P. O. Box 50191
Minneapolis, Minnesota 55405 USA
www.arbitration-forum.com
America Online, Inc.
COMPLAINANT,
vs.
Pablo Barrutia
RESPONDENT.
DECISION
Forum File No.: FA 0003000094265
___________________________________________________
The above-entitled matter came on for an administrative
hearing on April 17, 2000, before the undersigned on the Complaint
of
America Online, Inc., hereafter "Complainant", against Pablo Barrutia,
hereafter "Respondent". Complainant
appears by James R. Davis, Attorney
of Washington, D.C. The Respondent appears pro se.
PROCEDURAL FINDINGS
Domain Name: aolmoviefone.com
Domain Name Registrar: Network Solutions, Inc.
Domain Name Registrant: Pablo Barrutia
Date of Domain Name Registration: February 1, 1999
Date Complaint Filed: March 8, 2000
Date of Commencement of Administrative Proceeding in Accordance
with Rule 2(a) and Rule 4(c): March 9, 2000.
Due date for a Response: April 3, 2000.
After reviewing the Complaint, and determining it
to be in administrative compliance, the National Arbitration Forum
(The
Forum) forwarded the Complaint to the Respondent on March 9, 2000 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 Network Solutions, Inc. (Network Solutions), the Internet Corporation
for Assigned Names and Numbers
(ICANN), and the Complainant that the
administrative proceeding had commenced. The Respondent responded to
The Forum by memorandum dated March 31, 2000, pursuant to Rule 5(a).
On February 1, 1999, Respondent registered the domain
name "aolmoviefone.com" with Network Solutions, the entity that
is the
Registrar of the domain name. On March 8, 2000, Network Solutions verified
that Respondent is the Registrant
for the domain name "aolmoviefone.com",
and that further by registering its domain name with Network Solutions,
Respondent agreed to resolve any dispute regarding its domain name through
ICANN's Rules for Uniform Domain Name
Dispute Resolution Policy, and
the Uniform Domain Name Dispute Resolution Policy.
FINDINGS AND CONCLUSIONS
- The Complainant is a corporation that operates an interactive
online internet service with over 20 million subscribers
and has
used the "AOL" mark since at least 1989. Among its extensive internet
business activities,
Complainant operates a portal web site and
uses the mark "moviefone.com" and the mark "moviefone" in connection
therewith. AOL is the owner of numerous trademark registrations
for the marks AOL and MOVIEFONE, including
U.S. trademark registration
No. 1,977,731 for AOL, and No. 1,606,658 for MOVIEFONE and regularly
uses
them in national and international commerce in connection with
its advertising and sales of service.
- The Respondent is an individual. He has provided no information
pertaining to any business interest relative to the
domain name
in dispute.
- The Respondent states in his response to the complaint made:
- ". . . it should be stated that I purchased the Property
for a legitimate noncommercial use without intent for
commercial
gain, consumer confusion or dilution of the complainant's mark.
Specifically, I
purchased the Property as an individualistic
act of expression that showed my resentment toward an act America
Online committed against Spanish-speaking people a few years
ago". Response, page 2.
- ". . . my principal purpose in owning the Property was to
express my resentment toward an action committed by America
Online. In 1996, America Online staff patrolled discussion groups
and enforced a discriminatory
rule of English-only. They nonchalantly
erased non-English messages, most of which were in Spanish.
These roving censors essentially held back the voice of Spanish-speaking
people during that time. It
is important to realize that the
Internet is a place of free speech. I believe that no one should
be in the business of censorship and that all people should
be given their individual freedom of speech.
As such, I own
the said domain name in order to express my feeling of resentment
for past actions
committed by the Complainant". Response, page
4.
- Complainant has invested substantial sums of money in developing
and marketing its services utilizing the marks "AOL"
and "MOVIEFONE"
and both are well known and associated with Complainant's business.
- On February 1, 1999, the same day AOL announced its intended acquisition
of Moviefone, and long after AOL's adoption
and first use of the
marks AOL and MOVIEFONE, Respondent registered the domain name "aolmoviefone.com"
through Network Solutions, Inc.
- The domain name is nearly identical and confusingly similar to
"AOL" and "MOVIEFONE", marks owned by Complainant.
- The Respondent registered the domain name "aolmoviefone" in bad
faith and has no rights or legitimate business interests
in respect
to said domain name. The following is evidence of Respondent's bad
faith:
- At the time Respondent registered the domain name
"aolmoviefone", Complainant was actively using the same identical
names in its businesses throughout the world;
- At the time Respondent registered the domain name "aolmoviefone",
he was not engaged in any legitimate business
activity that
utilized that name;
- Respondent by his own admission registered the domain name
out of resentment and in protest of certain actions
of Complainant
that Respondent believes are offensive toward Spanish-speaking
discussion groups.
- Respondent registered the domain name "aolmoviefone" primarily
for the purpose of disrupting the business of Complainant.
- Respondent has registered other domain names which appear
to infringe on other duly registered trademarks or prominent
business names, specifically:
-
-
Respondent's Registration Trademark
or Business Name
"vodafone-airtouch.com" VODAFONE AIRTOUCH
"vodafone-airtouch.net" VODAFONE AIRTOUCH
"newbritishaerospace.com" BRITISH AEROSPACE
"newbritishaerospace.net" BRITISH AEROSPACE
The foregoing constitutes a pattern of conduct,
which limits, disrupts or prevents legitimate business use
of established trademarks and business names.
-
Respondent has articulated no anticipated use
of the domain name other than to transfer it to Complainant
in exchange for contributions to organizations of Respondent's
choice. The foregoing constitutes
a pattern of conduct, which
limits, disrupts or prevents legitimate business use of established
trademarks and business names.
-
Complainant's prayer for relief requests that the
domain name "aolmoviefone.com" be transferred from Respondent to
Complainant.
DECISION
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 neutral, the undersigned
makes the following DECISION
based upon the findings and conclusions:
- The domain name "aolmoviefone.com", registered by Respondent
on February 1, 1999, with Network Solutions, Inc., is
nearly identical
and confusingly similar to the other marks in which Complainant
has established
rights.
- Respondent registered the domain name primarily for the purpose
of protest and to disrupt Complaint's business.
- Respondent has engaged in a pattern of conduct of registering
domain names strikingly similar or identical to registered
trademarks
or established business names to interfere with or prevent the
owners from utilizing
certain domain names.
Accordingly, pursuant to Rule 4(i), it is decided that
the domain name
"aolmoviefone.com" should be transferred from Respondent
to the Complainant.
Dated: April 17, 2000
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