ELIGIBILITY REQUIREMENTS
DISPUTE RESOLUTION POLICY
DECISION
America Online, Inc. v. AD 2000 D.Com aka
Adrian Paul Miles
Claim Number: FA0203000108377
PARTIES
Complainant
is America Online, Inc., Dulles, VA
(“Complainant”) represented by James R.
Davis, of Arent Fox Kintner Plotkin
& Kahn, PLLC. Respondent is Adrian Paul Miles, Wolverhampton, UK
(“Respondent”) of AD 2000D.com.
REGISTRAR AND DISPUTED REGISTERED NAMESS
The
Registered Names (contested domain names) at issue are <aim5.instantmesenger.name> and <instant.messenger.name>, both registered with Bulkregister.
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.
Mr.
Peter L. Michaelson, Esq. as Panelist.
PROCEDURAL HISTORY
The
Complaint was brought pursuant to the Eligibility Requirements Dispute
Resolution Policy (“EDRDP” or simply the "Policy”) available at http://wwwgnr.com/corporate/downloads/erdrp.pdf
which was adopted by Global Name Registry ("GNR"), as the registry
operator; and in accordance with the Rules of Procedure for the ERDRP (the
“ERDRP Rules”) adopted by GNR and as supplemented by the National Arbitration
Forum ERDRP Supplemental Rules for then in effect (the “ERDRP Supplemental
Rules”).
The
Complainant submitted a Complaint to the National Arbitration Forum (“the
Forum”) electronically on March 29, 2002; the Forum received a hard copy of the
Complaint on April 1, 2002.
On
April 4, 2002, Bulkregister confirmed by e‑mail to the Forum that the
Registered Names <aim5.instantmesenger.name>
and <instant.messenger.name>
are registered with Bulkregister and that Respondent is the current registrant
of those names. Bulkregister has
verified that Respondent is bound by the Bulkregister registration agreement
and has thereby agreed to resolve registered name disputes brought by third
parties in accordance with the Policy.
On
April 5, 2002 the Forum issued a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”) which set a
deadline of April 25, 2002 by which the Respondent could file a Response to the
Complaint and which was transmitted to the Respondent in compliance with 2(a)
of the ERDRP Rules .
A
timely Response was received and determined to be complete on April 25, 2002.
On
May 2, 2002, pursuant to ERDRP Rule 6(b), the Forum appointed
Mr. Peter L. Michaelson, Esq. as the single Panelist.
Complainant
requests that the Registered Names be cancelled pursuant to paragraph
5(f)(i)(A) of the Policy.
A. Complainant
The Complainant contends
that by registering the Registered Names, the Respondent violated Paragraph 4(b)
of the Policy. Specifically, the
Complainant states that neither of these names corresponds to either of the
Respondent’s legal names (i.e., those legal names being “AD 2000D.Com” or
“Adrian Paul Miles”). Furthermore, the Complainant asserts that it is unlikely
that either of the Registered Names corresponds to any person’s legal
name. As such, the Complainant
concludes that paragraph 4(b)(i) of the Policy has been violated.
In addition, the
Complainant asserts that the Registered Names violate paragraph 4(b)(ii)
of the Policy inasmuch as neither of these names is a name of a fictional
character or service mark owned by the Respondent. In that regard, the Complainant states that it owns trademark
rights to the marks “AIM” (through its US trademark registrations 2,423,367 and
2,423,368) and to the term “INSTANT MESSENGER”, both of which are used in
connection with the Complainant’s, AOL’s, famous real‑time communications
service. In Annex B to the Complaint,
the Complainant has provided hard‑copies of various web pages, from its
web site, regarding these services. The
Complainant states that currently it is distributing version 4.7 of its “AIM”
software. Therefore, the Complainant
contends that the Respondent has registered the contested domain names “in bad
faith to trade off the international goodwill AOL has created in its famous
Internet communications marks, and lead consumers to believe falsely that the
services provided under ‘AIM5’ are the latest version of AOL’s communications
software”.
Finally, the Complainant
asserts that the individual “Adrian Paul Miles”, has not been commonly known by
either of the names: “Instant Messenger” or “AIM5”. In that regard, the Complainant states these terms are not even
names; they are famous trademarks which it owns.
Thus, the Complainant
concludes that the Respondent was never eligible to register the contested
domain names <aim5.instantmessenger.name> or <instant.messenger.name>
and has violated the “.name” Registration Agreement, which expressly restricts
which domains may be registered or used under the “.name” generic top level
domain.
B. Respondent
The
Respondent states that “it accepts the two disputed domain names do not meet
the required .NAME Eligibility Requirements”.
Hence, the Respondent concedes that it has “no right to retain these
disputed Registered Domain Names in particular”.
As to
the requested remedy, first the Respondent contends that the term “instant
messanger” is not a fully registered and active trademark of the Complainant,
nor should it be, the Respondent requests that the Panel deny the remedy of
either transfer or defensive registration by the Complainant.
Second,
the Respondent contends that if the Registered Names are found not to fulfill
the .NAME Eligibility Requirements, then they should not be maintained by
either the Respondent or the Complainant.
However, if the Panel finds that these names are maintainable under the
.NAME top level domain, then the Respondent requests that it retain and use the
Registered Name <instant.messenger.name> for the Respondent's
("Ady's") Independent Messaging Site and transfer the Registered Name
<aim5.instantmessenger.name> to the Complainant.
Lastly,
the Respondent requests the Panel to issue an appropriate order to GNR for it
to cancel or delete the registrations for the Registered Names.
FINDINGS ‑‑ FACTUAL BACKGROUND
The Respondent
registered that contested domain names <aim5.instantmessenger.name>
and <instant.messenger.name> on January 9 and February 21, 2002,
respectively.
The Respondent does not
dispute that its legal names are “AD 2000D.Com” or “Adrian Paul Miles”, neither
of these names constituting all or a part of either of the Registered
Names. The Respondent does not dispute
the Complainant’s assertion that neither of the Registered Names is or includes
the name of a fictional character in which the Respondent has trademark or
service mark rights. Furthermore, the
Respondent does not dispute that it is not commonly known by any name
corresponding to the Registered contested domain names.
Furthermore, the
Respondent expressly concedes that not only do the contested domain names not
meet the .NAME Eligibility Requirements but moreover it has no rights to retain
these names.
Paragraph
15(a) of the ERDRP 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(b) of the ERDRP requires that the Complainant prove each of the following
elements in order to establish that the Registered Name was registered in
violation of the Eligibility Requirements and obtain an order that a Registered
Name should be cancelled:
(1) the name corresponding to the Registered
Name is not the legal name of Respondent; and
(2) the name corresponding to the Registered
Name is not the name of a fictional character in which the Respondent has
trademark or service mark rights; and
(3) the Respondent has not been commonly
known by the name corresponding with the Registered Name.
Inasmuch
as the Respondent expressly concedes that neither of the Registered Names meets
any of the Eligibility Requirements, the Panel sees no reason to provide any
detailed discussion of each of the individual requirements.
Furthermore,
since the Complainant has only requested the Panel to cancel the registrations
of the Registered Names, then the issue as to whether the Complainant has met
those requirements as to entitle it to either of those names is not before the
Panel. As such, the Panel expresses no
opinion on that issue.
Since
the Respondent agrees with the Complainant’s request to have the Registered
Names canceled, the Panel shall so order it.
In
accordance with the EDRDP Rules, the relief sought by the Complainant is hereby
GRANTED.
The
Panel now orders that the registrations for the Registered Names, <aim5.instantmesenger.name>
and <instant.messenger.name>, be CANCELED.
Mr. Peter L. Michaelson, Esq., Panelist
Dated: May 6, 2002
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