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America Online, Inc. ("AOL") COMPLAINANT,
vs.
Calvin Gruneck This Domain is For Sale RESPONDENT.
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DECISION
Forum File No.: FA0004000094634
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The above entitled matter came on for an administrative hearing on
May 4, 2000 before the undersigned on the Complaint
of America Online,
Inc. ("AOL"), hereafter "Complainant", against Calvin
Gruneck, hereafter "Respondent". Complainant
was represented
by: James R. Davis. II, 1050 Connecticut Avenue N.W., Washington, D.C.
20036. Respondent represented
himself and submitted a written response:
Upon the written submitted record, the following DECISION is
made:
PROCEDURAL FINDINGS
Domain Name: AO-l.com
Domain Name Registrar: Internet Domain Registrars
Domain Name Registrant: Calvin Gruneck This Domain Is For Sale Date
of Domain Name Registration: January 21,
2000
Date Complaint Filed: April 12, 2000
Domain Name: AO-l.net
Domain Name Registrar: Internet Domain Registrars
Domain Name Registrant: Calvin Gruneck This Domain Is For Sale
Date of Domain Name Registration: January 21, 2000
Date Complaint Filed: April 12, 2000
Domain Name: AO-lmail.com
Domain Name Registrar: Internet Domain Registrars
Domain Name Registrant: Calvin Gruneck This Domain Is For Sale Date
of
Domain Name Registration: February 10, 2000
Date Complaint Filed: April 12, 2000
Date of Commencement of Administrative Proceeding in accordance with
Rule 2(a) and Rule 4(c): April 19, 2000
Respondent’s Response in
accordance with Rule 5(a): May 9, 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 April 19, 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 Internet Domain Registrars, the
Internet
Corporation for Assigned Names and Numbers (ICANN), and the
Complainant that the administrative proceeding had commenced.
Respondent
submitted a response to The Forum pursuant to Rule 5(a) on April 25,
2000. On January 21, 2000,
Respondent registered the domain names "AO-l.com"
and "AO-l.net" and on February 10, 2000 registered the domain
name "AO-lmail.com" with Internet Domain Registrars, the entity
that is the Registrar of the domain names. On April
19, 2000, Internet
Domain Registrars verified that Respondent is the Registrant for the
domain names "AO-l.com";
AO-l.net" and "AO-l.mail",
and that further by registering its domain names with Internet Domain
Registrars,
Respondent agreed to resolve any dispute regarding its domain
names through ICANN’s Rules for Uniform Domain Name
Dispute Resolution
Policy, and the Uniform Domain Name Dispute Resolution Policy.
FINDINGS OF FACT
- That Complainant is the owner of numerous trademark registrations
worldwide for the mark AOL including registrations
in China, Hong
Kong, Japan and Taiwan (collectively AOL Marks). Complainant also
uses the mark AOL.com
as the domain name for its portal web site.
The AOL marks are used extensively at this portal Web site.
- That as early as 1989 for the mark AOL and 1992 for the mark AOL.com,
Complainant adopted and began using many of its
AOL marks in connection
with computer on-line services and other Internet-related services.
The AOL marks
have been used continuously and extensively in interstate
and international commerce in connection with the advertising
and
sale of Internet and computer related services.
- That Complainant has invested substantial sums of money in developing
and marketing its services and marks.
- That Respondent registered the domain names "AO-l.com"
"AO-l.net" and "AO-lmail.com" in bad faith and
has
no rights or legitimate interests in respect to said domain names.
The following is evidence of Respondent’s bad
faith:
- That Respondent first registered the domain names between January
21, 2000 and February 12, 2000, long after Complainant’s
adoption
and first use of the mark "AOL" in 1989, and long after
Complainant began using its "AOL.com"
mark in 1992.
- That Respondent has made no legitimate use of the domain names
"AO-l.com" "AO-l.net" and "AO-lmail.com"
and he seeks to profit from the registration of said domain names
by trading upon the goodwill associated with
the AOL marks. Respondent’s
profit motive is evidenced by his offer to sell said domain names
by listing in the WHOIS directory "…This domain name is
for sale….".
- Respondent has engaged in a pattern of registering domain names
that infringe upon other entities’ marks.
- Complainant’s prayer for relief requests that the domain names
"AO-l.com" "AO-l.net" and "AO-lmail.com"
be transferred from Respondent to Complainant.
CONCLUSIONS
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 conclusions:
- The domain names "AO-l.com" "AO-l.net" and "AO-lmail.com",
registered by Respondent between January 21, 2000 and February
12,
2000 with Internet Domain Registrars are nearly identical and confusingly
similar to the "AOL" Marks
in which Complainant has rights
and to which Respondent has no right or legitimate interests.
- Respondent registered and acquired the domain names "AO-l.com"
"AO-l.net" and "AO-lmail.com" primarily for the
purpose of selling or otherwise transferring the said domain name
registrations for valuable consideration in
excess of Respondent’s
out-of-pocket costs directly related to the domain names. Respondent
registered
and used the domain names in bad faith.
DECISION Based upon the above findings and conclusions, and pursuant
to Rule 4(i), it is decided as follows: THE UNDERSIGNED DIRECTS
THAT THE
DOMAIN NAMES "AO-l.com" "AO-l.net" and "AO-lmail.com"
REGISTERED BY RESPONDENT Calvin Gruneck This Domain
Is For Sale BE TRANSFERRED
TO COMPLAINANT America Online, Inc. (AOL). Dated: May 17, 2000,
Justice Anthony J.
Mercorella (ret.), Arbitrator
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