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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

America Online, Inc. v. Antonio R. Diaz

Case No. D2000-1460

 

1. The Parties

The Complainant is America Online, Inc., a corporation organized under the laws of the State of Delaware, United States of America, having its principal place of business at Dulles, Virginia, United States of America. The Respondent is Antonio R. Diaz, an individual doing business as DnamesForSale.com, with an address in Chicago, Illinois, United States of America.

 

2. The Domain Names and Registrars

The domain names at issue are:

<aolenespanol.com> <icqenespanol.org>

<aolenespanol.net> <winampenespanol.com>

<aolenespanol.org> <winampenespanol.net>

<aolatinamerica.com> <winampenespanol.org>

<aolatinamerica.net> <spinnerenespanol.com>

<aolatinamerica.org> <spinnerenespanol.net>

<netscapeenespanol.com> <spinnerenespanol.org>

<compuservenespanol.com> <americaonlineenespanol.com>

<compuservenespanol.net> <digitalcityenespanol.com>

<compuservenespanol.org> <digitalcityenespanol.net>

<icqenespanol.com> <digitalcityenespanol.org>

<icqenespanol.net>

which domain names are registered with Network Solutions Inc. ("NSI"), a registrar based in the State of Virginia, United States of America, and BulkRegister.com a registrar based in the state of Maryland, United States of America ("Bulk Register") (collectively, "Registrars").

 

3. Procedural History

A Complaint was submitted electronically to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on October 26, 2000, and the signed original together with four copies forwarded by express courier under cover of a letter of October 30, 2000. An Acknowledgment of Receipt was sent by the WIPO Center to the Complainant, dated November 1, 2000.

On November 2, 2000, a Request for Registrar Verification was transmitted to both Registrars requesting them to: (1) confirm that a copy of the Complaint was sent to the Registrar by the Complainant; (2) confirm that the domain names at in issue are registered with the Registrar, (3) confirm that the person identified as the Respondent is the current registrant of the domain names; (4) provide the full contact details (i.e., postal address(es), telephone number(s), facsimile number(s), e-mail address(es)) available in the Registrar’s Whois database for the registrant of the disputed domain names, the technical contact, the administrative contact and the billing contact; (5) confirm that the Uniform Domain Name Dispute Resolution Policy ("Policy") applies to the domain names at

In an email dated November 8, 2000 transmitted to WIPO, NSI confirmed that

the domain names

<aolenespanol.net> <winampenespanol.com>

<aolenespanol.org> <winampenespanol.net>

<aolatinamerica.com> <winampenespanol.org>

<aolatinamerica.net> <spinnerenespanol.com>

<aolatinamerica.org> <spinnerenespanol.net>

<compuservenespanol.com> <spinnerenespanol.org>

<compuservenespanol.net> <digitalcityenespanol.com>

<compuservenespanol.org> <igitalcityenespanol.net>

<icqenespanol.com> <igitalcityenespanol.org>

<icqenespanol.net> <cqenespanol.org>

are registered with NSI and that the Respondent, Antonio R. Diaz, was the current registrant of the domain names. NSI also forwarded the requested Whois details, as well confirming that: (1) NSI received a copy of the Complaint from the Complainant; (2) that the Policy was applicable to the domain names.

In an email dated November 7, 2000, BulkRegister confirmed that the domain names

<aolenespanol.com>

<netscapeenespanol.com>

<americaonlineenespanol.com>

are registered with BulkRegister and that the Respondent, Antonio R. Diaz, was the current registrant of the domain names. BulkRegister also forwarded the requested Whois details, as well confirming that: (1) BulkRegister received a copy of the Complaint from the Complainant; (2) that the Policy was applicable to the domain names.

A Formal Requirements Compliance Checklist was initiated and completed by the assigned WIPO Center Case Administrator on November 9, 2000.

The Panelist has independently reviewed the Requirements and agrees with the assessment of the WIPO Center Case Administrator that the Complaint is in formal compliance with the requirements of the Rules for Uniform Domain Name Dispute Resolution Policy ("Rules") and the WIPO Supplemental Rules for Uniform Domain Dispute Resolution Policy, in effect as of December 1, 1999 (the "WIPO Supplemental Rules"). The required fees for a single-member Panel were paid on time and in the required amount by the Complainant.

No formal deficiencies having been recorded, on November 9, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent (with copies to the Complainant, Registrars and ICANN), setting a deadline of November 28, 2000, by which the Respondent could file a Response to the Complaint. The Commencement Notification was transmitted to the Respondent by e-mail to the e-mail addresses indicated in the Complaint and specified in the Registrar's Whois confirmation(s), and by post/courier to the indicated postal address. Having reviewed the communications records in the case file, the Panelist finds that the WIPO Center has discharged its responsibility under Paragraph 2(a), Rules, "to employ reasonably available means calculated to achieve actual notice to Respondent."

On November 29, 2000, having received no Response from the designated Respondent, the WIPO Center transmitted to the parties a Notification of Respondent Default using the same contact details and methods as were used for the Commencement Notification.

On December 7, 2000, the WIPO Center invited Richard Allan Horning to serve as the Sole Panelist in Case No. D2000-1460, and transmitted to him a Statement of Acceptance and Request for Declaration of Impartiality and Independence. Richard Allan Horning’s Statement of Acceptance and Declaration of Impartiality and Independence was received on December 7, 2000. On December 12, 2000, the WIPO Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Richard Allan Horning was formally appointed as the Sole Panelist. The Projected Decision Date was December 25, 2000.

The Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Policy, Rules and WIPO Supplemental Rules.

The Panelist shall issue his Decision based on the Complaint, the Policy, the Rules, the WIPO Supplemental Rules, and without the benefit of any Response from Respondent.

 

4. Factual Background

Complainant is authorized to use and has used theAmerica Online, Compuserve, Digital City, ICQ, Netscape, Spinner and Winamp trade and service marks in connection with, inter alia, electronic storage and retrieval of data and documents, telecommunications services, and computer services, all devoted to the support of its portal Web site, computer online services and other Internet-related services. Complaint, Para. 2, 3. The Complainant has provided evidence of the registration of the following marks which it has adopted and used in this regard:

(a)

AOL

Registration Number:

Goods & Services:

First Use:

1,984,337

Class 9, for inter alia computer operating programs and computer operating systems

October, 1989

   

(b)

America Online

Registration Number:

Goods & Services:

First Use:

1,648,148

Class 38, for inter alia computer data bases in fields of news, sports, financial, entertainment, and educational information

October 2, 1939

 

Registration Number:

Goods & Services:

First Use:

2,325,291

Class 42, for inter alia computer services

October 19, 1992

   

(c) Compuserve

Registration Number:

Goods & Services:

First Use:

1,654,785

Class 9, for inter alia computer software for use in the field of business.

December 31, 1982

 

Goods & Services:

First Use:

Class 35, for inter alia computer information storage and retrieval services.

December 31, 1970

 

Goods & Services:

First Use:

Class 36, for inter alia computerized financial information services.

December 31, 1970

 

Goods & Services:

First Use:

Class 38, for inter alia electronic mail services.

December 31, 1970

 

Goods & Services:

First Use:

Class 39, airline reservation services.

December 31, 1979

 

Goods & Services:

First Use:

Class 41, computerized sports information services.

December 31, 1970

 

Goods & Services:

First Use:

Class 42, for inter alia computer software and computer program design services.

December 31, 1970

   

(d)

Digital City

Registration Name:

Goods & Services:

First Use:

2,307,655

Class 38, for inter alia telecommunication services.

September 1995

Complainant is the owner of the following application to register:

 

(e)

ICQ

Application Number:

Goods & Services:

First Use:

75,381,414

Class 9, for inter alia computer operating programs that may be downloaded from a computer information network.

November 1996

 

Goods & Services:

First Use:

Class 42, information in the field of personal advice, romance, general interest news, health, computers and technology .

November 1996

 

Goods & Services:

First Use:

Class 35, online directory of businesses and people; and providing employment information via networks.

November 1996

 

Registration Number:

Goods & Services:

First Use:

Class 38, for inter alia telecommunications services.

November 1996

Complainant is the owner of the following application to register:

   

(f)

Netscape

Application Number:

Goods & Services:

First Use:

74,574,057

Class 9, computer software for the use in the transfer of information and the conduct of commercial transactions across local, national and world-wide information networks.

1994

Complainant is the owner of the following application to register:

   

(g)

Spinner

Application Number:

Goods & Services:

First Use:

75,518,430

Class 41, entertainment services in the nature of on-line music services, namely providing music over computer networks and providing news and information about music over computer networks.

Complainant is the owner of the following application to register:

   

(h)

Winamp

Application Number:

Goods & Services:

First Use:

75,531,951

Class 9, digital audio software for playing high-fidelity audio for windows.

April 1, 1997

   

Complaint, Annexes B, C.

The Complainant has expended substantial sums in developing and marketing its goods and services using these marks in domestic and international markets (Complaint, Para. 3-7).

The Respondent registered the domain names on the following dates:

<aolenespanol.com> February 27, 2000

<aolenespanol.net> January 11, 2000

<aolenespanol.org> February 28, 2000

<aolatinamerica.com> August 2, 2000

<aolatinamerica.net> August 2, 2000

<aolatinamerica.org> August 2, 2000

<netscapeenespanol.com> February 20, 2000

<compuservenespanol.com> February 28, 2000

<compuservenespanol.net> February 28, 2000

<compuservenespanol.org> February 28, 2000

<icqenespanol.com> August 2, 2000

<icqenespanol.net> August 2, 2000

<icqenespanol.org> August 2, 2000

<winampenespanol.com> August 2, 2000

<winampenespanol.net> August 2, 2000

<winampenespanol.org> August 2, 2000

<spinnerenespanol.com> August 2, 2000

<spinnerenespanol.net> August 2, 2000

<spinnerenespanol.org> August 2, 2000

<americaonlineenespanol.com> July 10, 2000

<digitalcityenespanol.com> August 2, 2000

<digitalcityenespanol.net> August 2, 2000

<digitalcityenespanol.org> August 2, 2000

Each of these domain names was registered many years after the registration of the marks by Complainant and many years after Complainant commenced the operation of its services (Complaint, Para. 3-8; compare Annex B with Annex D).

 

5. Parties’ Contentions

A. Complainant

Complainant contends that Respondent has registered domain names which are nearly identical to and confusingly similar to the service marks and trademarks registered and used by Complainant, that Respondent has no rights or legitimate interests in respect to the domain names at issue, and that Respondent has registered and is using the domain names at issue in bad faith.

B. Respondent

Respondent has not contested the allegations of the Complaint.

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panelist as to the principles the Panelist is to use in determining the dispute: "A Panel shall 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." Since both the Complainant and Respondent are domiciled in the United States, and since United States’ courts have experience with similar disputes, to the extent that it would assist the Panelist in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panelist shall look to rules and principles of law set out in decisions of the courts of the United States.

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(1) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,

(2) that the Respondent has no legitimate interests in respect of the domain name; and,

(3) that the domain name has been registered and used in bad faith.

The domain names at issue are either identical (Hewlett-Packard Company v. Cupcake City, NAF Case No. NAF0002000093562; America Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., NAF Case No. FA0002000093679) or confusingly similar (Marriott International, Inc. v. John Marriot, NAF Case No. FA 0002000094737; Identigene, Inc. v. Genetest Laboratories, WIPO Case No. D2000-1100; Seiko Epson Corporation v. Distribution Purchasing & Logistics Corp., NAF Case 0003000094219) to Complainant's marks. See also Nokia Corporation v. Nokiagirls.com a.k.a IBCC, WIPO Case No. D2000-0102; America Online, Inc. v. Viper, WIPO Case No. D2000-1198.

Complainant has alleged and Respondent has failed to deny that Respondent has no legitimate interests in respect of the domain names at issue. Alcoholics Anonymous World Services, Inc. v. Raymond, WIPO Case No. D2000-0007; Bronson Plc v. Unimetal Sanayai ve Tic. A.S., WIPO Case No. D2000-0011.

The question thus arises whether the domain names at issue have been registered and are being used in bad faith. Paragraph 4.b of the Policy sets forth "in particular but without limitation" circumstances which "shall be evidence of registration and use of a domain name in bad faith." Those circumstances are:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.

Respondent's business name, DnamesForSale.com, suggests that the purpose of Respondent's business is to profit from the registration and sale of domain names. Respondent apparently operates this business without regard to the legitimate rights of owners of pre-existing trademarks. This is evidence of bad faith under the circumstances of this case (Policy, Para 4(b)(i)).

Respondent has offered at least two of the domain names for sale <aolenespanol.net> and <aolenespanol com>. This is evidence of bad faith under the circumstances of this case (Policy, Para 4(b)(i)).

Under the circumstances present here, the fact that Respondent engages in the practice of bulk registration, registering as many as 15 similar domain names on the same day with the same registrar, and has not endeavored to activate the domain names in connection with the sale or use legitimate goods and services, creates an inference that the domain names were registered for the purpose of selling, renting or otherwise transferring the domain names.

The fact that Complainant notified Respondent on September 27, 2000, that Respondent's registrations were confusingly similar to Complainant's marks (Complaint, Annex F), that Respondent failed to respond to the referenced notice and cease and desist demand, and that the Respondent failed to respond to this Complaint, also suggests that Respondent was aware that it has no rights or legitimate interests in the domain names at issue, and that the domain names have been registered and are being used in bad faith. Uniform Rules, Rule 14(b). See, Mondich and American Wine Biscuits, Inc. v. Brown, d/b/a Big Daddy's Antiques, WIPO Case No. D00-0004, §6, at 4; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, § 7.12 at 10-11; Alcoholics Anonymous World Services, Inc. v Raymond, WIPO Case No. D2000-0007; America Online, Inc. v. Viper, WIPO Case No. D2000-1198.

 

7. Decision

For all of the foregoing reasons, the Panelist decides that the domain names registered by Respondent are identical or confusingly similar to the trademarks and service marks in which the Complainant has rights, that Respondent has no rights or legitimate interests in respect of the domain names, and that the Respondent's domain names have been registered and are being used in bad faith.

Accordingly, pursuant to Paragraph 4.i of the Policy, the Panelist requires that the registration of the following domain names be transferred to the Complainant:

<aolenespanol.com> <icqenespanol.org>

<aolenespanol.net> <winampenespanol.com>

<aolenespanol.org> <winampenespanol.net>

<aolatinamerica.com> <winampenespanol.org>

<aolatinamerica.net> <spinnerenespanol.com>

<aolatinamerica.org> <spinnerenespanol.net>

<netscapeenespanol.com> <spinnerenespanol.org>

<compuservenespanol.com> <americaonlineenespanol.com>

<compuservenespanol.net> <digitalcityenespanol.com>

<compuservenespanol.org> <digitalcityenespanol.net>

<icqenespanol.com> <digitalcityenespanol.org>

<icqenespanol.net>

 


 

Richard Allan Horning
Sole Panelist

Dated: January 19, 2001

 

Источник информации: https://internet-law.ru/intlaw/udrp/2000/d2000-1460.html

 

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