America Online, Inc. v. Jeffrey Berns
Claim Number: FA0405000273412
PARTIES
Complainant
is America Online, Inc. (“Complainant”),
represented by James R. Davis of Arent Fox PLLC, 1050
Connecticut Avenue NW, Washington, DC 20036.
Respondent is Jeffrey Berns (“Respondent”),
represented by Robert J. Schaap of Law Offices of Robert J. Schaap, 21241 Ventura Boulevard, Suite 188, Woodland Hills, CA 91364.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <aolove.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.
The
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on May 14, 2004; the Forum received a hard copy of the Complaint
on May 17, 2004.
On
May 19, 2004, Network Solutions, Inc. confirmed by e-mail to the Forum that the
<aolove.com> domain name is
registered with Network Solutions, Inc. and that Respondent is the current
registrant of the name. 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
May 20, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of June 9,
2004, 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@aolove.com by e-mail.
A
timely Response was received and determined to be complete on June 9, 2004.
On June 24, 2004, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the Forum appointed the Honorable
Charles K. McCotter, Jr. (Ret.) as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant, America Online, Inc.,
contends that the <aolove.com> domain name is nearly identical and
confusingly similar to the AOL, LOVE@AOL, AOL.COM and
LOVE.COM marks. Consumer
confusion is particularly likely because Respondent is using the very famous
and distinctive mark AOL as a prefix in the domain name that merges the AOL
brand with LOVE. Moreover, the initial
commercial impression of the domain name is that the services provided are part
of the AOL dating network. The AOL
portion of the domain, therefore, is the sole distinctive element and consumers
are likely to recognize the famous AOL mark in connection with the <aolove.com>
domain name and falsely believe that the services provided therein are part of
the extensive AOL dating service.
Moreover, Respondent’s online dating services are identical to those
provided by AOL under its AOL, LOVE@AOL, AOL.COM and
LOVE.COM brands. Respondent,
Jeffrey Berns, registered and uses the <aolove.com> domain with a
bad faith intent to capitalize on the famous AOL,
LOVE@AOL, AOL.COM and LOVE.COM marks, and profit from the international
and domestic goodwill AOL has built up in its famous brands. Respondent has no rights or legitimate
interests in respect to the infringing domain.
Respondent is not licensed or authorized to use the AOL mark, and
Respondent is not commonly known as AOL.
Respondent’s bad faith use of the domain name is demonstrated by his use
of <aolove.com> to provide online dating services that compete
directly with those offered by AOL under its LOVE@AOL, LOVE.COM, AOL and
AOL.COM marks. At various times,
Respondent’s site has used the AOL TRIANGLE LOGO. When counsel for AOL objected, Respondent removed the logo but
continued to promote the site by capitalizing the “AOL” portion of the domain
to emphasize the famous AOL brand, i.e., AOLove.
B. Respondent
Respondent contends as follows:
1. The
<aolove.com> domain name is not identical or confusingly similar
to any of the domains owned by Complainant, i.e., “AOL.COM”; “LOVE.COM”;
LOVE@AOL.COM.
2.
The trademark “AOL” always appears in capital letters, i.e.,
“AOL.COM;” LOVE@AOL.COM, and is distinctive.
The letters “a” “o” and “l,” which are part of the Respondent’s domain
name, <aolove.com> are not necessarily represented in upper
case. They are never distinctive; in
fact, they are never used as an identifier or a title of a website, which is
“An Only Love,” but only as the domain name.
3.
In its registrations, the trademark “AOL” is nearly always
separated from the remainder of the title, i.e., “AOL.COM;” LOVE@AOL.COM. In the few exceptions (i.e, AOLBANK.COM),
the title “AOL” is always an entity of its own, usually accompanying other
whole English words. The letters “a”
“o” and “l,” which are part of the Respondent’s domain name, “aolove.com” are
part of the entire site name, and the expression “aol” cannot be separated from
the domain name, because, by doing so, the word “love” ceases to exist. The word “love,” and not “aol,” is
the centerpiece of the domain name.
4.
Respondent has not attempted to register the
<aollove.com> domain name but was only presently interested in
registering the domain name corresponding to the acronym of the three words “An
Only Love” and, therefore, registered <aolove.com>. Furthermore,
Respondent argues that the <aolove.com> domain name is not
confusingly similar to any of Complainant’s marks, because the domain name is
used to describe Respondent’s pre-existing website “An Only Love.” Thus, Respondent further asserts that the
AOL mark itself is not contained in the disputed domain name as the “l” is not
separate from the word “love,” which is part of the title of the website.
5. LOVE.COM does
not even contain the letters “AOL.” Complainant seems to allege that it owns
the rights to the work “Love.” Respondent does not contest that Complainant
has rights in the AOL mark. However,
Respondent asserts that AOL does not have rights to the word “love,” as it is a
generic term that bears no relation to Complainant’s AOL mark.
6.
Complainant suggests that no one can register or use a
domain name comprised of the letters “aol” along with other letters.
7.
Respondent has a legitimate interest in the <aolove.com>
domain name.
8.
Respondent only registered the <aolove.com>
domain name while involved in discussions with Complainant about a potential
co-branding arrangement.
9.
Respondent has been in the dating service business since
September 1996, and he began using his mark “An Only Love” in 2003.
10. The <aolove.com> domain name
was not registered or used in bad faith.
11.
Respondent
expended a substantial amount of time, effort and money in attempting to obtain
a co-branded web site which would be suitable to both AOL and Respondent. After devoting almost seven months to this
effort, AOL abruptly terminated any further discussions. In offering to sell the domain name to
Complainant for $50,000, Respondent was seeking reimbursement for all of the
time, effort and money it would not otherwise have expended, except for the
encouragement of AOL. The <aolove.com>
domain name is valuable to Respondent because it contains the name of his
enterprise.
FINDINGS
1.
Complainant
owns the AOL, LOVE@AOL, AOL.COM and LOVE.COM marks. The marks are used in connection with, among other things,
providing a wide variety of goods and services on the Internet, including
online dating services.
2.
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.
3. AOL uses its LOVE@AOL, LOVE.COM and
AOL.COM marks in connection with providing online dating services. AOL owns United States federal trademark
registration Nos. 2,317,490 and 2,325,078 for the LOVE@AOL mark; Reg. No.
2,836,717 for the LOVE.COM mark; and Reg. Nos. 2,325,291 and 2,325,292 for the
AOL.COM mark. The AOL mark is used
extensively in connection with these marks and services to promote AOL's
services. As a result, consumers associate
the AOL mark, when used in a domain name.
4. Long prior to Respondent’s registration of
the <aolove.com> domain name, and at least as early as 1989 for
the AOL mark, 1992 for the AOL.COM mark, 1996 for the LOVE@AOL mark, and 2003
for the LOVE.COM mark, 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 and at the proprietary AOL online
system. AOL has used its famous and
distinctive marks continuously and extensively in interstate and international
commerce in connection with the advertising and sale of its Internet and
computer-related services.
5. 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 on the Internet.
6.
With tens
of millions of users, AOL operates the most widely-used interactive online
service in the world and each year millions of AOL customers worldwide obtain
services offered under the AOL, LOVE@AOL, AOL.COM and
LOVE.COM marks; millions more are exposed to said marks through
advertising and promotion.
7.
Respondent,
an AOL user with an AOL e-mail address, had actual knowledge of AOL’s trademark
rights at the time he registered the <aolove.com> domain
name.
8.
AOL’s
counsel spoke with Respondent’s attorney in an attempt to resolve this matter
amicably. During a telephone
conversation, Respondent’s counsel explained that his client would be willing
to transfer the domain name if AOL paid $50,000. That amount is far beyond Respondent’s actual out-of-pocket
registration fees.
9.
In about
1996, Respondent started a dating service using media such as the Internet,
telephone and fax. In about July 2003,
Respondent also developed the terminology “An Only Love” which included a
design of a heart with a halo surrounding the heart and the words “An Only
Love” extending through the middle of the heart.
10.
Respondent
contacted AOL about a co-branding arrangement and spoke with the AOL
representative Eric Thorne, who was the Interactive Marketing Director of
AOL. Mr. Thorne was interested in
Respondent’s proposal. Numerous
discussions between Complainant and Respondent occurred about a co-branding
arrangement.
11.
In
connection with the potential co-branding arrangement with AOL, Respondent
registered the <aolove.com> domain name on August 15, 2003. Thereafter, Respondent registered the
<anonlylove.com> domain name on April 7, 2004.
12. In about September 2003, Mr. Thorne
terminated his employment with AOL. In
January 2004, Respondent was informed that AOL was no longer interested in
pursuing any co-branding arrangement.
After terminating the discussions with Respondent regarding co-branding,
AOL’s counsel demanded that Respondent “deactivate and transfer” its domain
name to AOL without compensation.
Respondent refused to transfer the domain name to AOL.
13. Respondent uses the
<aolove.com> domain name to offer dating services on the “An Only
Love” website located at the disputed domain name as well as at the
<anonlylove.com> domain name.
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; and
(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 rights under Policy ¶
4(a)(i) in the AOL (Reg. No. 1,977,731 issued June 4, 1996), LOVE@AOL (Reg. No.
2,317,490 issued February 15, 2000), LOVE.COM (Reg. No. 2,836,717 issued April
27, 2004), and AOL.COM (Reg. No. 2,325,292 issued March 7, 2000) marks by
registering them with the U.S. Patent and Trademark Office and through
continuous use. See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16,
2002) (“Under U.S. trademark law, registered marks hold a presumption that they
are inherently distinctive and have acquired secondary meaning.”); see also
Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that
registration of a mark is prima facie evidence
of validity, which creates a rebuttable presumption that the mark is inherently
distinctive. Respondent has the burden
of refuting this assumption).
Respondent’s <aolove.com> domain name is
confusingly similar to Complainant’s AOL and LOVE.COM marks because the domain
name is a combination of those two marks, deviating only by the deletion of the
letter “l.” The combination of
Complainant’s marks and the deletion of one letter constitute confusing
similarity pursuant to Policy ¶ 4(a)(i).
See Nintendo of Am. Inc v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000)
(finding confusing similarity where Respondent combined Complainant’s POKEMON
and PIKACHU marks to form the <pokemonpikachu.com> domain name); see
also Am. Online, Inc. v. Anytime Online Traffic School, FA 146930 (Nat.
Arb. Forum Apr. 11, 2003) (finding that Respondent’s domain names, which incorporated Complainant’s entire mark and
merely added the descriptive terms “traffic school,” “defensive driving,” and
“driver improvement” did not add any distinctive features capable of overcoming
a claim of confusing similarity); see also Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13,
2000) (finding that a domain name which differs by only one letter from a
trademark has a greater tendency to be confusingly similar to the trademark
where the trademark is highly distinctive).
Furthermore,
Respondent’s <aolove.com> domain
name is confusingly similar to Complainant’s AOL mark. Respondent has only
added the letters “ove” to Complainant’s famous AOL mark, which remains the
distinctive feature of the domain name.
This minor variation is insufficient to defeat a finding of confusing
similarity pursuant to Policy ¶ 4(a)(i).
See Am. Online, Inc. v.
iDomainNames.com, FA 93766 (Nat. Arb. Forum Mar. 24, 2000) (finding that
Respondent’s domain name <go2AOL.com> was confusingly similar to
Complainant’s AOL mark); see also Arthur
Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar.
23, 2001) (finding confusing similarity where the domain name in dispute
contains the identical mark of the Complainant combined with a generic word or
term). In a case involving a domain
name nearly identical to the subject domain name, the Panel held that <aollovers.com>
was confusingly similar to the AOL mark.
See Am. Online, Inc. v. Steven Brom, FA105855 (Nat. Arb.
Forum April 18, 2002).
The Panel finds that Policy ¶ 4(a)(i) has
been satisfied.
.
Respondent is
not commonly known by the <aolove.com> domain name. Therefore,
Respondent lacks rights and legitimate interests in the domain name pursuant to
Policy ¶ 4(c)(ii). See Gallup
Inc. v. Amish Country Store,
FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have
rights in a domain name when Respondent is not known by the mark); see also
Compagnie de Saint Gobain v. Com-Union
Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate
interests where Respondent was not commonly known by the mark and never applied
for a license or permission from Complainant to use the trademarked name).
Respondent’s
<aolove.com> domain name is linked to a website that competes with
Complainant’s matchmaking services offered in association with Complainant’s
marks. Respondent uses Complainant’s
well-known marks to attract Internet users and divert them to a competing
website that displayed Complainant’s triangle logo. Respondent’s use of a domain name confusingly similar to
Complainant’s mark to divert Internet users to Complainant’s competitors does not
constitute a bona fide offering of goods or services pursuant to Policy ¶
4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶
4(c)(iii). See Am. Online, Inc. v. Fu, D2000-1374 (WIPO
Dec. 11, 2000) (“[I]t would be unconscionable to find a bona fide offering of
services in a respondent’s operation of [a] web-site using a domain name which
is confusingly similar to the Complainant’s mark and for the same business.”); see
also Am. Online Inc. v. Shenzhen JZT
Computer Software Co., D2000-0809 (WIPO Sept. 6, 2000) (finding that
Respondent’s operation of a website offering essentially the same services as
Complainant and displaying Complainant’s mark was insufficient for a finding of
bona fide offering of goods or services);
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 Nike, Inc. v. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no
rights or legitimate interests where one “would be hard pressed to find a
person who may show a right or legitimate interest” in a domain name containing
Complainant's distinct and famous NIKE trademark).
Accordingly,
the Panel finds that Complainant has established Policy ¶ 4(a)(ii).
Respondent
registered the <aolove.com> domain name solely for the purpose of
selling, renting, or otherwise transferring the domain name registration to the
Complainant for the amount of $50,000, which is in excess of Respondent’s
out-of-pocket costs. Therefore, Respondent
registered and used the disputed domain name in bad faith pursuant to Policy ¶
4(b)(i). See World Wrestling Fed’n Entmt., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000)
(finding that Respondent used the domain name in bad faith because he offered
to sell the domain name for valuable consideration in excess of any
out-of-pocket costs); see also Dynojet
Research, Inc. v. Norman, AF-0316 (eResolution Sept. 26, 2000) (finding
that Respondent demonstrated bad faith when he requested monetary compensation
beyond out-of-pocket costs in exchange for the registered domain name).
Respondent
was aware of Complainant’s rights in its marks and nevertheless registered the <aolove.com>
domain name primarily for the purpose of attracting Internet users interested
in Complainant’s services to Respondent’s competing website. Respondent’s use of a confusingly similar
domain name to disrupt the business of a competitor is evidence of bad faith
registration and use pursuant to Policy ¶ 4(b)(iii). See Lubbock Radio
Paging v. Venture Tele-Messaging, FA 96102 (Nat. Arb. Forum Dec. 23, 2000)
(concluding that domain names were registered and used in bad faith where
Respondent and Complainant were in the same line of business in the same market
area); see also EBAY, Inc. v.
MEOdesigns, D2000-1368 (Dec. 15, 2000) (finding that Respondent registered
and used the domain name <eebay.com> in bad faith where Respondent has
used the domain name to promote competing auction sites).
Respondent
is using the <aolove.com> domain name to intentionally attempt to
attract Internet users to its own website for Respondent’s commercial gain by
creating a likelihood of confusion between Complainant’s marks and Respondent’s
services, thereby constituting bad faith registration and use pursuant to
Policy ¶ 4(b)(iv). See G.D.
Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21,
2002) (finding that Respondent registered and used the domain name in bad faith
pursuant to Policy ¶ 4(b)(iv) because Respondent was using the confusingly
similar domain name to attract Internet users to its commercial website); see
also Am. Online, Inc. v. Tencent
Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith
where Respondent registered and used an infringing domain name to attract users
to a website sponsored by Respondent); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29,
2000) (finding bad faith where the domain name in question is obviously
connected with the Complainant’s well-known marks, thus creating a likelihood
of confusion strictly for commercial gain).
The dominant feature of Respondent’s
infringing domain name is Complainant’s famous and distinctive AOL mark. Respondent had actual knowledge of
Complainant’s rights in the AOL mark prior to registration of the <aolove.com>
domain name. Such opportunistic registration of a domain
name is evidence of bad faith under Policy ¶ 4(a)(iii). See Sony Kabushiki Kaisha v. Inja, Kil,
D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use where it
is “inconceivable that the respondent could make any active use of the disputed
domain names without creating a false impression of association with the
Complainant”); see also Reuters
Ltd. v. Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000) (finding that
Respondent demonstrated bad faith where Respondent was aware of the
Complainant’s famous mark when registering the domain name as well as aware of
the deception and confusion that would inevitably follow if he used the domain
name).
Accordingly,
the Panel finds that Complainant has established Policy ¶ 4(a)(iii).
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 <aolove.com>
domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.)
Dated: July 8, 2004
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