P. O. Box 50191
Minneapolis, Minnesota 55405 USA
AMERICA ONLINE, INC.,
22000 AOL Way
Dulles, VA 20166,
Complainant
vs.
DOMAIN OZ
P.O. Box 480167
Los Angeles, CA 90048
Respondent.
DECISION
FILE NO. FA0003000094302
The above entitled matter came on for an administrative
hearing on April 14, 2000 before the undersigned arbitrator on the Complaint
of America Online, Inc. ("Complainant"), represented by James R. Davis,
II, Esquire, Arent Fox Kintner Plotkin & Kahn, 1050 Connecticut
Ave., NW, Washington, DC 20036, against Domain OZ, P.O. Box 480167,
Los Angeles, CA 90048. Upon the written submitted record including the
Complaint, to which no response was filed, the following DECISION
is rendered:
PROCEDURAL FINDINGS
Domain Name: aolinstantmessenger.com
Domain Name Registrar: Network Solutions, Inc.
Domain Name Registrant: Domain OZ
Date of Domain Name Registration: April 28, 1998
Date Complaint Filed: March 13, 2000
Date Response to Complaint Filed: No response was filed.
After reviewing the complaint, and determining it to be
in administrative compliance, the National Arbitration Forum ("Forum")
forwarded the Complaint to the Respondent in compliance with Rule 2(a)
of ICANNs Rules for Uniform Domain Name Dispute Resolution Policy
and the administrative proceeding was commenced pursuant to Rule 4(c).
In compliance with Rule 4(d), the Forum immediately notified Network
Solutions that the administrative proceeding had commenced. The Complaint
and Response were docketed and forwarded to the undersigned arbitrator
for decision on April 7, 2000.
FINDINGS OF FACT
- AOL is the owner of numerous trademark registrations for the
mark AOL, including U.S. trademark registration No. 1,977,731.
AOL is also the owner of the marks AOL.COM, AOL INSTANT MESSENGER
and INSTANT MESSENGER (hereinafter collectively, "the AOL marks)."
- AOL uses its AOL.COM mark in connection with its portal Web
site. The AOL Marks are used extensively at this Web site, which
is a significant method of promoting the AOL and INSTANT MESSENGER
services. As a result, consumers associate the AOL Marks, when
used in a domain name, with AOL and its services.
- Long prior to Respondent Domain OZs ("OZ") registration
of "aolinstantmessenger.com", and at least as early as 1989 for
the AOL mark and 1992 for the AOL.COM mark and 1997 for the AOL
INSTANT MESSENGER and INSTANT MESSENGER marks, AOL adopted and
began using its marks in connection with the advertising and sale
of computer online services and Internet-related services. AOL
has used its famous and distinctive marks continuously and extensively
since these first use dates.
- AOL has invested substantial sums of money in developing and
marketing its services and marks.
- On April 28, 1998, long after AOLs adoption and first
use of its AOL Marks, OZ registered "aolinstantmessenger.com"
through Network Solutions, Inc.
- The domain name "aolinstantmessenger.com" is nearly identical
and confusingly similar to the marks AOL, AOL.COM, AOL INSTANT
MESSENGER and INSTANT MESSENGER.
- OZ registered and used "aolinstantmessenger.com" in bad faith
for the purposes of capitalizing on the famous AOL Marks and profiting
from the goodwill AOL has created in its famous marks.
- OZ has no rights or legitimate interests in respect to the domain
name "aolinstantmessenger.com".
- Accordingly, I find as matters of fact and pursuant to Paragraph
4 of the Policy:
-
The domain name "aolinstantmessenger.com"
is identical or confusingly similar to Complainants
AOL.COM Mark and AOL INSTANT MESSENGER and INSTANT MESSENGER
Marks as adopted and used by Complainant in connection with
its advertising and sale of computer on-line services and
internet-related services.
-
Respondent has no substantial rights or legitimate
interest with respect to the domain name "aolinstantmessenger.com";
-
Respondent has registered and used the domain
name in bad faith.
CONCLUSION
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 makes the following findings and conclusion:
-
Respondent registered the domain name "aolinstantmessenger.com"
in bad faith.
DECISION
Based upon the above findings and conclusions, and pursuant
to Rule 4(i) of the ICANNs Rules for Uniform Domain Name Dispute
Resolution Policy and the National Arbitration Forums Supplemental
Rules to ICANNs Uniform Domain Resolution Policy, it is decided
as follows:
THE UNDERSIGNED DIRECTS THAT THE DOMAIN NAME "AOLINSTANTMESSENGER.COM",
REGISTERED BY RESPONDENT DOMAIN OZ, BE TRANSFERRED TO COMPLAINANT, AMERICA
ONLINE, INC.
Signed this 14th day of April, 2000, by Judge
John J. Upchurch (Retired), arbitrator.
____________________________________
Honorable John J. Upchurch
Circuit Judge (Ret.)
Arbitrator