DECISION

America Online, Inc. v. Inetekk.com, Inc.

Claim Number: FA0401000231685

PARTIES

Complainant is America Online, Inc. (“Complainant”), represented by James R. Davis, of Arent Fox Kintner Plotkin & Kahn, PLLC, 1050 Connecticut Avenue, NW, Washington, DC 20036.  Respondent is Inetekk.com, Inc. (“Respondent”), represented by Thomas Prendergast, 7115 Calabria Ct. #D, San Diego, CA 92122.

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <aolpresses.com>, <aolpress4free.com>, <aol-network.com>, <aol-press.com>, <aol-mlm.net>, <aol-mlm.com>, <aolmlm.com> and <aolms.com>, registered with Dotster.

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

David E. Sorkin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on January 26, 2004; the Forum received a hard copy of the Complaint on January 29, 2004.

On January 26, 2004, Dotster confirmed by e-mail to the Forum that the domain names <aolpresses.com>, <aolpress4free.com>, <aol-network.com>, <aol-press.com>, <aol-mlm.net>, <aol-mlm.com>, <aolmlm.com> and <aolms.com> are registered with Dotster and that the Respondent is the current registrant of the names. Dotster has verified that Respondent is bound by the Dotster 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 January 30, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 19, 2004 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@aolpresses.com, postmaster@aolpress4free.com, postmaster@aol-network.com, postmaster@aol-press.com, postmaster@aol-mlm.net, postmaster@aol-mlm.com, postmaster@aolmlm.com and postmaster@aolms.com by e-mail.

A timely Response was received and determined to be complete on February 19, 2004.

On March 3, 2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin as Panelist.

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant is the owner of numerous trademark registrations in the United States and elsewhere for AOL and AOL.COM.  Complainant’s trademark registrations date back to 1996, and its use of AOL as a trademark dates back at least to 1989.  The marks are used to identify the most widely-used interactive online service in the world, and Complainant has spent many millions of dollars to publicize the marks, resulting in sales of many billions of dollars, causing the marks to become very well-known and famous.

Complainant alleges that many years after Complainant’s adoption and first use of the AOL marks, Respondent registered the disputed domain names, all of which begin with the characters “AOL,” with a bad faith intent to profit from confusion generated thereby.  Complainant further alleges, inter alia, that the disputed domain names are nearly identical and confusingly similar to the AOL marks; that Respondent lacks rights or legitimate interests in the disputed domain names; and that Respondent has used the disputed domain names in bad faith to route traffic to Respondent’s commercial web site.

B. Respondent

Respondent seeks to retain only one of the disputed domain names, <aolms.com>, explaining that most of the other names were acquired on behalf of Respondent’s clients for projects that have since been abandoned.

Respondent claims that <aolms.com> incorporates an acronym for Advanced Online Marketing Systems.  Respondent states that the domain name has been used since December 1998, and that it hosts a “subscription based ASP system for online marketing information,” or marketing portal, which does not compete with Complainant.

Respondent states that in 1999 attorneys representing Complainant made a similar claim against <aolms.com> but subsequently abandoned the claim.  Respondent notes that there are many names, terms, and acronyms that include the letters “AOL,” such as “kaolin,” “depaolo,” and “gaol.”

Finally, Respondent urges the Panel to permit it to retain <aolms.com> because of the consequences that would result if it were to lose the name:

To force Inetekk to forfeit aolms.com will cause Inetekk severe financial hardship.  If the honorable Arbitrator’s should decide different and award aolms.com to AOL we will pray that the Arbitrator’s give Inetekk several years to abandon this domain so we can seamlessly move our services to another domain without interrupting our current subscribership.  Several years will suffice as the nature of attrition will allow us the ability to move the subscribership to a new domain without interruption with that time allowance, if it should come to that.  We pray it doesn’t come to that.

FINDINGS

The Panel finds, with respect to all eight of the disputed domain names, that they are confusingly similar to a mark in which Complainant has rights; that Complainant has no rights or legitimate interests in respect thereof; and that they were registered and have been used in bad faith.

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”

Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the 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.

Identical and/or Confusingly Similar

All of the disputed domain names begin with Complainant’s well-known AOL mark, and none of them contain any words or phrases that would disabuse Internet abusers of the impression that the domain names are associated with Complainant.  The Panel therefore concludes that the disputed domain names are confusingly similar to Complainant’s AOL mark.  This result is consistent with numerous other cases involving the same mark and similar domain names.  See, e.g., America Online, Inc. v. Autoleasing On Line, FA 209904 (Nat. Arb. Forum Jan. 9, 2004) (<aolleasing.com> and <aollease.com>); America Online, Inc. v. Boch,  FA 209902 (Nat. Arb. Forum Dec. 22, 2003) (<aol-x.com>); America Online, Inc. v. Kloszewski,  FA 204148 (Nat. Arb. Forum Dec. 4, 2003) (<aol-8plus.com> and <aolfact.com>); America Online, Inc. v. Arion Software, FA 187395 (Nat. Arb. Forum Sept. 24, 2003) (<aolpms.com>, <aolbms.com>, <aolpos.com>, and <aolcrm.com>).

Rights or Legitimate Interests

Respondent states that it “has no use” for seven of the eight disputed domain names and “will surrender [them] if requested.”  The Panel therefore finds that Respondent lacks rights or legitimate interests in respect of these domain names.

With regard to the remaining domain name, <aolms.com>, any rights or legitimate interests that Respondent may possess arise from its claimed (though unsubstantiated) use of the domain name for an “Advanced Online Marketing Systems” marketing portal.  An intentionally infringing use does not qualify as a “bona fide offering” under paragraph 4(c) of the Policy sufficient to demonstrate rights or legitimate interests.  See, e.g., America Online, Inc. v. Sherin, FA 113980 (Nat. Arb. Forum June 12, 2002) (citing Toronto-Dominion Bank v. Karpachev, 188 F. Supp. 2d 110, 114 (D. Mass. 2002)); Ciccone v. Parisi, D2000-0847 (WIPO Oct. 12, 2000).  The infringement must be clear; cases involving legitimate disputes over trademark rights are not susceptible to adjudication under the Policy.  See Palace Holding, S.A. de C.V. v. Priston Entertainment Ltd., D2003-0705 (WIPO Dec. 5, 2003) (citing ICANN, Second Staff Report on Implementation Documents for the Uniform Domain Dispute Resolution Policy, para. 4.1(c) (Oct. 24, 1999)).

Respondent’s bare assertions to the contrary notwithstanding, it appears obvious to the Panel that the use of the domain name <aolms.com> for online marketing services, if such use indeed has occurred, would infringe Complainant’s strong AOL marks for a broad range of online services.  It further appears that the infringement in this case is intentional, in light of the fame of Complainant’s marks and Respondent’s registration of other domain names incorporating the AOL mark (whether on Respondent’s own behalf or for unidentified clients).  Finally, the Panel considers the trademark question here to be sufficiently clear to avoid any need for forbearance under the Policy.

Registration and Use in Bad Faith

Complainant alleges that Respondent registered and is using the disputed domain names in bad faith, intending to profit from confusion generated by their similarity to Complainant’s marks.  Respondent claims that three of the disputed domain names (<aolpresses.com>, <aolpress4free.com>, and <aol-press.com>) were registered on behalf of a client that defaulted on payment; and that another three names (<aol-mlm.com>, <aol-mlm.net>, and <aol-network.com>) were registered for a different client for a project that subsequently was abandoned.  The remaining two disputed domain names (<aolmlm.com> and <aolms.com>), according to Respondent, were registered for two of its own projects (or possibly on behalf of yet more unidentified clients), one of which has since been abandoned.  (Respondent states that one of these names was for a site that “never paid the development bill and [has] since gone out of business.”)

The questions of bad faith registration and use turn largely upon the credibility of Respondent’s assertions.  The Panel finds Respondent’s assertions not credible under the circumstances; considers Complainant’s allegations of bad faith to be credible and well taken; and accordingly finds that all of the disputed domain names were registered and have been used in bad faith.

Respondent’s Request for a Stay of Enforcement

Respondent has requested that, in the event of a decision ordering the transfer of <aolms.com> to Complainant, enforcement of this order be delayed for “several years” to enable Respondent to transition to a new domain name.  The Panel notes that there is no evidence—nor even a claim by Respondent—that any third parties would be adversely affected by a transfer of the domain name to Complainant.  In any event, there is no provision in the Policy authorizing a Panel to stay enforcement of its order, and this Panel is of the view that it lacks such authority.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <aolpresses.com>, <aolpress4free.com>, <aol-network.com>, <aol-press.com>, <aol-mlm.net>, <aol-mlm.com>, <aolmlm.com> and <aolms.com> domain names be TRANSFERRED from Respondent to Complainant.

David E. Sorkin, Panelist
Dated: March 17, 2004

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