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Generic Top Level Domain Name (gTLD) Decisions |
America Online, Inc. v. AOL Logistics
Co., Ltd.
Claim
Number: FA0307000166019
Complainant is America Online, Inc., Dulles, VA
(“Complainant”) represented by James R.
Davis, of Arent Fox Kintner Plotkin & Kahn. Respondent is AOL Logistics Co., Ltd., Seoul, Korea (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <aologis.com>, registered with Tucows,
Inc.
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.
The
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on July 2, 2003; the Forum
received a hard copy of the Complaint
on July 7, 2003.
On
July 3, 2003, Tucows, Inc. confirmed by e-mail to the Forum that the domain
name <aologis.com> is registered with Tucows, Inc. and that
Respondent is the current registrant of the name. Tucows, Inc. has verified
that Respondent
is bound by the Tucows, Inc. registration agreement and has
thereby agreed to resolve domain-name disputes brought by third parties
in
accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the
"Policy").
On
July 7, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"),
setting a deadline of
July 28, 2003 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via
e-mail, post and fax, to all entities and persons
listed on Respondent's registration as technical, administrative and billing
contacts,
and to postmaster@
aologis.com
by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification,
the Forum transmitted
to the parties a Notification of Respondent Default.
On
August 6, 2003, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed the
Honorable Charles K.
McCotter, Jr. (Ret.) as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the Forum has discharged its
responsibility under
Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy
(the "Rules") "to
employ reasonably available means calculated
to achieve actual notice to Respondent."
Therefore, the Panel may issue its decision based on the documents
submitted and in accordance with the ICANN Policy, ICANN Rules,
the Forum's
Supplemental Rules and any rules and principles of law that the Panel deems
applicable, without the benefit of any Response
from Respondent.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <aologis.com>
domain name is confusingly similar to Complainant’s family of marks.
2. Respondent does not have any rights or
legitimate interests in the <aologis.com> domain name.
3. Respondent registered and used the <aologis.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
America Online, Inc., is the holder of numerous trademark registrations
worldwide for the AOL family of marks, including
U.S. Patent and Trademark
Office (USPTO) Registration Nos. 1,977,731 and 1,984,337, which were registered
on June 4, 1996, and July
2, 1996, respectively, for the AOL mark. Complainant also holds South Korean
trademark registration Nos. 351,722, 34,225 and 359,740, which were issued on
December 18, 1996,
January 15, 1997 and April 14, 1997, respectively for
Complainant’s AOL mark. In addition,
Complainant holds USPTO Registration Nos. 2,325,291, and 2,325,292, both
registered on March 7, 2002 for the AOL.COM
mark.
Complainant uses
its AOL mark in connection with, among other things, Internet and
computer-related services.
Specifically, Complainant uses the AOL.COM mark in connection with the
official AOL website. Complainant’s AOL
mark is used extensively at this website, which is a significant method of
promoting Complainant’s services.
Complainant also has used its famous name and mark in connection with
providing an increasingly wide variety of goods and services,
including
providing information on shipping, trucking, moving and related topics.
Complainant
began using its AOL family of marks in connection with computer online services
and other Internet-related services at
least as early as 1989 for the AOL mark
and 1992 for the AOL.COM mark.
With
approximately thirty-five million subscribers, AOL operates the most
widely-used interactive online service in the world and
each year millions of
AOL customers worldwide obtain services offered under the AOL and AOL.COM
marks.
Respondent
registered the <aologis.com> domain name on September 19,
2001. Respondent is using the disputed
domain name in connection with a commercial website located at the <aologis.com>
domain name. Respondent’s website
displays the AOL mark at the top of each page with a pictoral representation of
the globe. Respondent also uses the AOL
mark with a pictorial representation of a computer screen. In addition, the bottom of each page
includes a copyright disclaimer stating “Copyright © 2001 AOL.” Furthermore, the first and only English word
listed as a metatag for the website associated with the <aologis.com>
domain name is AOL.
Respondent
informed Complainant that the AOL mark in the <aologis.com> domain
name was an acronym for “Air, Ocean, Local.”
In a follow up letter to Complainant, Respondent claimed “AOL” is an
acronym for “Air Ocean Logistics.” Then
Respondent claimed the disputed domain name is an acronym for “Air and Ocean
and Local Logistics.”
Paragraph 15(a)
of the 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."
In view of
Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of Complainant's
undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate
pursuant to paragraph 14(b) of
the Rules.
Paragraph 4(a)
of the Policy requires that Complainant must prove each of the following three
elements to obtain an order that a domain
name should be cancelled or
transferred:
(1) the domain name registered by Respondent
is identical or confusingly similar to a trademark or service mark in which
Complainant has
rights; and
(2) Respondent has no rights or legitimate
interests in respect of the domain name; and
(3) the domain name has been registered and
is being used in bad faith.
Complainant has
established rights in the AOL family of marks through registration of the AOL
and AOL.COM marks in the United States
and South Korea. See Men’s Wearhouse, Inc. v. Wick, FA
117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered
marks hold a presumption that they are inherently
distinctive and have acquired
secondary meaning”); see also Janus
Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that
Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable
presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption).
Respondent’s <aologis.com>
domain name is confusingly similar to Complainant’s family of marks. Respondent is adding the AOL mark as a
prefix to the shortened version of the AOL Logistics name. Thus, the Panel finds that the disputed
domain name is not sufficiently distinguishable from Complainant’s family of
marks under Policy ¶
4(a)(i). See Modern Props, Inc. v.
Wallis, FA 152458 (Nat. Arb. Forum June 2, 2003) (stating that
“[n]otwithstanding the analysis by Respondent, ‘modprops’ is a contraction
or
shorthand for “Modern Props.” “Mod” cononotes [sic] ‘modern’ regardless of any
other dictionary meanings, so the names are substantially
similar in meaning); see
also Sony Kabushiki Kaisha v. Inja,
Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of
an ordinary descriptive word . . . nor the suffix ‘.com’
detract from the
overall impression of the dominant part of the name in each case, namely the
trademark SONY” and thus Policy ¶ 4(a)(i)
is satisfied).
Accordingly, the
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant is
able to establish a prima facie case by showing that Respondent does not
qualify for the three “safe harbors” provided
under Policy ¶¶
4(c)(i)-(iii). Such a showing shifts
Complainant’s burden to Respondent, who must come forward with evidence
rebutting Complainant’s allegations
in order to prevail on this element. In this case, Complainant has made a prima
facie showing that Respondent does not have any rights or legitimate interests
in the <aologis.com> domain name.
See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l,
D2001-0376 (WIPO May 14, 2001) (stating that “[p]roving that the Respondent has
no rights or legitimate interests in respect of
the [d]omain [n]ame requires
the Complainant to prove a negative. For the purposes of this sub paragraph,
however, it is sufficient
for the Complainant to show a prima facie case and
the burden of proof is then shifted on to the shoulders of Respondent. In those
circumstances, the common approach is for [R]espondents to seek to bring
themselves within one of the examples of paragraph 4(c)
or put forward some
other reason why they can fairly be said to have a relevant right or legitimate
interests in respect of the domain
name in question”); see also G.D. Searle
v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that
where Complainant has asserted that Respondent has no rights or legitimate
interests with respect to the domain name it is incumbent on Respondent to come
forward with concrete evidence rebutting this assertion
because this
information is “uniquely within the knowledge and control of the respondent”).
Since
Complainant has made a prima facie showing that Respondent does not have any
rights or legitimate interests in the <aologis.com> domain name,
the burden is shifted to Respondent to demonstrate that it has rights or
legitimate interests in the disputed domain
name. In this proceeding, Respondent has not submitted a Response. Thus, Respondent has failed to present any
circumstances under which it could substantiate rights or legitimate interests
in the <aologis.com> domain name.
Furthermore, because Respondent has failed to submit a Response in this
proceeding, the Panel may accept as true all reasonable allegations
submitted
by Complainant in the Complaint. See
Geocities v. Geociites.com,
D2000-0326 (WIPO June 19, 2000) (finding that Respondent has no rights or
legitimate interests in the domain name because Respondent
never submitted a
response or provided the Panel with evidence to suggest otherwise); see also
Bayerische Motoren Werke AG v. Bavarian AG, FA110830 (Nat. Arb. Forum June
17, 2002) (finding that in the absence of a Response the Panel is free to make
inferences from
the very failure to respond and assign greater weight to
certain circumstances than it might otherwise do).
The record
before the Panel demonstrates that Respondent is not commonly known by the <aologis.com>
domain name. Although Respondent lists
AOL Logistics Co., Ltd. as its name in the WHOIS contact information,
Respondent is not commonly known by
the disputed domain name because Respondent
has not submitted any affirmative evidence showing that it is commonly known by
the <aologis.com> domain name.
In addition, Respondent’s repeated attempts to find English words that
justify its use of the AOL family of marks does not show that
it is commonly
known by the disputed domain name.
Furthermore, both Respondent’s failure to Respond to the Complaint and
the fame surrounding Complainant’s family of marks permits
the Panel to
reasonably infer that Respondent is not commonly known by the disputed domain
name. See Foot Locker
Retail, Inc. v. Gibson, FA 139693 (Nat. Arb. Forum Feb. 4, 2003) (stating
that “[d]ue to
the fame of Complainant’s FOOT LOCKER family of marks…and the fact that
Respondent’s WHOIS information reveals its name to be
‘Bruce Gibson,’ the Panel
infers that Respondent was not ‘commonly known by’ any of the disputed domain
names prior to their registration,
and concludes that Policy ¶ 4(c)(ii) does
not apply to Respondent”); see also Yoga Works, Inc. v. Arpita d/b/a Shanti
Yoga Works, FA 155461
(Nat. Arb. Forum June 17, 2003) (finding
that Respondent was not “commonly known by” the <shantiyogaworks.com>
domain name despite listing its name as “Shanti Yoga Works” in its WHOIS
contact information because there was “no
affirmative evidence before the Panel that Respondent was ever ‘commonly known
by’ the disputed domain name prior to
its registration of the disputed domain
name”).
Respondent is using Complainant’s AOL mark in the <aologis.com> domain name to promote a commercial website that prominently displays the AOL mark
in both its visible text and invisible metatags. Thus, the Panel finds that Respondent is not using the disputed
domain name for a bona fide offering of goods or services pursuant
to Policy ¶
4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name
under Policy ¶ 4(c)(iii). See eBay
Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001) (finding that using
complainant’s entire mark in infringing domain names makes it difficult to
infer
a legitimate use); see also U.S. Franchise Sys., Inc. v. Howell III,
FA 152457 (Nat. Arb. Forum May 6, 2003) (holding
that Respondent’s use of Complainant’s mark and the goodwill surrounding that
mark as a means of attracting Internet users
to an unrelated business was not a
bona fide offering of goods or services); see also State Farm
Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000)
(finding that the “unauthorized providing of information and services under a
mark owned
by a third party cannot be said to be the bona fide offering
of goods or services”).
Accordingly, the
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
creates a likelihood of confusion as to the sponsorship of the website
associated with the <aologis.com> domain name when Respondent uses
Complainant’s famous family of marks to attract Internet users to its commercial
website. The Panel reasonably infers
that Respondent is commercially profiting from the use of the AOL family of
marks. Thus, the Panel finds that
Respondent has registered the <aologis.com> domain name in bad
faith under Policy ¶ 4(b)(iv). See
G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum
Nov. 21, 2002) (finding that Respondent registered and used the domain name in
bad faith pursuant to
Policy ¶ 4(b)(iv) because Respondent was using the
confusingly similar domain name to attract Internet users to its commercial
website);
see also Kmart v. Kahn, FA 127708 (Nat. Arb. Forum Nov. 22,
2002) (finding that if Respondent profits from its diversionary use of
Complainant's mark when
the domain name resolves to commercial websites and Respondent
fails to contest the Complaint, it may be concluded that Respondent
is using
the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also Am. Online, Inc. v. Tencent Comm. Corp.,
FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent
registered and used an infringing domain name to attract
users to a website
sponsored by Respondent).
Furthermore,
Respondent was aware of the AOL mark when it registered the <aologis.com> domain name
because Complainant holds registrations for its
family of marks not only with the USPTO, but also with the South Korean
trademark registration system.
Respondent also had knowledge of the AOL mark as evidenced by its
disclaimer stating “Copyright © 2001 AOL” on each page of its
website. Thus,
the Panel finds that Respondent registered the <aologis.com>
domain name in bad faith because it had knowledge of Complainant’s famous
family of marks prior to registering the disputed domain
name. See Victoria’s Cyber Secret Ltd. P’ship v.
V Secret Catalogue, Inc., 161 F.Supp.2d 1339, 1349 (S.D.Fla. 2001) (noting
that “a Principal Register registration [of a trademark or service mark] is
constructive
notice of a claim of ownership so as to eliminate any defense of
good faith adoption” pursuant to 15 U.S.C. § 1072); see also Yahoo!
Inc. v. Ashby, D2000-0241 (WIPO June 14, 2000) (finding that the fame of
the YAHOO! mark negated any plausible explanation for Respondent’s registration
of the <yahooventures.com> domain name); see also Albrecht v. Natale, FA 95465 (Nat. Arb. Forum Sept. 16,
2000) (“The Respondent intentionally registered a domain name which uses the
Complainant’s name. There may be
circumstances where such a registration could be done in good faith, but absent
such evidence, the Panel can only conclude
that the registration was done in
bad faith”).
Accordingly, the
Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it
is Ordered that the <aologis.com> domain name be TRANSFERRED
from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated:
August 20, 2003
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