U.S.-based Hispanic

market, while Complainant’s activity is aimed primarily at the South America-based

Hispanic market - initially Mexico and Argentina (Response, paragraphs 10, 11d)

1 ; and

c. offering disclaimers on the websites to which the domain names resolve,

to the effect that Respondent is not affiliated with Complainant (Response,

paragraph 11b), and

d. telling the Panel in an email to the WIPO Center dated November 14, 2001,

that "1) the aol2it.com means ‘aqui on line 2 it’, 2) aolsil.com means

‘aqui online yes 1’, 3) celulaol.com means ‘celula online’ (cell phone), and

4) latinaol2it.com means ‘latina online 2it’. None of these names have anything

to do with AOL." Although the Panel does speak Spanish, it thanks Respondent

for its explanation of these terms.

2. On element (ii), legitimacy of Complainant’s intellectual property rights,

Respondent challenges by asserting that

a. "America" and "Online" are not proprietary words subject

to trademark protection, and

b. Respondent further raises a cultural/linguistic challenge by stating in

its Response, paragraph 7(a), that the expression "America" is of

Spanish language origin, deriving from Spain’s naming the New Continent in honor

of explorer Amerigo Vespucci (see Response, Exhibit C-1a), and hence not subject

to protection as a trademark by the U.S. Patent and Trademark Office. Respondent

asserts its right and cultural heritage to use the Spanish expressions free

of any encumbrance.

3. On element (iii), bad faith, Respondent denies bad faith by:

a. offering not to re-register four of the domain names the registrations

of which have expired (see Response, paragraph 7 and Annex A thereto), ie

all the domain names EXCEPT <americaonlinelatino.com>; and by

b. denying that it had actual knowledge of Complainant’s intention to enter

the South American internet market (see Response, paragraph 10); and by

c. denying that it offered the domain names for sale to Complainant (Response,

paragraph 8c); and by

d. denying that it expressly offered the domain names for auction on the internet

(Response, paragraph 12d); and by

e. justifying its registration of a non-AOL related domain name which Complainant

alleged was infringing the rights of third parties (Response, paragraph 12n).

6. Discussion and Findings

Based on the facts and contentions referenced above, the Panel finds as follows:

I. As regards proof of element (i) above, the confusion between Complainant’s

marks and the domain names as registered and used by Respondent, the Panel finds:

a. Respondent claims correctly that the Complainant has not supplied evidence

of actual customer confusion. But in this matter, this Panel agrees with the

WIPO Panel decision in America Online, Inc. v. Frank Albanese, WIPO

Case D2000-1604, involving the domain name <aoltrader.com>. Footnote

1 at the bottom of that decision states: "The Panel emphasizes that the

issue of whether a domain name is identical or confusingly similar to a mark

in which Complainant has rights, under para. 4.a.(i) of the Policy, is different

than whether a likelihood of confusion exists. Whether a likelihood of confusion

exists, which must be determined in the context of the goods and services upon

which the parties' marks and domain name are used, is beyond the purview of

the Panel. Thus, the parties' arguments with respect to the issue of likelihood

of confusion are not relevant to the instant proceeding."

This means that actual customer confusion need not be proven, but a case must

be made that a reasonable person could be confused. It is quite possible that

people who were confused may still be confused and hence not aware of the difference

so as to be able to write a letter to Complainant.

b. Disclaimers by Respondent on its webpages to which the domain names resolve:

On the only currently active webpage visited by the Panel on November 8, 2001,

there is a disclaimer in medium-sized type at the bottom of the page stating

that "WE ARE IN NO WAY ASSOCIATED WITH AOL." A disclaimer such as

this one can help lessen potential confusion, but usually does not eliminate

confusion caused by domain names with strong similarities to others’ trade or

service marks – especially after the initial pull to Respondent’s website.

c. The internet is a communications mechanism with global reach, so it is

virtually impossible to avoid confusion by delineating separate markets on the

basis of geography, especially when the same language – Spanish, with some local

and national variations – is in play for both the U.S. Hispanic market and the

Latin American Hispanic market.

II. As regards proof of element (ii) above, intellectual property rights,

the Panel finds:

a. Complainant has adequately demonstrated its own intellectual property rights

in the trademarks "AOL", "AOL.COM" and "AMERICAONLINE"

in the relevant trademark product/service international classes. Although

the words "America" and "online" may not be legally protectable

trademarks by themselves, as Respondent contends, the U.S. Patent & Trademark

Office has permitted registration of the combination of these words as a legally

protectable trademark, in the international classes of goods and services referenced

in section 4 above of this Panel’s decision.

b. As regards the lack of legitimate interest or rights in the domain name,

Respondent has failed to assert any such interest or right of its own which

is legally protectable. The Panel does take note of Respondent’s claim of cultural

difference with respect to the Spanish versus the English words for "America",

but finds that in this area, Respondents do not have any legally protectable

interest or right as such. Nor does the Panel agree that because the word "America"

is the same in Spanish and English, that this would prevent Complainant from

holding an enforceable trademark. Furthermore, the Panel does observe that Respondent’s

website to which the domain name <americaonlinelatino.com> resolves, is

not in Spanish, but in English.

III. As regards proof of element (iii) above, the bad faith registration and

use elements, the Panel believes these to be the most important elements in

this case.

In general, this Panel has not accepted in its prior UDRP rulings, and does

not accept in this case, evidence of success or failure in negotiations between

the parties as evidence of good or bad faith on the part of any party. Admitting

into this proceeding evidence taken from settlement negotiations runs contrary

to public policy adopted by all courts in the U.S. at least, to encourage parties

to settle their disputes amicably by keeping confidential between them all evidence

of their settlement negotiations.

a. On Complainant’s claims of bad faith, the Panel finds:

(1) Timing of Respondent’s registration of domain names closely after Complainant’s

public announcement to enter to Latin American market: This claim is vigorously

denied by Respondent, and Complainant does not offer any proof beyond the text

of its own announcement. Nor is the Panel convinced by Complainant’s statement

that a representative of Respondent at one time held an AOL user account. Therefore

the Panel finds this aspect not proven satisfactorily.

(2) Attempts by Respondent to sell the domain names to Complainant:

As noted above, generally this Panel will not take into evidence the substance

of failed negotiations. Respondent claims that the proffered sale was part of

the transfer of a larger business model. Both sides offered transfer agreements

as evidence, but no agreement appears to be signed by both parties. Hence this

argument is not acceptable to the Panel.

(3) Offer by Respondent to sell the domain name or names on an internet auction

site: Annex H of the Complaint contains printouts from the auction page <www.greatdomains.com>

where three of the domain names are offered for sale: <latinaol2it.com>,

<aol2it.com>, and <aolsi1.com>. Respondent replies that these were

not really offers for sale, but that it "placed ALL its domain names

with an impartial third party in the event of future negotiations" (see

Response, paragraph 12(d)). The Panel finds Respondent’s explanation that this

is a mere appraisal service, unsubstantiated by any independent third-party

statement or declaration, to be unconvincing. A visit by the Panel to <www.greatdomains.com>

reveals a page containing a description of each domain name for sale by Respondent

as follows:

"Description: Can be used as an ISP/Business site. This domain

is part of a 50 name package in both the USA and Latin markets, as a Cell Phone

and Internet Service..."

Asking price: Make Offer"

(1) Pattern of registration by Respondent of other infringing domain names:

Complainant really only points to one other domain name, and Respondent has

made a technical argument in justification of its registration of that name.

The Panel finds that Complainant has not made its case on this item.

b. On Respondent’s defenses to bad faith, the Panel finds:

(1) Its offer not to re-register four of the five domain names at issue: this

can be some indication of good faith, with respect to the four domain names

involved.

(2) Timing: See the finding in paragraph 6(III)(a)(1) above.

(3) Non-offer of domain names for sale to Complainant: see the finding in

paragraph 6(III)(a)(2) above.

(4) Non-offer of domain names for auction on the internet: see the finding

in paragraph 6(III)(a)(3) above.

(5) Justification of registration of other allegedly infringing domain names:

s ee the finding in paragraph 6(III)(a)(4) above.

IV. Finally, a legitimate defense by a Respondent, even if bad faith is proven,

is a legitimate business activity where the domain name plays an integral part,

which is not in competition with Complainant. This was the situation in the

<aoltrader.com> case, America Online, Inc. v. Frank Albanese, WIPO

Case D2000-1604, January 25, 2001, where the Panel declined to transfer

the <aoltrader.com> domain name to Complainant AOL, Inc. because the Respondent

was engaging in a legitimate, non-competing business in which this domain name

was an essential part – the brokerage of AOL shares of stock. However, Respondent

has not made out a similar case here.

On the contrary, when visiting Respondent’s website <www.americaonlinelatino.com>

and clicking on the "What We Do" tab at the top of the page, the following

message is placed there: "We can provide you with the best Latino Internet

Service (ISP) and Hosting available. We will also help you build a professional

money making Web Site that takes payment by credit card, or check live, with

complete Point and Click ease. Sell our products like PRE-PAID INTERNET ACCESS

CREDIT CARDS, CELL PHONES, and DSL SERVICE, or we will help you sell your own

products. No programming is needed on your part! We will show you how to trade

on our success! It's as easy as 1,2,3!" The ISP aspect, at least, appears

to be quite similar to the primary type of services provided by Complainant.

Nor does this tab seem to match Respondent’s assertion that "the current

Web Site is non-commercial" (Response, paragraph 12l).

Summary of Findings:

(i) Respondent’s domain names and corresponding websites can be confused with

the marks of Complainant by a reasonable internet user, which could create a

likelihood of confusion regarding the sponsorship and affiliation of these sites.

(ii) Complainant’s intellectual property rights in the marks "AOL",

"America Online" and "AOL.COM" have been proven to the Panel.

Respondent has not demonstrated any rights of its own in these marks or names.

(iii) Respondent has shown a degree of bad faith by offering all the domain

names for auction on an internet site. Respondent has failed to make the case

for a legitimate business need for the domain names, as described in Paragraph

6(IV) above.

Paragraph 4(b) of the Policy cites, without limitation, various examples of

bad faith. Paragraph 4(b)(iv) of the Policy provides one such example of bad

faith by a respondent:

"(iv) by using the domain name, you have intentionally attempted to attract,

for commercial gain, Internet users to your 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 your web site or location

or of a product or service on your web site or location."

The Panel finds that this situation occurs in the present case. While it is

often difficult to prove a Respondent’s actual intent, the Panel may clearly

infer such intent by the use of domain names that include the well-known marks

"America Online" and "AOL" on Respondents’ web pages.

There is no doubt that Respondent has the right to market its own wide array

of services on the internet aiming at the U.S. Hispanic market. The Complainant

does not have the right to prevent Respondent from doing so. And Respondent

may have the right to use the phrases "latino","2it", and/or

"celul" in its domain names. However, Respondent is not entitled to

do this by combining these phrases in its domain names with Complainant’s legally

protected marks, then giving rise to domain names that could reasonably cause

confusion with Complainant’s well-known and registered marks - especially in

similar spheres of business activity.

7. Decision

Based upon the Panel’s Findings from Section 6 above, and under its authority

vested by Paragraph 4(i) of the Policy, the Panel hereby issues its order as

follows:

transfer of the registration by the Registrar to the Complainant of the domain

names <americaonlinelatino.com>, <aol2it.com>, <latinaol2it.com>,

<aolsi1.com>, and <celulaol.com>.

Paul E. Mason

Sole Panelist

Dated: November 20, 2001

Footnotes:

1. Respondent has described Complainant

as being in the "South American market". However, Mexico, where Complainant

is very active, is part of North America.

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