America Online, Inc. v. Ian West d/b/a Art Of
Living
Claim Number: FA0602000638005
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 Ian West dba Art Of Living (“Respondent”), Hamble Court Business Park, Hamble Lane, Hamble SO31 4QJ, GB.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <aol-city.com>,
registered with Computer Services
Langenbach Gmbh d/b/a Joker.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.
Richard Hill as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on February 1, 2006; the National Arbitration Forum received a
hard copy of the Complaint on February 6, 2006.
On February 3, 2006, Computer Services Langenbach Gmbh d/b/a Joker.com
confirmed by e-mail to the National Arbitration Forum that the <aol-city.com> domain name is
registered with Computer Services Langenbach Gmbh d/b/a Joker.com and that the
Respondent is the current registrant of the name. Computer Services Langenbach Gmbh d/b/a Joker.com has verified
that Respondent is bound by the Computer Services Langenbach Gmbh d/b/a
Joker.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 February 7, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of February 27, 2006 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-city.com by e-mail.
A timely Response was received and determined to be complete on February
27, 2006.
On March 6, 2006, Complainant submitted an Additional Submission.
On March 7, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Richard Hill as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant America Online, Inc. ("AOL") states that it is the owner of numerous trademark registrations worldwide for the mark AOL and other marks that incorporate AOL, including U.S. trademark registration Nos. 1,977,731 and 1,984,337 for AOL, which were registered on June 4, 1996 and July 2, 1996, respectively. AOL also owns British trademark registrations for its AOL mark, which were issued in 1995, and numerous other registrations for marks that incorporate AOL, including AOL LIVE!, LOVE@AOL, AOL BANKING CENTER, AOL GAMES, AOL REWARDS and AOL INSIDER.
AOL uses the registered mark AOL.COM in connection with providing services on the Internet. The mark AOL is used extensively at this Web site, which is a significant method of promoting AOL's services. As a result, consumers associate the mark AOL, when used in a domain name, with AOL's services. Many years before Respondent registered the domain name “AOL-CITY.COM” 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.
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. Since long before Respondent registered “AOL-CITY.COM,” AOL started offering real estate services under its AOL and DIGITAL CITY brands.
According to Complainant, it 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.
Complainant alleges that many years after AOL's adoption and first use of its AOL marks, Respondent registered the infringing “AOL-CITY.COM” domain name with a bad faith intent to profit from the confusion that would be generated from this domain.
According to Complainant, the infringing domain is nearly identical and confusingly similar to the AOL and AOL.COM marks. Consumer confusion is particularly likely because Respondent is using the famous AOL mark as a prefix to the generic word “city,” and separating the AOL component from “city” by a hyphen to emphasize AOL.
Further, states Complainant, AOL has been providing, and continues to provide, identical or similar services real estate services under its famous AOL mark, and uses the same branding strategy of placing AOL in front of another term or phrase to provide services, e.g., AOL LIVE!, AOL BANKING CENTER, AOL GAMES, AOL REWARDS and AOL INSIDER.
And, alleges Complainant, Respondent registered and uses the “AOL-CITY.COM” domain with a bad faith intent to capitalize on the famous AOL marks, and profit from the 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.
According to Complainant, Respondent has no rights or legitimate interests in respect to the infringing domain. Respondent (Ian West d/b/a Art of Living) is not commonly known as AOL, nor is he licensed or authorized to use the AOL mark in this manner. The following is evidence of Respondent’s bad faith registration and use of the infringing domain:
(a) Respondent’s bad faith registration is evidenced by the fact that the domain was registered many years after the AOL marks were used and registered, and long after the AOL marks had become famous and well-known to consumers around the world. Respondent therefore registered “AOL-CITY.COM” with actual knowledge of the famous AOL mark and service, and with full understanding that the third party use of an AOL-based domain name would be likely to mislead and confuse consumers. Accordingly, Respondent registered the domain name in bad faith with knowledge that his actions violate AOL’s intellectual property rights.
(b) Respondent’s bad faith use of “AOL-CITY.COM” is demonstrated by his use of the domain to promote a commercial Web site that uses the AOL mark. As noted, the real estate services provided by Respondent at “AOL-City.com” are nearly identical to those provided by AOL via its AOL Real Estate Channel, its DIGITAL CITY brand, and other areas of the AOL service. Respondent’s attempt to attract Internet users to Respondent’s site for commercial purposes violates Paragraph 4(b)(iv) of the UDRP.
(c) Notwithstanding his adoption of the awkward phrase “Art of Living” to justify his bad faith actions, Respondent clearly is using the AOL brand solely in a bad faith attempt to confuse consumers and attract traffic to Respondent’s web site based upon Internet users that erroneously visit the site believing that it is affiliated with or endorsed by AOL. Am. Online, Inc. v. Cucamonga Elec. Corp., FA 103364 (Nat. Arb. Forum, Feb. 26, 2002) (“in this age it is not a coincidence when a firm uses the acronym AOL in any new setting. In the absence of a credible explanation, I will infer that its purpose is to mislead Internet users into thinking that whatever activities are carried on on the site, AOL Inc. has some connection with them”); Am. Online, Inc. v. Viper, D2000-1198 (WIPO Dec. 4, 2000) (“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”); see also Am. Online, Inc. v. Blandshaw, FA 444475 (Nat. Arb. Forum March 25, 2005) (transfer of “AOL-HipHop.com” even though registrant claimed AOL is an acronym for All Online); Am. Online, Inc. v. Inetekk.com, Inc., FA 231685 (Nat. Arb. Forum Jan. 30, 2004) (transfer of "AOLms.com" even though registrant claimed AOL is acronym for Advanced Online Marketing Systems); Am. Online, Inc. v. Hieke d/b/a Archimedis ag, FA 154097 (Nat. Arb. Forum Apr. 11, 2003) (transfer of "AOL.tv" even though registrant claimed AOL is an acronym for All Of Linux); Am. Online, Inc. v. Berns, FA 273412 (Nat. Arb. Forum May 20, 2004) (transfer of "AOLove.com" even though registrant claimed AOL is an acronym for An Only Love); Am. Online, Inc. v. Dolphin @ Heart, D2000-0713 (WIPO Sept. 5, 2000) (transfer of "AOLIreland.com" and other domains even though registrant claimed AOL is an acronym for Always On Line). As with these and many prior cases, Respondent has knowingly and willfully infringed the famous AOL brand, and his attempt to claim AOL is an acronym for Art of Life is not a legitimate defense under the UDRP.
B. Respondent
According to Respondent, the matter before this forum is not unique. America Online’s systematic approach is no stranger to this forum. Arguably, the complainant has been successful in some of its complaints. Research indicates that most of its success is attributed to default decisions, primarily because the average small business either can’t afford to fight the goliath company America Online or simply doesn’t understand the ICANN policy.
Respondent alleges that the disputed domain name is registered to and used exclusively by The Art of Living (City) Ltd, located in London. In London, the Art of Living provides property management services. On the South Coast, the Art of Living provides property sales, lettings and property management services.
According to Respondent, the domain names in dispute are not identical or confusingly similar to America Online’s mark. America Online is relying on a “likelihood” of dilution. In 2003, the United States Supreme Court, in a 9-0 unanimous decision, made it very clear that Federal Trademark Dilution Act requires proof of actual dilution; not a “likelihood” of dilution. The Supreme Court explained that the mere fact that consumers mentally associate the defendant’s mark with that of the plaintiff’s famous mark does not in of itself provide sufficient evidence to establish actionable dilution.
Respondent alleges that AOL CityGuide site is dedicated to local entertainment on the web, covering more than 300 cities nationwide. Its site “Focuses on dining and restaurants, bars and nightlife, tickets, movies, events and the City’s Best, with detailed information like directions, editorial recommendations, event tickets, and user rankings and reviews.” Its keyword is “CityGuide.” Remarkably, it states, “Formerly known as Digital City . . . .” A Google Search reveals that AOL has abandoned the use of Digital City.
Respondent cites cases in which Complaints by AOL were denied, namely Am. Online v. Anytime Online Traffic School, FA 146930 (Nat. Arb. Forum Apr. 11, 2003). In that case, the Panel found that Respondent registered and maintained domain name in connection with a bona fide offering of services. The Panel also took into account that Respondent was using a visible disclaimer on its website to further indicate a bona fide offering of services. See Realmark Cape Harbour L.L.C. v Lewis, D2000-1435 (WIPO Dec. 11, 2000).
In the instant case, the Respondent also has a disclaimer on its home page, which states, “The Art of Living (City) Ltd, is not associated or sponsored in any way by America Online, Inc.”. Upon immediately opening the home page, it is clearly obvious that this website is not related to America Online. The home page is very simple and has very little text. Moreover, a majority of what text is on the home page is dedicated to the disclaimer. This site distraction was added to alleviate AOL’s concerns, a sacrifice that AOL fails to acknowledge in its complaint. Respondent cites Am. Auto. Ass’n Inc. v. AAA Transmission, Inc, FA 109481 (Apr. 17, 2002), in which the Panel stated, “Moreover, the existence of the disclaimer on Respondent’s website is compelling evidence of Respondent’s lack of bad faith”.
Respondent also cites Am. Online, Inc. v. Albanese, D2000-1604 (WIPO Jan. 25, 2001); Am. Online v laol.net, FA 403101 (Nat. Arb. Forum March 9, 2005); and Am. Online, Inc. v. Transoceanic Travel, D2000-1364 (WIPO Jan. 21, 2001), in which Complainant’s request for relief was denied.
According to Respondent, Complainant has also failed to sustain its burden of proving that The Art of Living (City) Ltd does not have any legitimate interest in the domain name. The Art of Living (City) Ltd is an ongoing business, which has a valid right and legitimate interest in respect to its domain name. Prior to notice to Respondent of this dispute, Respondent used the domain name for nearly five years in connection with a bona fide offering of services, within the meaning of Policy ¶ 4(c)(i) of the Policy. The domain name was registered on June 7, 2000 and the Art of Living (City) Ltd commenced trading in July 2000.
Respondent notes that Complainant cites Am. OnLine, Inc. v Cucamonga Elec. Corp., FA 103364 (Nat. Arb. Forum Dec. 26, 2001), when attempting to show no rights to the letters “AOL”. According to Respondent, this case does not apply in this instance, because in the Cucamunga matter, the Respondent failed to offer any reasons as to why they used the letters “AOL”. The panel asked, “What drove it [the Respondent] to employ this famous acronym to describe its business? There is no answer.” This case is distinguished by substantial evidence of a legitimate interest and connection with a bona fide offering of services by The Art of Living (City) Ltd.
According to Respondent, there are no facts or evidence presented by AOL to give rise to its claim that the domain name was registered in bad faith. To the contrary, the respondent registered the domain name in good faith and continues to have a legitimate interest maintaining its domain name, which it has for over six years in the United Kingdom. Merely four years after AOL registered its first domain name (AOL) in America, the Art of Living established its website and registered a domain name utilizing its initials, a common business practice throughout the world. This occurred on another continent of the world during the infancy of the Internet.
According to Respondent, the Complainant alleges but fails to prove “bad faith” throughout their complaint. Several areas were of significant concern because they were mere allegations not backed with evidence or supporting facts. Allegations of “bad faith” require reliable evidence and supporting documents. America Online sets forth their allegations in the form of a boiler-plate claims which invites the panel to indulge in hunches and assumptions rather than facts.
And Respondent cites Am. Online, Inc. v. GO Tech. Corp. FA 403101 (Nat. Arb. Forum Jan. 19, 2005), where the Panel stated,
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 latches, 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. [And] [t]here 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).
C. Additional Submissions
Complainant notes that Respondent
concedes that AOL owns the mark “AOL CityGuide” and also operates a service
called AOL CityGuide at “AOLCityGuide.com.”
By conceding AOL’s ownership of the mark AOL CityGuide, Respondent has
further strengthened AOL’s argument and demonstrated that consumers are likely
to be confused by the nearly identical domain names and real estate services
provided at “AOLCityGuide.com” and “AOL-CITY.COM.”
Complainant
notes that Respondent cites four prior UDRP decisions and claims they are
“identical” to this case. As an initial
matter, the cited cases are anomalies that have been rejected as precedent by
numerous and varied panelists considering similar matters. AOL has prevailed in literally dozens of
similar cases. In its Complaint, AOL
lists numerous representative cases in which UDRP arbitrators have ordered the
transfer of AOL-based domain names despite the registrants’ claims that “AOL”
is merely an acronym for three other words.
That is what Respondent has done here and those are the cases that are
applicable to this dispute. See Am. Online, Inc. v. Cucamonga Elec. Corp. aka Paul Oshideri, FA
103364 (Nat. Arb. Forum Feb. 26, 2002) (“I will say only for this Respondent
that it has unlike others spared me the pathetic attempts to suggest an
unrelated origin for its use of AOL”) [citing other AOL cases].
FINDINGS
Complainant owns a number of registered
trademarks containing the letters AOL.
Complainant uses those marks to provide a wide range of services on the Internet. And Complainant’s marks are very well known around the world.
Respondent has been doing business in London, UK, for nearly five years under the name The Art of Living (City) Ltd., providing commercial real estate services.
Prior to notice to Respondent of this dispute, Respondent used the disputed domain name for nearly five years in connection with a bona fide offering of services.
The web site at the disputed domain name contains the following disclaimer: “The Art of Living (City) Ltd is not associated or sponsored in any way by America Online, Inc.”
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.
The Respondent argues that, in order to find
confusing similarity, this Panel must consider factors that would be considered
by a national court in a trademark infringement action. Such is not the case. It is well established that, under the
Policy, a prima-facie comparison of the disputed domain name with the trademark
suffices to establish confusing similarity.
As the Panel said in Broadcom Corp. v. Becker, FA 98819
(Nat. Arb. Forum Oct. 22, 2001),
The Respondent is under the mistaken impression that this Panel is bound by US trademark law when determining the issue of confusing similarity. Such is not the case. Indeed Paragraph 15(a) of the Policy requires the Panel to:
decide a complaint on the basis of … these Rules and any rules and principles of law that it deems applicable.
That is, the Panel has broad latitude to adopt whatever criterion for confusion that it considers appropriate.
Panels have consistently held that strict application of the confusion criteria arising out of national trademark laws is not appropriate, and that a broader notion of confusion should be used in these proceedings.
This principle is well stated in WIPO case D2000-0047 <eautolamps.com>:
When a domain name incorporates, in its
entirety, a distinctive mark, that creates sufficient similarity between the
mark and the domain name to render it confusingly similar. Accordingly, the
Panel holds that Complainant has satisfied the first prong of the ICANN test.
Furthermore it is clear the mere addition of letters or words to a trademark does not create a distinct mark and results in a domain name that is confusingly similar to the mark in question. See for example the Forum’s case FA0095762 <victoriasecret.com>; WIPO case D2001-0026 <guinessguide.com> (finding confusing similarity where the domain name in dispute contains the identical mark of the Complainant combined with a generic word or term); and WIPO case D2000-1214 <bodyshopdigital.com> (finding that the domain name <bodyshopdigital.com> is confusingly similar to the Complainant’s THE BODY SHOP trademark).
The disputed domain name is clearly confusingly similar to the Complainant’s registered trademarks. Indeed, it is well established that neither the addition of hyphens nor generic terms sufficiently distinguishes a domain name from a mark pursuant to Policy ¶ 4(a)(i). See Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy); 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).
Complainant alleges that Respondent has no
rights or legitimate interests in the disputed domain name, but fails to
fulfill its obligation to prove this point.
Relevant precedent
can be found in Graman USA Inc. v. Shenzhen Graman Indus. Co. FA 133676
(Nat. Arb. Forum Jan. 16, 2003) (finding that absent a showing of any facts by
the complainant that establish the respondent lacks rights or legitimate
interests in the disputed domain name, the panel may decline to transfer the
disputed domain name).
Furthermore, Respondent argues convincingly that it registered and is using the disputed domain name to provide bona fide goods and services. This establishes a legitimate interest in accordance with 4(c)(i) and (ii) of the Policy. Indeed, Respondent contends that it has been using the disputed domain name for over five years in connection with its commercial real estate business. See Russell & Miller, Inc. v. Dismar Corp., FA 353039 (Nat. Arb. Forum Dec. 20, 2004) (finding that the respondent used the <salesigns.com> domain name for a bona fide offering of goods or services, which was established by the respondent’s “longstanding involvement in the ‘sale sign’ market and its use of a descriptive domain name to further its competition in that market”); see also Modern Props, Inc. v. Wallis, FA 152458 (Nat. Arb. Forum June 2, 2003) (finding that the respondent’s operation of a bona fide business of online prop rentals for over two years was evidence that the respondent had rights or legitimate interests in the disputed domain name).
Complainant alleges that Respondent’s use of the contested domain name cannot be legitimate because it causes consumer confusion since the Complainant owns the trademark AOL CityGuide and provides real estate services at the web site <aolcityguide.com>. While consumer confusion could certainly lead the Panel to conclude that use of a web site is not legitimate, Complainant’s site appears to be an entertainment guide for US cities, whereas Respondent’s site appears to offer real estate services in the UK. Thus, it is not immediately obvious that consumers would be confused with respect to the two sites. And to further reduce the risk of confusion, Respondent has placed a disclaimer on the home page of its web site. Complainant has provided no evidence of consumer confusion. For these reasons, the Panel cannot accept the Complainant’s submission that Respondent’s use of the contested domain name is not legitimate because it causes confusion.
Further, it is
beyond the scope of this Panel to determine—apart from a clear and obvious prima
facie case (such as use of a well-known commercial name to point to an
adult entertainment site), which is not apparent here—whether Respondent’s use
of the contested domain name might violate US or UK trademark or unfair competition
law. Such issues should be addressed by
the competent national courts.
The Panel holds that the Respondent has a
legitimate interest, in the narrow sense of the Policy, in the disputed domain
name.
Complainant alleges that Respondent
registered and used the disputed domain name in bad faith, but fails to provide
any evidence to that effect.
On the contrary, Respondent argues
convincingly that it registered and is using the domain name in good faith, to
provide bona fide goods and services.
And, as evidence of good faith, it points out that it has placed a
disclaimer on its web site, to make it clear that there is no association with
the Complainant.
See Am. Online, Inc. v. Cucamonga Elec. Corp. aka Paul Oshideri, FA 103364 (Nat. Arb. Forum Feb. 26, 2002). But that case must be distinguished from the present case, because in that case the Respondent had given no reason whatsoever for the use of the letters “AOL” in the disputed domain name. In the present case, the Respondent has explained that the letters are the acronym for its name, Art of Living, Ltd.
Complainant cites seven cases in which it was the Complainant, and which are similar to the present case, and in which relief was granted. In one of those cases, there was no response, so that case must be distinguished from the present case. In the six cases where there was a response, the explanations given by the Respondent with respect to the use of the letters “AOL” were considerably less plausible than the explanation given in the present case.
Respondent cites five cases filed by the Complainant, which are similar to the present case and in which relief was denied.
Thus, on the basis
of the cited cases, it appears that, if a Respondent can give a plausible
explanation, backed by some evidence, for its use of the letters “AOL”, then
relief will be denied. Such is the
situation in the present case.
The Panel holds that the Complainant has
failed to satisfy its burden of proving the element of bad faith registration
and use. See Starwood
Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat.
Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that
respondent registered and used the disputed domain name in bad faith because
mere assertions of bad faith are insufficient for a Complainant to establish
Policy ¶ 4(a)(iii)).
DECISION
For the reasons given above, the Panel concludes that relief shall be DENIED. The Complaint is dismissed.
Richard Hill, Panelist
Dated: March 20, 2006
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