America Online, Inc. v Avrasya Yayincilik Danismanlik Ltd.

THE NATIONAL ARBITRATION FORUM

P. O. BOX 50191

MINNEAPOLIS, MINNESOTA 55405 USA

America Online, Inc.
22000 AOL Way
Dulles, VA 20166

COMPLAINANT,

vs.

Avrasya Yayincilik Danismanlik Ltd.
Mecidiye Cad. Adiguzel Pasaji No. 14/3
Mecidiyekoy
Istanbul, TURKEY 08310

RESPONDENT.

DECISION
Domain Name Dispute
Forum File No.FA0002000093679

The above-entitled matter came on regularly for an administrative hearing on March 15, 2000, before the undersigned, on the Complaint of America Online, Inc., hereinafter "Complainant," against Avrasya Yayincilik Danismanlik Ltd., hereinafter "Respondent." Upon the written submitted record, the following DECISION is made:

PROCEDURAL FINDINGS

Domain Names: americaonline.net

americanonline.com

Domain Names Registrar: Network Solutions

Domain Names Registrant: Avrasya Yayincilik Danismanlik Ltd.

Dates of Domain Names Registration: August 21, 1997; June 11, 1998

Date Complaint Filed: February 10, 2000

Date of Commencement of

Administrative Proceedings in

Accordance with Rule 2(a) and

Rule 4(c): February 11, 2000

Due Date for a Response: March 6, 2000

After reviewing the Complaint for administrative compliance, The National Arbitration Forum, hereinafter "The Forum," transferred the Complaint to the Respondent in compliance with Rule 2(a), and the administrative proceeding was commenced pursuant to Rule 4(c). In compliance with Rule 4(d), The Forum immediately notified the above Registrar, ICANN and the Complainant that the administrative proceeding had commenced.

Respondent had registered the domain names in issue with Network Solutions, the entity that is the Registrar of the domain names. By registering their domain names with Network Solutions, Respondent agreed to resolve any dispute regarding its domain names through ICANN’s Uniform Domain Name Dispute Resolution Policy.

Respondent did not submit a Response to The Forum within twenty [20] days pursuant to Rule 5(a), or at all.

FINDINGS OF FACT

1. Complainant is the owner of numerous trademark registrations worldwide for the mark AMERICA ONLINE, including Turkish registration numbers 173249 and 176258, which were registered on September 15, 1995, and trademark registration number 1,618,148 with the United States Patent and Trademarks Office, registered on October 16, 1990.

2. Complainant also uses the mark AMERICAONLINE.COM as a domain name for its portal Web site. The mark AMERICA ONLINE used at this portal Web site is a significant method of promoting Complainant’s service.

3. Prior to Respondent’s registration of "americaonline.net" and "americanonline.com," and at least as early as 1989, Complainant adopted and began using its AMERICA ONLINE mark in connection with computer online services and other Internet-related services. Complainant has used the famous and distinctive AMERICA ONLINE continuously and extensively in interstate and international commerce in connection with the advertising and sale of its Internet and computer-related services.

4. Complainant has invested substantial sums of money in developing and marketing its services and mark AMERICA ONLINE.

5. Complainant has more than 18 million subscribers, and operates the most widely-used interactive online service in the world.

6. The AMERICA ONLINE mark has been and continues to be widely publicized through substantial advertising throughout the United States and the world. Many millions of dollars have been spent in connection with such advertising, which has been disseminated through network and cable television programs, radio broadcasts, and in print media including newspapers and periodicals.

7. Sales of services under the AMERICA ONLINE mark have amounted to many billions of dollars. As a result, the general public has come to associate the name and mark AMERICA ONLINE with services of a high and uniform quality.

8. On August 21, 1997 and June 11, 1998, long after Complainant’s adoption and first use of its mark, and after its mark was registered in numerous countries, including Turkey and the United States, Respondent registered "americanonline.com" and "americaonline.net" with Network Solutions.

9. The domain names "americanonline.com" and "americaonline.net" are nearly identical and confusingly similar to the AMERICA ONLINE mark.

10. Respondent registered and used "americanonline.com" and "americaonline.net" in bad faith for the purposes of capitalizing on the famous mark AMERICA ONLINE and diverting consumers away from AOL’s Web site, and, accordingly, it is not making a legitimate, noncommercial or fair use of the domain names.

11. Respondent has no rights or legitimate interests in respect to the domain names, but, to the contrary, Respondent is creating confusion and using the domain names to divert and usurp Complainant’s users.

12. Respondent’s bad faith is evidenced by the fact that it registered "americanonline.com" on August 21, 1997 and "americaonline.net" on June 11, 1998, long after Complainant’s adoption and first use of the mark AMERICA ONLINE and long after the mark was registered in Turkey and the United States, and Respondent, thus, clearly had knowledge or reasonably should have had knowledge of Complainant’s prior adoption, usage and registration of Complainant’s well-known mark.

13. Respondent’s bad faith is further demonstrated by its offer to sell the domain names to Complainant, after being warned of its wrongful actions.

14. Complainant’s prayer for relief seeks that the domain names be transferred from Respondent to Complainant.

CONCLUSIONS

The undersigned certifies that he has acted independently and has no known conflict of interest to serve as the Arbitrator in this proceeding. Having been duly selected, and being impartial, the undersigned has concluded based on the law, the rules and the findings of fact above set forth, as follows:

1. The domain names registered with Network Solutions by Respondent on August 21, 1997 and June 11, 1998, are substantially identical and confusingly similar to Complainant’s mark.

2. Respondent is not making a legitimate noncommercial or fair use of the domain name, for it clearly is seeking commercial gain by misleadingly diverting users to its own web sites.

3. Respondent has registered the domain names primarily for the purpose of diverting the service of Complainant. Respondent has acted in violation of Complainant’s prior trademark rights of which it had or reasonably should have had knowledge.

4. In Interstellar Starship Services, Ltd. v. Epix, Inc. (CA 9^th, 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 presumption of intent to deceive. See Brookfield, 174 F.3d at 1059 (citing Official Airline Guides, Inc. v. Goss, 6 F.3d 1385 (9^th Cir. 1993)). In turn, intent to deceive is strong evidence of a likelihood of confusion. Sleekcraft, 559 F.2d at 354. [Emphasis in original.]

Here, it is concluded that far beyond the presumptions, Respondent acted in bad faith and with the intent to deceive.

DECISION

Based on the above findings and conclusions, and pursuant to Rule 4(i), it is decided as follows:

IT IS DIRECTED THAT THE DOMAIN NAMES "americaonline.net" AND "americanonline.com" REGISTERED BY RESPONDENT Avrasya Yayincilik Danismanlik Ltd. BE TRANSFERRED TO COMPLAINANT America Online, Inc.

Dated: March 16, 2000, by Judge Irving H. Perluss [Retired], Arbitrator.

IRVING H. PERLUSS