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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
America Online, Inc. v. Kamel Hasan
Case No. D 2000-1526
1. The Parties
Complainant is America Online, Inc. ("AOL"). AOL is a Delaware corporation with its principal place of business in Virginia, United States of America. Complainant’s address is 22000 AOL Way, Dulles, Virginia 20166, USA. Respondent is Kamel Hasan. Respondent’s address is: PO Box 90522, Brooklyn, New York 11209, USA.
2. The Domain Names and Registrar
This dispute concerns two domain names: <aolchina.net> and <aoli.net> ("Domain Names"). Register.com, Inc. is the registrar.
3. Procedural History
The WIPO Arbitration and Mediation Center (the Center) received the Complaint by email and in hard copy on November 6 and November 8, 2000, respectively. The Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the Policy), the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules). Complainant made the required payment to the Center. The formal date of the commencement of this administrative proceeding is November 24, 2000.
Issuance of Complaint
The Complaint indicates that WHOIS records for the Domain Names list Respondent Kamel Hasan at the following address: PO Box 90522, Brooklyn, New York 11209, USA. Complainant sent a copy of the Complaint by email to Respondent. Kamel Hasan is the Administrative and Billing contact for the Domain Names.
Confirmation of Registration Details
On November 17, 2000, the Center transmitted, via email to Register.com, Inc., a request for registrar verification in connection with this case. On November 22, 2000, Register.com, Inc. transmitted by fax to the Center, their verification response confirming the domain names <aolchina.net> and <aoli.net> are registered through Register.com, Inc. and that Kamel Hasan is the Registrant as well as the Administrative Contact.
Notification of Complaint
On November 24, 2000, the Center transmitted to the Respondent, Notification of Complaint and Commencement of the Administrative Proceeding. The Center advised that the response was due by December 13, 2000.
On December 22, 2000, the Center emailed to the parties Notification of Respondent Default.
Constitution of Administrative Panel
On January 23, 2001, the Center notified the parties via email that the Administrative Panel would consist of Mr. David Everett Wagoner as the Sole Panelist.
Compliance with the formalities of the Policy and the Rules
Upon review of the file, the Panel concludes that the Center has fully complied with the formalities of the Policy and Rules, that Respondent was given adequate notice of this proceeding, and that Respondent has been accorded due process.
4. Factual Background
Section 5 (e) of the Rules provides "If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint." Here there are no exceptional circumstances and, therefore, the Panel decides the dispute based upon the Complaint and the Exhibits attached thereto and finds the following facts as established.
*1. Complainant America Online, Inc. ("AOL") is the owner of numerous trademark registrations worldwide for the mark AOL, including U.S. Registration Nos. 1,977,731 and 1,984,337, which were registered on June 4, 1996, and July 2, 1996, respectively (evidence of U.S. trademark registrations are included under Annex B).
*2. AOL also owns federal trademark registration Nos. 2,325,291and 2,325,292 for the mark AOL.COM (evidence of U.S. trademark registrations are included under Annex C). The mark AOL is used extensively at this portal Web site, which is a significant method of promoting AOL's service. As a result, consumers associate the mark AOL, when used in a domain name, with AOL's services.
*3. AOL frequently uses AOL as a prefix in its marks, e.g., AOL ANYWHERE, AOLTV (all the AOL marks hereinafter collectively the "AOL Marks"). AOL also uses AOL as a prefix in marks used in connection with its international online services, e.g., AOL MEXICO (screen shot showing examples of the AOL Marks is included under Annex E).
*4. Long prior to Respondent’s registration of the domain names <aolchina.net> and <aoli.net>, and at least as early as 1989 for the mark AOL and 1992 for the mark AOL.COM, AOL adopted and began using its marks in connection with computer online services and other Internet-related services. AOL has used its famous and distinctive marks continuously and extensively in interstate and international commerce in connection with the advertising and sale of its Internet and computer-related services.
*5. AOL has invested substantial sums of money in developing and marketing its services and marks.
*6. With over twenty-three 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 Marks; millions more are exposed to said marks through advertising and promotion.
*7. The AOL Marks have been and continue to be widely publicized through substantial advertising throughout the United States and the world. Many millions of dollars have been spent in connection with such advertising, which has been disseminated through network and cable television programs, radio broadcasts, and in print media including newspapers and periodicals.
*8. Sales of services under the AOL Marks have amounted to many billions of dollars. As a result, the general public has come to associate the AOL name and marks with services of a high and uniform quality.
*9. Because of these substantial advertising expenditures and sales, the distinctive AOL Marks have become well-known and famous among members of the purchasing public.
*10. On October 1, 2000, long after AOL's adoption and first use of the AOL Marks, Respondent registered the domain names "aolchina.net" and "aoli.net" and offered to sell them to AOL for the bad faith purpose of profiting from the goodwill AOL has created in its famous AOL Marks.
*The numbers are Subparagraphs of Paragraph 12 of the Complaint.
5. Parties’ Contentions
The Complaint alleges that the Domain Names are nearly identical and confusingly similar to the AOL Marks, that Respondent registered the Domain Names in bad faith for the purpose of capitalizing on the famous AOL Marks and profiting from the international and domestic goodwill AOL has built up in its famous trademarks and that Respondent has no rights or legitimate interests in respect of the Domain Names.
B. The ResponseRespondent filed no response.
6. Discussion and Findings
Paragraph 4.a of the Policy directs that Complainant must prove, with respect to each domain name in issue, each of the following:
(1) The domain name in issue is identical or confusingly similar to the Complainant’s trademarks or service marks; 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.
Paragraph 4.b of the Policy sets out four illustrative circumstances, any one of which for purposes of Paragraph 4(a)(iii), shall be evidence of the registration and use of a domain name in bad faith.
Paragraph 4.c of the Policy sets out three illustrative circumstances any one of which, if proved, shall demonstrate Respondent’s rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii) above.
A. Identical or Confusingly Similar Domain Names
Complainant has proved that Respondent’s Domain Names are confusingly similar to trademarks in which Complainant has rights.
The Domain Names begin with the letters AOL. There then follows "china.net" in one case and "i.net" in the other. The Domain Names are clearly similar to the AOL Marks and that similarity is sufficient to create a likely confusion with the Complaintant’s trademarks as to their source, sponsorship or affiliation.
Respondent made an unsolicited offer to sell the Domain Names to AOL, implicitly demonstrating that he was aware that the Domain Names are nearly identical to the AOL Marks and that it would be of interest to AOL to eliminate confusingly similar Domain Names.
B. Respondent’s Rights or Legitimate Interests in the Domain Names
The Panel finds that Respondent has no rights or legitimate interests in the Domain Names, which the Panel finds were inspired by and copied from Complainant's name and trademarks.
Respondent registered the Domain Names with knowledge of AOL’s rights in the famous AOL and AOL.COM Marks. Respondent is not commonly known by the name AOL. Finally, Respondent has not made a legitimate noncommercial or fair use of the Domain Names.
C. Domain Names Registered and Used in Bad Faith
The Panel finds that the Domain Names have been registered and are being used in bad faith.
Evidence of Respondent’s bad faith registration and use of the Domain Names includes the following:
1. With knowledge of AOL’s rights, Respondent registered the Domain Names many years after AOL’s adoption and first use of the AOL Marks and long after the AOL Marks were registered in the United States.
2. Respondent made an unsolicited offer to sell the Domain Names to AOL on the same day on which Respondent registered the Domain Names, indicating that Respondent never intended to make a legitimate fair use of the Domain Names but rather to sell them to AOL.
3. Although initially Respondent did not provide a sales price, later it offered to sell the Domain Names to AOL for $1,220.
The Panel confirms the opinions of numerous previous decisions, starting with the Telstra decision (D2000-0003), holding that use of a domain name may include passive holding of the domain name, even if the web site has not been activated.
In light of the foregoing, the Panel decides that:
(1) The Domain Names registered by Respondent and at issue here are confusingly similar to Complainant’s trademarks,
(2) Respondent has no rights or legitimate interests in respect of the Domain Names at issue, and
(3) The Domain Names at issue have been registered and are being used in bad faith by Respondent.
Accordingly, the Panel decides that the Registration of the two Domain Names set forth in paragraph 2 of this Decision shall be transferred to Complainant.
David Everett Wagoner
Dated: February 6, 2001