America Online, Inc. v. Autoleasing On
Line
Claim Number: FA0311000209904
PARTIES
Complainant
is America Online, Inc., Dulles, VA (“Complainant”) represented by James R. Davis, of Arent Fox Kintner Plotkin & Kahn,
1050 Connecticut Avenue, NW, Washington, DC 20036. Respondent is Autoleasing
On Line, Dearborn, MI (“Respondent”) represented by Joseph F. Page, of Cox, Hodgman &
Giarmarco, P.C., 101 West Big Beaver, Tenth Floor, Troy, MI 48084.
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <aolleasing.com>
and <aollease.com>, registered with Network Solutions, 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.
P.
Jay Hines as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on November 10, 2003; the Forum received a hard copy of the
Complaint on November 12, 2003.
On
November 13, 2003, Network Solutions, Inc. confirmed by e-mail to the Forum
that the domain names <aolleasing.com>
and <aollease.com> are registered with Network Solutions, Inc.
and that the Respondent is the current registrant of the names. Network Solutions, Inc. has verified that
Respondent is bound by the Network Solutions, 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 (the
“Policy”).
On
November 14, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of December 4, 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@aolleasing.com and postmaster@aollease.com
by e-mail.
A
timely Response was received and determined to be complete on December 3, 2003.
On December 29, 2003, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the Forum appointed P. Jay Hines as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant
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, issued in
1996. Complainant uses the AOL mark in
connection with computer services, namely, leasing access time to computer
databases, computer bulletin boards, computer networks, and computerized
research and reference materials in numerous fields including travel and for
computerized shopping via telephone and computer terminals. The AOL mark is famous and distinctive for
telecommunications services, namely, electronic transmission of data, images
and documents via computer terminals; electronic mail services; and facsimile
transmission.
Complainant
uses its AOL.COM domain name and mark in connection with the official AOL
Internet website. It owns U.S.
Trademark Registration Nos. 2,325,291 and 2,325,292 for the mark AOL.COM.
Complainant
has approximately 35 million subscribers and operates the most widely-used
interactive online service in the world.
Complainant spends millions of dollars annually in advertising its marks
and services throughout the United States and the world. Sales of services under the marks have
amounted to many billions of dollars.
As a result, the general public associates the AOL names and marks with
Complainant’s online services.
Long
before Respondent registered the domain names <aolleasing.com> and <aollease.com>,
Complainant used its mark for computer online services and other
Internet-related services, including providing information and services related
to automobile purchasing and leasing.
Complainant contends that the subject domain names are merely identical
and confusingly similar to the AOL and AOL.COM marks as Respondent has merely
added descriptive or generic words to the famous AOL mark in connection with
providing information and services related to automobile leasing.
Complainant
has not authorized Respondent to use the AOL mark and Respondent is not named
or commonly known as AOL Leasing or AOL Lease.
In fact, once consumers reach Respondent’s website, there is no
reference to either AOL or Autoleasing On Line. Respondent promotes its services as WELEASEBYTEL. Accordingly, Respondent has no rights and
legitimate interests in the domain names.
Complainant
asserts that the subject domain names are not appropriate acronyms for the
pseudonym “Autoleasing On Line” as the name does not abbreviate to “AOL
Leasing” or AOL Lease” because the “leasing” portion precedes the “On Line”
suffix.
With
respect to bad faith, Complainant alleges that Respondent registered and uses
the domain names with an intent to capitalize on Complainant’s famous names and
marks and to profit from the international domestic goodwill Complainant has
established in those marks. Respondent
is also seeking to mislead consumers by registering and using domain names that
play off the famous marks. Both domains
route to Respondent’s commercial site at <weleasebytel.com>. Use of the domains to direct Internet
traffic to Respondent’s commercial online services that make no reference to
AOL or Autoleasing On Line constitutes bad faith. Complainant also asserts that the registration of two AOL-based
domains demonstrates a pattern in violation of Policy ¶ 4(b)(ii). Respondent is unable to claim that it had no
knowledge of Complainant’s rights in its famous AOL marks. Finally, Respondent cannot claim a
legitimate noncommercial or fair use of the subject domains.
B.
Respondent
Respondent
denies that there is any confusion between the domain names including the
letter string “aol” and Complainant’s name and mark. To support this, Respondent states that there is no mention of
AOL on its website and that, over the past three years of use, no one has ever
indicated that they thought they were signing on to AOL.
Respondent
also seeks to distinguish the respective services, indicating that it is in the
business of leasing automobiles while Complainant, an Internet access provider,
is not. Advertising pertaining to
automobile leasing on Complainant’s website is not the same as leasing
automobiles, and none of the advertisers use the designation “aol” as a mark or
domain name address for leasing or selling cars. Respondent risks the loss of existing customers and potential new
customers were it to cede the domain names to Complainant.
Respondent
states that as an accommodation to Complainant it has already discontinued its
use of <aolleasing.com> in
connection with any future advertising.
Respondent asserts that the exhibits submitted with the Complaint
demonstrate that there has been no attempt by Respondent to mislead anyone or
imply any connection with Complainant or any of its businesses. Respondent asks that the Complaint be denied
or, in the alternative, that Respondent be permitted to continue to use the two
domain names with the stipulation that they will not be used in additional advertising
and that Respondent will adopt and exclusively use another domain name that
does not contain the letters “aol.”
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.
Complainant has established its rights in
the marks AOL and AOL.COM, both of which were well-known prior to the
registration of the subject domain names by Respondent. The subject domain names incorporate
Complainant’s entire mark and add the descriptive terms “lease” and “leasing.” The addition of such descriptive terms are
insufficient to avoid a potential for confusion, particularly with respect to
well-known or famous marks. Am. Online, Inc. v. Anytime Online Traffic
School, FA 146930 (Nat. Arb. Forum Apr. 11, 2003). While consumers conducting searches on the
Internet may not believe that Complainant is in the business of leasing
automobiles, it is likely that they would associate Complainant as an online
source of information that sponsors or is associated with the domain names <aolleasing.com> or <aollease.com>. Accordingly, the Panel finds that the
subject domain names are confusingly similar to marks in which the Complainant
has rights.
The owner of the subject domain names is
“Autoleasing On Line.” However, there
is no demonstrated use of “Autoleasing On Line” on Respondent’s website and
Respondent has not claimed or demonstrated that it has been commonly known as
Autoleasing On Line. Indeed, it appears
that Respondent is known as We Lease By Tel or Lease-By-Tel. Accordingly, this case is distinguishable
from Any Time Online Traffic School, supra, (aoltrafficschool.com), in that
here there is little basis for finding that the selection of <aolleasing.com> and <aollease.com> was logical and
justifiable. The Panel places less
weight on the argument that the domain names are inappropriate acronyms for
Autoleasing On Line. Further
distinguishing this case from that of Anytime
Online Traffic School, there is no evidence that Respondent employed a
disclaimer of any affiliation with Complainant. Accordingly, the inference is that no actual or contemplated bona
fide or legitimate use of the contested domain names may be claimed by
Respondent. Use of Complainant’s
well-known marks and the goodwill surrounding those marks as a means of
attracting Internet users even to an unrelated business cannot be considered a
bona fide offering of goods and services.
Am. Online v. Tencent Comm. Corp.
FA 93668 (Nat. Arb. Forum Mar. 21, 2000); U.S.
Franchise Sys. Inc. v. Howell, FA 152457 (Nat. Arb. Forum May 6,
2003).
As in Am.
Online, Inc. v. Viper, D2000-1198 (WIPO Nov. 28, 2000), an Internet user
entering the subject domains is more likely than not expecting to arrive at a
website hosted by Complainant.
Complainant’s website <aol.com> is well known, widely advertised
and “it is well past the day when Internet users would not make the assumption
that use of AOL as part of a domain name links that site in the mind of the
user to Complainant,” supra. Complainant’s marks were registered long
before the subject domain names.
Respondent thus had constructive if not actual knowledge of
Complainant’s rights. Samsonite Corp. v. Colony Holding, FA
94313 (Nat. Arb. Forum Apr. 17, 2000).
These facts suggest that the domain names at issue were selected with an
intent to attract users to Respondent’s site for commercial gain by creating a
likelihood of confusion with Complainant’s marks pursuant to Policy ¶
4(b)(iv).
The Panel does not believe that the
registration and use of two domain names constitutes a showing of a pattern of
conduct pursuant to Policy ¶ 4(b)(ii).
Nor does the Panel believe that Respondent’s intent was primarily for
the purpose of disrupting the business of a competitor pursuant to Policy ¶
4(b)(iii). The Panel finds, however,
that Respondent’s registration and use of domain names confusingly similar to
Complainant’s marks despite knowledge of Complainant’s rights suggest that the
disputed domain names were registered and used in bad faith pursuant to Policy
¶ 4(a)(iv). Am. Online, Inc. v. Advance Membership Servs., Inc., FA 180703
(Nat. Arb. Forum Sept. 26, 2003).
The Panel notes that Respondent’s request
for a conditional ruling in the alternative is beyond the purview of the
remedies available in this proceeding.
DECISION
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <aolleasing.com>
and < aollease.com> domain names be TRANSFERRED from
Respondent to Complainant.
P. Jay Hines, Panelist
Dated: January 9, 2003
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