DECISION

 

America Online Inc v. Rao Tella d/b/a Arbor Online Box

Claim Number: FA0111000101820

 

PARTIES

The Complainant is America Online, Inc., Dulles, VA (the "Complainant") represented by James R. Davis, II, of Arent, Fox, Kintner, Plotkin & Kahn.  The Respondent is Rao Tella d/b/a Arbor Online Box, Ann Arbor, MI (the "Respondent") represented by Ari Goldberger, of ESQwire.com Law Firm.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <aolbox.com>, registered with BulkRegister.com, Inc.

 

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.

 

Jacques A. Léger Q.C. as Panelist.

 

PROCEDURAL HISTORY

The Complainant submitted a "Complaint" to the National Arbitration Forum ("the Forum") electronically on November 8, 2001; the Forum received a hard copy of the Complaint on November 13, 2001.

 

On November 13, 2001, BulkRegister.com, Inc. confirmed by e-mail to the Forum that the domain name <aolbox.com> is registered with BulkRegister.com, Inc. and that the Respondent is the current registrant of the name.  BulkRegister.com, Inc. has verified that Respondent is bound by the BulkRegister.com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (hereinafter the ICANN Policy).

 

On November 13, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 3, 2001 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@aolbox.com by e-mail.

 

A timely Response was received and determined to be complete on December 3, 2001.

 

A timely Additional Submission was received on December 10, 2001.

 

On December 14, 2001 pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Jacques A. Léger Q.C. who accepted to act as Panelist.

 

RELIEF SOUGHT

The Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

Complainant contends that the <aolbox.com> domain name is nearly identical or confusingly similar to Complainant's "AOL" and "AOL.COM" marks. Complainant submits that the use by Respondent of  AOL's famous and distinctive trademarks "is particularly likely" to cause confusion amongst consumers.

 

Complainant claims that the Respondent has no rights or legitimate interests in the domain name.

 

In its Complaint, the Complainant contends that Respondent registered and used the domain name in bad faith. With respect to the "bad faith" aspect of his contention, Complainant argues that: (1) Respondent registered his domain name long after AOL's adoption and use of the "AOL" and "AOL.COM" marks; (2) visitors to the <aolbox.com> site are likely to believe that AOL operates or endorse the search engine; (3) Respondent is using the famous AOL marks to operate a commercial site that routes Internet users to AOL's competitors; (4) most of the search topics provided at <aolbox.com> are identical to those provided by AOL in connection with its search engine services; (5) Respondent's bad faith registration and use of <aolbox.com> is shown by Respondent's history of abusing other entities' trademark rights by virtue of using those marks in domain names.

 

B. Respondent

Respondent contends that the disputed domain name (<aolbox.com>) "is certainly not identical" to Complainant's trade marks. Moreover, he dismisses Complainant's claim of "consumer confusion" on the basis that the "overwhelming fame of the Complainant's name would eliminate any such possibility" and that it's "unlikely that consumers would be confused" on the trade origin of his web site. 

Respondent claims that he has rights and legitimate interests in the domain name. He states that he intends to use the domain name with a community web site "which will offer information about the city of Ann Arbor, Michigan, together with a universal e-mail, voicemail and fax component offering users a single e-mail, voicemail and fax box to consolidate their communications". The Respondent claims that the acronym AOL, in the disputed domain name,  stands for "Arbor On Line".

 

Finally, the Respondent argues that he has not registered and is not using the domain name in bad faith. He explains that Complainant has produced no evidence that he "registered the disputed domain for the purpose of selling, renting, or transferring it to Complainant; to prevent Complainant from reflecting its trademark in a domain name, together with a pattern of such conduct: or to confuse customer's seeking to purchase Complainant's products or services". Essentially, the Respondent submits that the Complainant has not met its burden of proof under ICANN's Uniform Domain Name Dispute Resolution Policy.

 

C. Additional Submissions

In his "Rebuttal to Respondent's Response", the Complainant submits that Respondent has "not yet activated the "aolbox.com" service despite having registered the disputed domain name almost two years ago". For this reason, Complainant considers that there can't be any "use" of the domain name. Moreover, he dismisses the proof of "demonstrable preparation to use the domain name" as insufficient. [ICANN Policy: 4c)(i)]

 

In regards to Respondent's denial of bad faith, the Complainant submits that the Respondent has a pattern of registering domain name incorporating third parties trademarks. He contends that Respondent can't claim to have registered all those domain names in good faith.

 

FINDINGS

The Complainant, America Online Inc. (thereafter AOL), is the owner of numerous trademark registrations worldwide for the mark "AOL", including the following US registrations: 1,977,731 and 1,984,337 registered on June, 4 1996 and July 2, 1996 respectively as it appears from the produced trademark registrations.

 

AOL also owns the mark "AOL.COM" and is using it as a domain name for its web site (trademark registrations Nos. 2,325,991 and 2,325,292).

 

AOL has used and is using extensively its marks in connection with, among other things:

 

"Computer services, namely leasing access time to computer databases, computer bulletin boards, computer networks, and computerized research and reference materials, in the fields of business, finance, news, weather, sports, computing and computer software, games, music, theater, movies, travel, education, lifestyles, hobbies and topics of general interest; computerized dating services; computer consultation services; computerized shopping via telephone and computer terminals in the fields of computer goods and services and general consumer goods" and

 

            "Telecommunications services, namely electronic transmission of data, images, and documents via computer terminals; electronic mail services; and facsimile transmission."

 

The Complainant has used the trademarks "AOL" and "AOL.COM" since at least 1989 for "AOL" and 1992 for "AOL.COM".

 

It is quite obvious that AOL has used extensively and continuously the "AOL" and "AOL.COM" marks over the years. It is also evident that the consumers have associated the AOL marks with the services provided by the Complainant to the internet community.

 

On January 14, 2000, the Respondent registered the domain name <aolbox.com>.

 

On May 9, 2001, the representative of AOL sent a "cease and desist" letter to the Respondent requesting the transfer of the disputed domain name.

 

Yet, after twenty-three months, Respondent has not established the allegedly proposed community web site ("Arbor On Line") in connection with the disputed domain name.

 

DISCUSSION

Pursuant to the Uniform Domain Name Dispute Resolution Policy, the Complainant must convince the Panel of three elements if it wishes to have the domain name transferred. It is incumbent on the Complainant to cumulatively show that :

 

(1) The domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

 

(2) The Respondent has no rights or legitimate interests in respect of the domain name; and

 

(3) The domain name has been registered and is being used in bad faith [ICANN Policy: 4a)].

 

These three elements are considered herein below.

 

(1) Identical and/or Confusingly Similar

On this issue, the Panel is of the opinion that the disputed domain name is confusingly similar to Complainant's registered trademarks for the following reasons.

 

As previously stated, the Complainant has provided evidence to the effect that the registrations in regards to the trademarks "AOL" and "AOL.COM" have been made. Those registrations are sufficient to establish prima facie the rights of the Complainant over the said trademarks.

It has been recognized in previous UDRP decisions that  "the addition of a word or an acronym to a mark in constructing the SLD does not alter the fact that the domain name is confusingly similar to the mark to which the word or acronym has been appended. SGS Societe Generale de Surveillance S.A. v. Inspectorate, ICANN Case No. D2000-0025 (<sgsgroup.net>); America Online, Inc. v. Pedro Alex Jimenez, ICANN Case No. D2000-0991 (<aolmex.com>); America Online, Inc. v. Pablo Barrutia, ICANN Case No. FA 94265 (<aolmoviefone.com>)"[1]. 

 

In the present case, the Respondent has registered the domain name <aolbox.com>. The Panel is of the view that the addition of the word "box", being clearly descriptive and hence not distinctive, is not a sufficient element to "distinguish" Respondent's domain name from Complainant's registered trademarks. This is even more so if one considers the context in which the Respondent projects to use the <aolbox.com> domain name.

 

On one hand, the acronym "AOL" has acquired, for the public, a distinctive meaning, which points out to Complainant's business and services. On the other, the suffix "box" may well refer to a set of services or Internet tools that are used on the net such as search engine, e-mail, fax box, etc…. hence making the association with AOL almost natural.  As stated in Société des Bains de Mer Et Du Cercle Des Étrangers À Monaco v. Global Productions-Domain For Sale, WIPO Case No. D2000-1332, "the words (in that case "monaco" and "gambling") used together create a strong similarity and impression that could easily induce the general public into believing that the domain name, the domain name proprietor and any web site operated from the domain name are associated with the Complainant (owner of the trademark "Casino de Monte-Carlo")". 

 

It is perfectly plausible for a consumer to be confused by the terminology used in the Respondent's domain name. Any Internet user may be led into thinking that the <aolbox.com> web site is provided or endorsed by the Complainant, AOL.

 

(2) Rights or Legitimate Interests

Any of the following circumstances, in particular but without limitation, if found by the Panel, shall demonstrate Respondent's rights or legitimate interests to the domain name:

 

(i) The use 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) The fact that the Respondent has been commonly known by the domain name; or

 

(iii) A legitimate non-commercial 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 [ICANN Policy: 4c)].

 

The Panel finds that the Respondent has not demonstrated the use nor as he shown demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services [ICANN Policy: 4c)(i)]. The disputed domain name has been registered for almost two years (from January 14, 2000 to December 2001) by the Respondent without having been used in connection with such an offer. The panel undertook to verify proprio motu whether the domain name <aolbox.com> is currently in operation, and it seems that no public development of any kind has been made regarding the community web site. The disputed domain name is still linked to a web site operated by an advertising firm,  Overture Networks.

 

The Respondent has submitted to this Panel a plan of the principal proposed features of the "Arbor On Line" web site and a "draft" of home page design. Those elements per se are insufficient to sustain an allegation of "demonstrable preparations to use", especially after a period of "non-use" of almost 2 years. The evidence provided by the Respondent failed to show a serious monetary or intellectual investment, or at least a serious effort to obtain funding for his project of developing a community web site. 

 

The Respondent has submitted to this Panel two decisions in which the panels ruled in favor of other respondents regarding domain names incorporating Complainant's trademarks (America Online Inc. v. Frank Albanese, WIPO Case No. D2000-1604 and America Online Inc. v. Transoceanic Travel, WIPO Case No. D2000-1364). Those decisions can easily be distinguished from the present case. In each of the aforesaid case the respondents had effectively used their domain name (<aoltrader.com> and <aolvacations.com> respectively) in connection with a bona fide offering of goods or services contrary to the Respondent who is still waiting for funding after almost 2 years.

 

Regarding Rule 4(c)(ii), it is not plausible for the Respondent to claim that he has been commonly known by the domain name. The domain name <aolbox.com> would naturally point towards Complainant's business rather than Respondent's alleged proposed web site.

 

Incidentally, the Panel refers to its decision in Pivotal Corporation v. Discovery Street Trading Co. Ltd., WIPO Case No. D2000-0648. As stated therein, once lack of legitimate rights or interest has been sufficiently alleged by a complainant, the failure of respondent to adequately address this issue may authorize the Panel to draw an adverse inference, as the Panel does in the present case (see also[2]). Is the Respondent not the sole party capable to provide evidence on any of the above-mentioned circumstances, which may demonstrate his rights or legitimate interests in the disputed domain name?

 

Having failed to do so the Panel finds that Respondent has no rights or legitimate interests in the domain name.

 

As stated in Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403 "the Panel finds that the respondent has no legitimate rights or interests in that (i) respondent is not a licensee of complainant, nor has he received any permission or consent to use the trademark; (ii) complainant has prior rights in that trademark which precede respondent's registration of the domain name; (iii) respondent is not (either as an individual, business or other organization) commonly known" by the name use ("aolbox") in the disputed domain name.  

 

(3) Registration and Use in Bad Faith

Rule 4(b) of the ICANN Policy states that the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

 

(i) Circumstances indicating that the Respondent has registered or has acquired the domain name primarily for the purpose of selling [...] for a valuable consideration in excess of Respondent's documented out-of-pocket costs directly related to the domain name; or

 

(ii) that the domain name has been registered in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

 

(iii) that the domain name has been registered primarily for the purpose of disrupting the business of a competitor; or

 

(iv) that the domain is used to intentionally attempt to attract, for commercial gain, Internet users to respondent's 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 or of a product or service on  respondent's web site or location.

 

The Respondent registered the domain name in dispute long after the Complainant had adopted and first used its trademarks. When the Respondent registered <aolbox.com>, AOL has already a worldwide reputation as alleged by the Complainant and confirmed in a number of decisions[3]. In all likelihood , Respondent has registered its domain name in order to "sail in the wind" of Complainant's reputation and goodwill. Respondent should have known about Complainant’s trademarks and services at the time it registered the domain name given the "widespread use and fame" of the Complainant’s "AOL" and "AOL.COM" marks[4].

 

Respondent's explanation as to the choice of the acronym AOL ("Arbor On Line") plainly cannot resist the analysis of the additional evidence compiled and produced by the Complainant regarding other domain names registered by the Respondent in the past (<aol-net.com>, <net-aol.com> and <aolsports.com>). This additional evidence submitted by AOL strongly suggests that the Respondent has, through its previous actions, established a registration pattern of domain names which contain renowned trademarks such as "Cosby Show" (<cosbyshow.com>), "Ritz-Carlton" (<ritz-carlton.com>), "Pepto-Bismol" (<pepto-bismol.com>) and even names of city such as Denver (<denvercity.com>), Cleveland (<clevelandcity.com>) ....

 

In America Online Inc. v. iDomainNames.com, Case No.: FA 93766, the Panel found that "Respondent's bad-faith use of the domain name is evidenced by its pattern of registering numerous other domain names on various topics unrelated to iDomain or its owner, many of which on their face appear to infringe upon other famous marks and internet websites.." (such as "007", "Etoys", "Golf USA", "Car USA", ...). In the present case, it seems quite clear that Respondent has, in the past,  registered not only one domain name incorporating Complainant's trademarks but four. The evidence provided to this Panel, as well as the research made proprio motu, seems to establish that the registration of the name <aolbox.com> was made contemporaneously with the possession by the Respondent of an array of domain names containing third parties trademarks. Respondent failed to provide evidence regarding the state of its domain names portfolio and failure to do so leads to a negative inference. Consequently, this Panel finds in favor of the Complainant as to the negative inference to be drawn from the state of Respondent’s portfolio[5].    

 

Lastly, the Panel finds that by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to a third party web site, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the Respondent's web site [ICANN Policy: 4b)iv)]. The Respondent's domain name (<aolbox.com>) routes the visitors to a third party (Overture Networks) web site. The Respondent states in his Response that Overture Networks "provides links to general information and shares advertising revenue with Respondent". It's quite clear that Respondent thus obtains a "commercial gain" from  his association with Overture Networks. It's also clear that there is a "likelihood of confusion" between the disputed domain name and Complainant's trademarks. From all the surrounding circumstances, this Panel concludes that the Respondent "has intentionally attempted to attract, for commercial gain, Internet users" to Overture's web site.  

 

Consequently, this Panel finds that Respondent has registered and used the disputed domain name in bad faith.

 

DECISION

For the foregoing reasons, the Panel concludes that:

-         The domain name registered by the Respondent is confusingly similar to the trademark to which the Complainant has rights;

 

-         The Respondent has no rights or legitimate interests in respect of the domain name; and

 

-         The domain name has been registered and is being used by the Respondent in bad faith.

 

Pursuant to Paragraphs 4(i) of the ICANN Policy, the Panel orders that the domain name <aolbox.com>, registered by Respondent Rao Tella d/b/a Arbor Online Box, be transferred by the Registrar, BulkRegister.com, to the Complainant, America Online Inc.

 

 

Jacques A. Léger Q.C., Panelist

 

Dated: December 28, 2001.