WorldLII Home | Databases | WorldLII | Search | Feedback

Generic Top Level Domain Name (gTLD) Decisions
You are here:  WorldLII >> Databases >> Generic Top Level Domain Name (gTLD) Decisions >> 2000 >> [2000] GENDND 179

Database Search | Name Search | Recent Decisions | Noteup | LawCite | Help

AMERICA ONLINE, INC., v. DOMAIN OZ [2000] GENDND 179 (14 April 2000)


National Arbitration Forum

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 ICANN’s 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

    1. 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)."
    2. 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.
    3. Long prior to Respondent Domain OZ’s ("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.
    4. AOL has invested substantial sums of money in developing and marketing its services and marks.
    5. On April 28, 1998, long after AOL’s adoption and first use of its AOL Marks, OZ registered "aolinstantmessenger.com" through Network Solutions, Inc.
    6. The domain name "aolinstantmessenger.com" is nearly identical and confusingly similar to the marks AOL, AOL.COM, AOL INSTANT MESSENGER and INSTANT MESSENGER.
    7. 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.
    8. OZ has no rights or legitimate interests in respect to the domain name "aolinstantmessenger.com".
    9. Accordingly, I find as matters of fact and pursuant to Paragraph 4 of the Policy:
    1. The domain name "aolinstantmessenger.com" is identical or confusingly similar to Complainant’s 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.
    2. Respondent has no substantial rights or legitimate interest with respect to the domain name "aolinstantmessenger.com";
    3. 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:

    1. 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 ICANN’s Rules for Uniform Domain Name Dispute Resolution Policy and the National Arbitration Forum’s Supplemental Rules to ICANN’s 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

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2000/179.html