WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
America Online, Inc. v. Johuathan Investments, Inc., and AOLLNEWS.COM
Case No. D 2001-0918
1. The Parties
The Complainant is America Online, Inc., 22000 AOL Way, Dulles, Virginia 20166, USA and represented by James R. Davis II, Arent Fox Kintner Plotkin & Kahn, 1050 Connecticut Avenue, NW., Washington, DC 20036, USA.
The Respondent is Johuathan Investments, Inc., and AOLLNEWS.COM, 62 Cleghorn Street, Belize City, Belize.
2. The Domains Name and Registrars
The Domain Names are <aollnews.com> and <fucknetscape.com>.
The Registrars are TuCows.com, Inc., and BulkRegister.com, Inc.
3. Procedural History
The Complaint was received by WIPO by email on July 17, 2001, and in hardcopy form on July 19, 2001. WIPO issued a Request for Amendment to Complaint on July 27, 2001. The Amended Complaint was received by email on July 30, 2001, and in hard copy form on August 3, 2001. WIPO has verified that the Complaint satisfies the formal requirements of the Policy, the Rules and the Supplemental Rules and that payment was properly made. The Administrative Panel ("the Panel") is satisfied that this is the case.
The Complaint was properly notified in accordance with the Rules, paragraph 2(a). BulkRegister.com, Inc., has confirmed that <aollnews.com> ("the First Domain Name") was registered through BulkRegister.com, Inc. and that AOLLNEWS.COM is the current registrant. Tucows.com, Inc., has confirmed that <fucknetscape.com> ("the Second Domain Name") was registered through Tucows.com, Inc., and that Johuathan Investments, Inc. is the current registrant. The Registrars have further confirmed that the Policy is applicable to the Domain Names.
For the reasons set out below the Panel treats aollnews.com as being a trading name or Ďalter egoí of Johuathan Investments, Inc.,and hereinafter refers to them both as "the Respondent".
On August 6, 2001, WIPO notified the Respondent of the Complaint in the usual manner and informed the Respondent inter alia that the last day for sending its Response to the Complainant and to WIPO was August 26, 2001. No Response was received.
The Panel was properly constituted. The undersigned Panellist submitted Statements of Acceptance and Declarations of Impartiality and Independence.
No further submissions were received by WIPO or the Panel, as a consequence of which the date scheduled for the issuance of the Panelís Decision is September 17, 2001.
4. Factual Background
The Complainant is America Online acting on its own behalf and on behalf of its affiliate Netscape Communications Corporation. In this decision I refer to them together as AOL.
AOL is the proprietor of many trade mark registrations of or incorporating the marks AOL and Netscape.
AOL has been using the mark AOL since at least as early as 1989 and the mark NETSCAPE since at least as early as 1984. Both marks are very well known marks in the area of computer online services and other internet related services. Moreover, they were very well known at the time the Domain names were registered.
Further, AOL is the registered proprietor of trade mark registrations for the mark AOL.COM, a mark it has used since at least 1992, and operates a website at (inter alia) www.aolnews.com.
The First Domain Name was registered on June 13, 2000, in the name of aollnews.com. The Second Domain Name was registered on April 23, 2000, in the name of Johuathan Investment Inc. The registrants have different names, but they have the same address in Belize and both have the same contact addresses and telephone numbers.
The Domain Names are connected (directly or indirectly) to commercial sites. The First Domain Name is connected to a website at <point.com>. The Second Domain Name is connected to a pornographic website. Neither of these sites contains any reference within it to either aollnews or fucknetscape.
5. Partiesí Contentions
The Complainant contends that aollnews.com, the registrant of the First Domain Name, and Johuathan Investments, Inc., the registrant of the Second Domain Name, are one and the same and that it is appropriate this complaint should be entertained as a single complaint on the basis that there is a single respondent to the complaint. The Complainant points to the similarities in the various addresses and telephone numbers in the Whois records for the Domain Names.
The Complainant contends that the Domain Names are each nearly identical and are each confusingly similar to a trade mark or service mark in which the Complainant has rights. The Complainant refers to its rights in the trade marks AOL, AOL.COM and NETSCAPE. It also refers to the AOL operated website at <aolnews.com>.
The Complainant contends that at the time of registering the Domain Names the Respondent was well aware of the Complainantís rights in the aforementioned trade marks.
The Complainant contends that consumers will be likely to believe that, because of the Respondentís use of the Complainantís famous trade marks, the Complainant is in some way associated with the website. The Complainant points to the additional fact that the Whois search for the Second Domain Name shows that the Respondent uses an aol.com email address which will be likely to increase the risk of confusion. The Complainant also points to the fact that the site connected to the First Domain Name offers services similar to those offered by AOL.
The Complainant contends that the Respondent registered the Domain Names with a view to capitalising on the fame of the Complainantís trade marks.
The Complainant asserts that the Respondent has no rights or legitimate interest in respect of the Domain Names. It says that it has not granted a licence to the Respondent to use any of its marks. Further it claims that in light of what is set out in this Complaint the Respondent cannot claim in good faith that it has made a non-commercial or fair use of the Domain Names or that it is commonly known by the name AOL, Aollnews, or Netscape.
The Complainant contends that the Domain Names were registered in bad faith and are being used in bad faith.
In support, the Complainant refers to the matters set out above. The Complainant adds that the Domain Names are being used to attract commercial attention and not to define the content of the sites at <aollnews.com> and <fucknetscape.com>.
The Complainant further refers to the fact that in a previous ICANN proceeding (FA0012000096178 Sunglass Huat Corporation v. Johuathan Investments Inc) the Registrant was found guilty of registering the Domain Name in bad faith and using it in bad faith. The Complainant cites the case in support of a contention that it demonstrates a pattern on the part of the Respondent to register domain names with a view to preventing trade mark owners from reflecting those marks in corresponding domain names. The Complainant asserts that this is in violation of paragraph 4(b)(ii) of the Policy.
The Complainant further contends that the use of famous marks of others, particularly when connected to adult material, violates the Policy.
The Respondent has not responded.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interest in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
First, however, the Panel has to decide whether or not it was appropriate for this complaint to be entertained in circumstances where the named registrants for the Domain Names have different names. The Complainantís assertion that the registrants are in effect one and the same is clear. The assertion is credible given the domain names in issue and that the contact details (i.e. address and telephone number) for the Domain names are identical. The Panel believes it more than likely that the registrants are one and the same, but recognises that it is not impossible that the address is an accommodation address for a multiplicity of different entities.
The Respondent has elected not to respond. By virtue of Rule 14(b) the Panel is entitled to draw such inferences as it deems appropriate from the failure to respond. In the circumstances the Panel sees no reason not to accept the Complainantís uncontradicted assertion that the registrants of the Domain Names are one and the same. The Panel accepts this complaint as a properly constituted single complaint covering both Domain Names.
Identical or Confusing Similarity
The First Domain Name <aollnews.com>. This Domain Name comprises "AOLL", which is very similar to the Complainantís trade mark AOL, the term "NEWS", which is generic, and the generic dot com suffix. In combination the First Domain name is very similar indeed to the Complainantís domain name, <aolnews.com>, under and by reference to which the Complainant provides a service. The Panel finds that this Domain Name is confusingly similar to trade marks and service marks in which the Complainant has rights.
The Second Domain Name <fucknetscape.com>. This Domain Name comprises the word "FUCK", the Complainantís trade mark "NETSCAPE" and the generic dot com suffix. This Domain Name is not identical to the Complainantís trade mark, but is it confusingly similar to it?
In the trade mark context the term "confusingly similar" refers to confusion as to trade origin. Is it likely therefore that, because of the similarity between the Domain Name on the one hand and the Complainant's trade mark on the other hand, people will believe that the Domain name is associated in some way with the Complainant?
The Panel regards it as inconceivable that anyone looking at this Domain Name will believe that it has anything to do with a company of such high repute as the Complainant. It is manifestly, on its face, a name, which can have nothing whatever to do with the Complainant. It is a name, which, by its very nature, declares that it is hostile to Netscape. The Panel notes that in support of the bad faith claim the Complainant contends that the Respondent has registered this Domain Name in violation of paragraph 4(b)(ii) of the Policy on the basis that it has been done to prevent the Complainant registering the name. The Panel simply does not understand why on earth the Complainant would ever wish to register this Domain Name. There is no evidence before the Panel to support the contention. The Panel is aware that some companies seek to acquire such names, but only to forestall and/or impede the more obvious protest sites, not because they believe people will believe that the domain name in question or any site to which it is connected belongs to or is licensed or endorsed by the trade mark owner.
The Panel finds that the Complainant has failed to prove that this Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights.
Rights or Legitimate Interest of the Respondent
The Complainant asserts that it has not granted any licence to the Respondent to use the Complainantís trade marks. The Panel accepts that uncontradicted assertion. The Panel observes that there can be no reason why the Complainant would license use of its trade marks in relation to either of the domain names, one of which includes a mis-spelling and the other of which is offensive.
The Policy gives a respondent an opportunity to demonstrate to the Panel that it has rights or legitimate interests in respect of the domain names in issue. A non-exhaustive list of circumstances, which demonstrate the existence of such rights and legitimate interests, is set out in paragraph 4(c) of the Policy.
The Respondent has made no attempt to demonstrate any of those circumstances or indeed any other circumstances showing that it has rights or legitimate interests in respect of the Domain Names.
The Panel can think of no reason why the Respondent could be said to have rights or legitimate interests in respect of the Domain Names, save that aollnews.com is the registered name of the owner of the First Domain Name.
However, the circumstances are such that the Respondent clearly selected the Domain Names with the Complainant in mind, evidently well aware of the Complainantís trade mark interests in relation to them. The Panel is of the view that the business name, aollnews.com, was selected as a convenient alias for the purpose in hand and is no evidence that the Respondent has been commonly known by that name within the meaning of paragraph 4(c)(ii) of the Policy .
The Panel finds that the Respondent has no rights or legitimate interests in respect of either of the Domain Names.
The First Domain Name <aollnews.com>. The circumstances are such that the Respondent knew when it registered this Domain name that it was confusingly similar to the Complainantís trade marks and domain name <aolnews.com> referred to above. The Respondent also knew that it had no rights or legitimate interests in respect of this Domain Name. This Domain Name is connected to a commercial site. In the absence of any explanation from the Respondent, the Panel is entitled to infer that the Respondent intended, for a commercial purpose, the natural and probable consequences of having effected the registration, namely confusion of internet users. In the result, the Panel finds that the First Domain Name was registered in bad faith and is being used in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
The Second Domain Name <fucknetscape.com>. Given the Panelís finding in relation to paragraph 4(a)(i) of the Policy, it is not necessary for the Panel to address this issue. For the record, however, and for the reasons set out above, the Panel rejects the Complainantís contentions that this Domain Name will be likely to lead to any relevant confusion of internet users or has in any way precluded the Complainant from registering a domain name of its choice. If there is any confusion, it will be because people expecting to visit a protest site will find themselves at a porn site. In an obvious sense, perhaps, the registration of this Domain Name is an abuse of the Domain Name System, but not an abuse of a kind covered by the Policy.
For completeness, the Panel addresses the contention by the Complainant that the content of the site to which the domain name in question is connected may have a bearing on the bad faith issue "particularly in connection with adult content". The Panel accepts that the content of a site (adult or otherwise) might well be of relevance to indicate a respondentís good faith/bad faith intentions, but each of the authorities cited by the Complainant in relation to adult material proceeds upon the basis that the domain name in issue is confusingly similar to the Complainantís trade mark. In the case of the Second Domain Name the Panel has found that the Complainant has failed to prove confusing similarity.
In light of the foregoing findings the complaint in respect of the First Domain Name succeeds and the Panel directs that the Domain Name, <aollnews.com>, be transferred to the Complainant. The complaint in respect of the Second Domain Name, <fucknetscape.com>, is dismissed.
Dated: September 14, 2001