America Online, Inc. v. GO Technology
Corporation
Claim Number: FA0501000403101
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 GO Technology
Corporation (“Respondent”), 720 Kirby Street, Lake Charles, LA 70601.
The
domain name at issue is <laol.net>,
registered with Intercosmos Media Group,
Inc. d/b/a Directnic.com.
PANEL
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her 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 electronically on January
13, 2005; the National Arbitration Forum received a hard copy of the Complaint
on January 18, 2005.
On
January 13, 2005, Intercosmos Media
Group, Inc. d/b/a Directnic.com confirmed by e-mail to the National
Arbitration Forum that the domain name <laol.net>
is registered with Intercosmos Media
Group, Inc. d/b/a Directnic.com and that the Respondent is the current
registrant of the name. Intercosmos Media Group, Inc. d/b/a
Directnic.com has verified that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a
Directnic.com 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
January 19, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of February 8, 2005 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@laol.net by e-mail.
A
timely Response was received and determined to be complete on February 8, 2005.
On February 23, 2005, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed P. Jay Hines as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name 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 on
June 4, 1996 and July 2, 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 and for computerized shopping via telephone and computer
terminals in the fields of computer goods and services and general consumer
goods. The AOL mark is famous and
distinctive for telecommunication 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 web site. It owns U.S.
Trademark Registration Nos. 2,352,291 and 2,352,292 for the mark AOL.COM, both
issued on March 7, 2000.
Complainant
also owns a Federal registration for AOLNET, Registration No. 1,944,167 which
was registered on December 26, 1995.
Complainant’s use of the AOL mark commenced at least as early as 1989
and its use of the AOL.COM mark commenced as early as 1992. The use of the mark AOLNET dates from at
least as early as 1994 in connection with computer software for use in
accessing on-line communication networks.
Complainant
contends that the AOL, AOL.COM and AOLNET marks, due to substantial advertising
and sales, and exposure to millions of Internet users throughout the world,
have become very well-known and famous among members of the purchasing public.
Complainant further contends that many years after the adoption and first use
of the AOL, AOL.COM and AOLNET marks, Respondent registered and used the <laol.net> domain with a bad
faith intent to capitalize on the famous AOL marks and profit from the
Complainant’s international and domestic goodwill. Complainant complains that <laol.net>
is nearly identical and confusingly similar to the AOL, AOL.COM and AOLNET
marks because the domain differs from the AOL marks merely by the single letter
“l.” Further, Complainant contends that
Respondent is using the <laol.net>
domain to provide services identical to those provided by Complainant,
including e-mail, Internet connectivity and related services.
Complainant
contends that Respondent is not commonly known as LAOL, nor is it licensed or
authorized to use a designation comprising the AOL mark.
With
respect to bad faith, Complainant contends that Respondent’s bad faith is
evidenced by the fact that Respondent concedes that he knew of the AOL service
at the time of registering the domain, a time when there were over 5 million
AOL subscribers worldwide. While
Respondent claims that the domain is an acronym for Lake Area Online, the words
do not appear anywhere on Respondent’s site.
Complainant contends that Respondent registered the domain name solely
to play off the famous AOL name and mark, to profit from the consumer confusion
created by the domain and to lure consumers to a competing consumer web
site. Complainant also contends that
Respondent offered to sell the subject domain name to Complainant.
B.
Respondent
Respondent
claims that the original registering company, Lake Area Online, Inc., started
out in the mid 1980’s as a non-profit communications network in the Lake
Charles, Louisiana area, also commonly referred to as the “Lake area.” It offered phone access, satellite packet
internet e-mail, news groups and other features.
In
the early to mid 1990’s, the system was downed in order that the system
operator could seek to open a local ISP, which incorporated in mid 1996 under
the name Lake Area Online, Inc. The
domain name <laol.net> was
created on August 29, 1996. Lake Area
Online never provided any proprietary content or services but operated only as
an ISP providing standards-based unrestricted access to the Internet.
In
mid 1999, Lake Area Online changed its name to Lightwire Technologies and later
issued Lightwire.net e-mail addresses to its customers. However, for those that did not want to
change their e-mail addresses, they continued using <laol.net> e-mail addresses.
On February 1, 2000, one of the co-founders of Lake Area Online, Inc.
d/b/a Lightwire Technologies, David C. Wynn, left the management of the company
to start Go Technology Corporation, which provides web design, Internet
marketing and premium hosting services.
Go Technology Corporation assumed the management of the domains owned by
Lake Area Online around March 2002, when Lake Area Online, Inc. d/b/a Lightwire
Technologies sold all of its Internet access dial-up e-mail customers to
Accesscom located in New Orleans. Lake
Area Online, Inc. now operates as Lightwire Technologies. None of the noted companies uses the name
Lake Area Online or the <laol.net>
domain name in any marketing or advertising and they have not done so for 5-6
years. The <laol.net> domain name is maintained as a convenience to
legacy customers still using original <laol.net>
e-mail addresses through Accesscom.
Respondent
contends that it and the original registering company have every right to use
an acronym for their company name and Respondent contends that Complainant has
provided no evidence that the subject domain causes or has caused any confusion
on the part of the public between Complainant and Respondent. Respondent contends that it was a natural
choice for Lake Area Online to use an acronym for a name that had been in use
for many years before Complainant’s first use of AOL.
Respondent
contends that no one would accidentally or intentionally type “LAOL.NET” when
seeking Complainant’s site. Further, if
they did, they would immediately distinguish the respective sites due to the
different presentations of the respective marks.
Respondent
has made no attempt to emulate America Online in any fashion and there is no
evidence of an intent to deceive or confuse.
Respondent contends that the “offer to sell” was made only after
Complainant offered to buy the domain for a minimal amount. Respondent contends that the history that it
provided explains why “Lake Area Online” no longer appears on the current site,
with the domain name retained as a benefit to legacy customers. Respondent contends that its history
demonstrates that it was using the domain name in conjunction with a bona fide
service for a period of over 9 years before the filing of the dispute pursuant
to Policy Paragraph 4(c)(i) and that Lake Area Online has been commonly known
by and associated with the domain name <laol.net>
pursuant to Policy Paragraph 4(c)(ii).
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 name by Respondent in 1996. Complainant has also established its rights
in the mark AOLNET which differs from the subject domain name merely by the
added letter “l.” The subject domain
name incorporates Complainant’s entire mark and it has been held that the
addition of a single letter does not create a distinct mark overcoming a claim
of confusing similarity. Canadian Tire Corp. v. 849075 Alberta Ltd.,
D2000-0985 (WIPO Oct. 19, 2000) (finding that the domain names
<ecanadiantire.com> and (e-canadiantire.com> are confusingly similar
to CANADIAN TIRE’s trademarks); 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).
Given the fame of Complainant’s marks,
the use of <laol.net> clearly
implies at a minimum that the domain and its user are affiliated in some way
with AOL or that AOL endorses this use of its mark. Respondent’s observation that Internet users would not use the URL
www.laol.net to reach Complainant’s
web site does not adequately address the issue of Internet user confusion since
Internet users are likely to conclude that the web site and business are
associated with Complainant and Internet users will be misled as a
consequence. America Online, Inc. v. Informatics, Inc., FA 104570 (Nat. Arb.
Forum March 25, 2002); America Online,
Inc. v. Steven S. Lalwani, D2001-0835 (WIPO Sept. 2, 2001). This is sufficient to demonstrate confusing
similarity.
Respondent has put forth a plausible
explanation for the selection of the domain name to represent the ISP it
created in the Lake Charles region of Louisiana. A Google search confirms that southwest Louisiana is known as the
“Lake Area.” Respondent has also put
forth a plausible explanation for retaining the <laol.net> domain name, even though the entities associated
with its use have changed over time.
However, by its own admission, it was aware of AOL and AOL.COM at the
time of registering the subject domain.
It is well established that registering a
domain name which is identical or confusingly similar to a third party’s mark,
and then using the domain name to market goods or services that compete with
those offered under the third party’s mark, is not a bona fide offering of
goods or services pursuant to Policy Paragraph 4(c)(i). Ameritrade
Holdings Corp. v. Polansky, FA 102715 (Nat. Arb. Forum Jan. 11, 2002)
(Respondent’s use of the disputed domain name to redirect users to a site
offering services relating to and competing with Complainant’s site cannot be
deemed a bona fide offering of goods or services under Policy Paragraph
4(c)(i). See also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat Arb.
Forum June 23, 2003) and C&E Fein
GmbH & Co. v. Mirrendorf, FA 183729 (Nat Arb. Forum Oct. 1, 2003).
The Panel finds that there is overlap in
the online services provided by the respective parties. Accordingly, precedent compels the Panelist
to find that Respondent is not using the domain name in connection with a bona
fide offering of goods or services pursuant to Paragraph 4(c)(i) of the Policy.
Respondent has demonstrated that the
original Registrant of the subject domain was Lake Area Online, Inc. It has also demonstrated that the subject
domain name has been retained as a courtesy to past customers even though the
original Registrant has not operated under the name “Lake Area Online” for many
years. However, Respondent has failed
to demonstrate that any entity has ever been, or is now, commonly known as LAOL
or “LAOL.NET.” Accordingly, the Panel
finds that Policy Paragraph 4(c)(ii) has not been met.
Because of the commercial nature of
Respondent’s use of the disputed domain name, Policy Paragraph 4(c)(iii) is
inapplicable. Avery Dennison Corp. v. Steele, FA 133626 (Nat. Arb. Forum Jan. 10,
2003); Nike, Inc. v. Dias, FA 135016
(Nat. Arb. Forum Jan. 7, 2002).
The circumstances do not indicate that
Respondent registered or acquired the domain name primarily for the purpose of
selling, renting or otherwise transferring the domain name registration to the
Complainant. The negotiations with
respect to a transfer in this instance were solicited. Thus, the Panel finds no bad faith pursuant
to Policy Paragraph 4(b)(iii).
Likewise, there is no evidence of a
pattern on the part of Respondent of registering domain names in order to
prevent the owner of the trademark or service mark from reflecting its mark in
a corresponding domain name. Thus, the
Panel finds no bad faith pursuant to Policy Paragraph 4(b)(ii).
Similarly, there is no evidence that
Respondent, over the course of nine years, acted in any way to disrupt the
business of Complainant. Accordingly,
the Panelist finds no bad faith pursuant to Policy Paragraph 4(b)(iii).
As in America
Online v. Viper, D2000-1198 (WIPO Nov. 28, 2000), an Internet user entering
the subject domain is more likely than not expecting to arrive at a web site
hosted by Complainant. Complainant’s
web site 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 before the subject domain name. 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 name at issue was 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 Paragraph
4(b)(iv).
However, the record indicates not only
that Respondent or its predecessor used the name Lake Area Online prior to use
of America Online, but also that there has been no confusion for a period of 9
years. Further, Complainant has waited
that many years to take action with respect to the subject domain. While the Policy does not provide for the
equitable defense of laches, the absence of any complaint over a long period of
time in which domain names are in active use can suggest that such use does not
give rise to a serious problem. Meat and Livestock Comm’n v. Pearce,
D2003-0645 (WIPO Oct. 27, 2003).
Complainant does not explain why it has waited such a long time to try
and resolve the dispute. Bosco Prod., Inc. v. Bosco email Servs.,
FA94828 (Nat. Arb. Forum June 29, 2000) (No explanation of four year
delay). There is nothing in the record
regarding the Respondent’s activities in connection with the domain name and
the corresponding web site that give rise to a presumption of an intent to
redirect Internet traffic for commercial gain.
Accordingly, the Panelist finds that Complainant’s inaction for
approximately 9 years since Respondent registered the subject domain name
implies that Respondent does not have the requisite bad faith intent pursuant
to Policy Paragraph 4(b)(iv). New Piper Aircraft, Inc. v. Piper.com,
FA 94367 (Nat. Arb. Forum May 2, 2000) (stating that Complainant’s failure to
initiate a suit in over 2 years indicated that Complainant did not believe that
Respondent intended to attract customers through confusion); see also Square Peg Interactive Inc. v. Naim
Interactive Inc., FA 209572 (Nat. Arb. Forum Dec. 29, 2003) (although
laches by itself is not a defense to a complaint brought under the Policy,
Complainant’s delay in seeking relief is relevant to a determination of whether
Respondent has been able to build up legitimate rights in the name in the
interim, and whether it is using the domain name in bad faith.”), both
preceding cases cited in Twindent AB v.
twinkles.com, FA 391308 (Nat. Arb. Forum Feb. 11, 2005). Accordingly, the Panelist finds that Complainant
has failed to meet its burden with respect to demonstrating the domain name has
been registered and is being used in bad faith.
DECISION
Not
having established all three elements required under the ICANN Policy, the
Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <laol.net>
domain name remain with the Respondent.
P. Jay Hines, Panelist
Dated: March 9, 2005
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