America Online, Inc. v. Bernhard Hieke
d/b/a Archimedis ag
Claim Number: FA0304000154097
PARTIES
Complainant
is America Online, Inc., Dulles, VA,
USA (“Complainant”) represented by James
R. Davis, of Arent Fox Kintner Plotkin & Kahn. Respondent is Bernhard Hieke d/b/a Archimedis ag, Muenchen, GERMANY
(“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <aol.tv>,
registered with The .tv Corporation.
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.
Judge
Irving H. Perluss (Retired) is the Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on April 4, 2003; the Forum received a hard copy of the
Complaint on April 7, 2003.
On
April 10, 2003, The .tv Corporation confirmed by e-mail to the Forum that the
domain name <aol.tv> is
registered with The .tv Corporation and that Respondent is the current
registrant of the name. The .tv
Corporation has verified that Respondent is bound by The .tv Corporation
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 (the “Policy”).
On
April 11, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of May 1, 2003
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@aol.tv by e-mail.
A
timely Response was received and determined to be complete on May 1, 2003.
On May 8, 2003, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the Forum appointed Judge Irving H.
Perluss (Retired) as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
1.
Complainant
America Online, Inc. (“AOL”) is the owner of numerous trademark registrations
worldwide for the mark AOL, including U.S. trademark registration Nos.
1,977,731 and 1,984,337, which were registered on June 4, 1996, and July 2,
1996, respectively. AOL also owns German trademark registrations for the AOL
mark, including registration numbers 39507354 and 39518639, which were issued
on October 27, 1995, and April 1996, respectively. AOL registered and uses its AOL mark in connection, with among
other things, “movies, . . . computerized shopping via telephone and computer
terminals in the fields of computer goods and services and general consumer
goods. . . .”
2.
Respondent
is the owner of the disputed domain name <aol.tv> registered on
August 30, 2002. Respondent’s domain
name registration contains the letters “a-o-l” which are identical to
Complainant’s trademarks and Internet domains, except for the “tv” top level
domain.
3.
Long prior
to Respondent’s registration of the domain name <aol.tv> and at
least as early as 1989 for the mark AOL, and 1992 for the mark AOL.COM, AOL
adopted and began using its marks in connection with computer online services
and other Internet-related services.
The distinctive AOL mark is used and promoted around the world in
connection with providing a broad range of information and services over the
Internet.
4.
AOL has
invested substantial sums of money in developing and marketing its services and
marks. As a result, the AOL brand is
one of the most readily recognized and famous marks used on the Internet. AOL has thirty-five million subscribers, and
operates the most widely-used interactive online service in the world. Each year millions of AOL customers
worldwide obtain services offered under the AOL and <AOL.com> marks and
millions more are exposed to the marks through advertising and promotion.
5.
Respondent
registered and is using the <aol.tv> domain name with the bad
faith intent to capitalize on the famous AOL and AOL.COM marks, and to profit
from international and domestic goodwill AOL has built up in its famous
marks. Respondent also is attempting to
mislead consumers by registering and using a domain name that plays off the
very famous AOL name and mark.
6.
Respondent
has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known as AOL and
he is not licensed or authorized to use the AOL mark.
7.
Respondent
uses an AOL e-mail address for his contact information. Respondent, therefore, is an AOL subscriber
and obviously has actual knowledge of the AOL marks and the services provided
through the AOL service. Accordingly,
Respondent registered the domain name in bad faith with actual knowledge that
his actions violated AOL’s intellectual property rights.
8.
Respondent’s
bad faith use of <aol.tv> is further demonstrated by his use of
the domain name to promote and sell videos.
AOL provides identical services through its AOL.COM and AOL.DE sites,
and on its proprietary AOL service.
Respondent’s attempt to attract Internet users to Respondent’s site for
commercial purposes violates Paragraph 4(b)(iv) of the UDRP. Confusion is particularly likely given that
Respondent is providing online services that are identical to those provided by
AOL and set forth in the federal trademark registrations for the AOL mark.
B.
Respondent
1.
The
disputed domain name, <aol.tv>, was requested at the Registrar All
Of Linux Tele Vision, because Respondent is planning “to combine different GPL
conform open Source Media projects under the LINUX surface and under this
domain.” It is the first Linux media
domain, and has nothing to do with America Online.
2.
Respondent’s
Linux Community is developing all of Linux’s relevant Media software types for
media consumer use, mainly for use in Europe.
Respondent’s distribution of Arc Linux will be the first legal DVD
burner software for Linux users.
3.
Respondent
is making a legitimate use of the disputed domain name because he is developing
“under GPL conform restrictions, against the mainstream of Microsoft Monopol,
and this domain will be used in the LINUX community as a common platform for
HighDefinition Streaming, MPEG 4 AVC developments and the development of MPEG21
for use with metafiles, what is new to the computer user outside of use of
windows.”
4.
Respondent
did not register and is not using the disputed domain name in bad faith. He feels discriminated against by this
allegation and the pressure to respond in a foreign language without having
enough time to obtain the papers properly translated. “It gives not a fair light to this institution.” Respondent never received a letter from
America Online before, nor has anyone contacted Respondent in this matter prior
to commencing this procedure. This
domain was registered by Respondent for the Linux community to prove and show
the capability of Linux in the “commercial” market, and it never was in bad
faith.
FINDINGS AND DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a
complaint on the basis of the statements and documents submitted in accordance
with the Policy, these Rules and any rules and principles of law that it deems
applicable.”
Paragraph
4(a) of the Policy requires that the Complainant must prove each of the
following three elements to obtain an order that a domain name should be
cancelled or transferred:
(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.
Respondent apparently does not disagree
that the disputed domain name is identical and confusingly similar to
Complainant’s marks and domain names.
Indeed, he could not. This is
because but for the “.tv” top-level domain, which is irrelevant for the purpose
of determining whether domain names are identical under the Policy, the
disputed domain name is identical to Complainant’s mark. The addition of a country code top-level
domain, such as “.tv” (representing Tuvalu), fails to create a distinguishing
domain name under Policy Paragraph 4(a)(i).
See World Wrestling Fed’n Entm’t, Inc. v. Rapuano, DTV2001-0010
(WIPO May 23, 2001) (“The addition of the country code top level domain (ccTLD)
designation <.tv> does not serve to distinguish [the disputed domain]
names from Complainant’s marks since ‘.tv’ is a common Internet address
identifier that is not specifically associated with Respondent”); see also
Clairol
Inc. v. Fux, DTV2001-0006 (WIPO May 7, 2001) (finding that the domain
name <clairol.tv> is identical to Complainant’s CLAIROL marks).
The Panel finds that Complainant
satisfied the requirements of Policy ¶ 4(a)(i), showing that the mark and
domain name are identical.
Section
4(c) of the Policy states that Respondent may demonstrate his rights and
legitimate interest in a disputed domain name by any of the following
circumstances, without limitation:
i.
before any
notice to you of the dispute, your use of, 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.
you (as an
individual, business, or other organization) have been commonly known by the
domain name, even if you have acquired no trademark or service mark rights; or
iii.
you are
making a legitimate noncommercial 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.
Respondent
has not demonstrated that it falls into any of these categories. With respect to subparagraph (i), although
he speaks of developing software for open source media using the disputed
domain name, there is no evidence that there were actual demonstrable
preparations by Respondent to use the disputed domain name prior to notice of
the dispute.
There
appears to be no contention that Respondent was “commonly” known by the
disputed domain so as to come within subparagraph (ii). See Tercent Inc. v. Lee Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS
information implies that Respondent is ‘commonly known by’ the disputed domain
name” as one factor in determining that Policy Paragraph 4(c)(ii) does not
apply); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May
16, 2001) (interpreting Policy Paragraph 4(c)(ii) “to require a showing that
one has been commonly known by the domain name prior to registration of the
domain name to prevail”); see also Compagnie de Saint Gobain v. Com-Union
Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate
interest where Respondent was not commonly known by the mark and never applied
for a license or permission from Complainant to use the trademarked name).
With
respect to subparagraph (iii), the Panelist has concluded that because of his
actual and constructive knowledge of Complainant’s marks, Respondent’s primary
motivation in registering the domain name was to profit from the confusion that
would be generated from its use. It
appears that Respondent is seeking to benefit commercially by diverting
unsuspecting Internet users to its website, which sells videos. See Vapor Blast Mfg. Co. v. R & S
Tech, Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that
Respondent’s commercial use of the domain name to confuse and divert Internet
traffic is not a legitimate use of the domain name); see also
Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002)
(finding that, because Respondent’s sole purpose in selecting the domain names
was to cause confusion with Complainant’s website and marks, its use of the
names was not in connection with the offering of goods or services or any other
fair use); see also MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec.
8, 2000) ) (finding no rights or legitimate interests in the famous MSNBC mark
where Respondent attempted to profit using Complainant’s mark by redirecting
Internet traffic to its own website).
The Panel finds that Complainant
satisfied the requirements of Policy ¶ 4 (b)(ii) in showing that Respondent has
no rights or legitimate interest in the domain name.
Respondent was a user of AOL for e-mail
and other services and obviously had actual knowledge of Complainant’s marks.
In any event, Section 4(b) of the Policy
sets forth certain circumstances, without limitation, that shall be evidence of
registration and use of a domain name in bad faith. Subparagraph (iv) of Section 4(b) provides:
by using the domain name, you have intentionally
attempted to attract, for commercial gain, Internet users to your website 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 website or location or of a product or service on your website or
location.
The worlds “source, sponsorship,
affiliation, or endorsement” are particularly
apt here. Inevitably, the
Panelist believes that consumers would conclude that the disputed domain name
was endorsed and sponsored by Complainant.
In addition to the demonstration of bad faith by
Respondent’s actual knowledge of Complainant’s marks and by the application of
subparagraph (iv) of Section 4(b) of the Policy, there is a legal presumption
of bad faith, when, Respondent reasonably should have been aware of
Complainant’s famous and distinctive trademark. This is “constructive bad faith,” and it does not mean that
Respondent is a bad person.
In Interstellar Starship Services, Ltd. v. Epix,
Inc. (CA 9th 1999) 184 F.3d 1107, 1111, it was said:
However, ISS became aware of the ‘EPIX’
trademark when it applied for its own registration of ‘EPIX.’ Adopting a designation with knowledge of its
trademark status permits a p resumption of intent to deceive. See Brookfield,
174 F.3d at 1059 (citing Official Airline
Guides, Inc. v. Goss, 6 F.3d 1385 (9th Cir. 1993)). In turn, intent to deceive is strong
evidence of a likelihood of confusion. Sleekcraft, 559 F.2d at 354.
The “bad faith” prong of the three requisites
for transfer of the disputed domain name has been established.
DECISION
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it is Ordered that the <aol.tv>
domain name be TRANSFERRED from Respondent to Complainant.
Judge Irving H.
Perluss (Retired), Panelist
Dated: May 20, 2003
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