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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
America Online, Inc. v. Popixel Art d/b/a America Online Latino
Case Number D2001-0957
1. The Parties
Complainant is America Online, Inc., and according to its complaint, it is a corporation incorporated under the laws of the State of Delaware, U.S.A., with its principal place of business in Dulles, Virginia. Complainant is represented by Attorney James R. Davis, II of the law firm Arent Fox Kintner Plotkin & Kahn, Washington, D.C.
The Respondent in this proceeding is the entity Popixel Art, doing business as America Online Latino, based in New York, N.Y. Mr. Mark Anthony Esposito is listed as the administrative and billing contact for the Respondent, and is representing Respondent in this case.
2. The Domain Names and Registrar
The dispute is with respect to the following domain names (hereafter "the domain names"):
The registrar with which the domain names are registered is Dotster, Inc., 11807 N.E. 99th Street, Suite 1100, Vancouver, WA U.S.A., (hereafter "the registrar").
3. Procedural History
The procedures for resolving Complaints like this one are governed by the Uniform Domain Name Dispute Resolution Policy (hereafter "The Policy", or "UDRP") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999, ICANN’s Rules for Uniform Domain Name Dispute Resolution Policy (hereafter "The Rules"), as well as the Supplemental Rules of the WIPO Arbitration and Mediation Center (hereafter "The Supplemental Rules").
The current dispute lies within the scope of the Policy, so that this Panel does have proper jurisdiction to hear and decide this dispute. The terms and conditions of the registration agreement between Registrar Dotster and the Respondents clearly incorporate the Policy, so that Respondents were notified of the existence of the Policy’s provisions for domain name dispute resolution. The Policy contains in its Paragraph 4(a) the elements to be pleaded in order for a mandatory administrative proceeding such as this one to be held: Complainant must allege that (i) Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) Respondent has no rights or legitimate interests in the domain name; and (iii) Respondent’s domain name has been registered and is being used in bad faith. See the Policy, Paragraph 4 (a). In order to successfully make its case, the Complainant must prove each of these three elements.
An electronic copy of the complaint was filed on July 25, 2001. A hardcopy of the complaint was filed on July 27, 2001. A request for Registrar Verification was made to the Registrar on July 26, 2001, and such Verification was made on August 21, 2001. On August 23, 2001, the Center requested that the Complainant sent a copy of the complaint to the Registrar. On August 23, 2001, notification of the complaint was sent to Respondent. Respondent requested an extension of time for its Response on September 12, 2001, and formally filed its Response on September 20, 2001. On November 14, 2001, Respondent sent a supplemental email to the WIPO Center Case Manager which was forwarded to the Panel for its consideration in this case. Although late, the Panel does accept receipt of this email communication.
According to the Center’s compliance checklist document, the Complaint has been filed in accordance with the formal requirements of the Rules and the Center’s Supplemental Rules.
The Panel consists of a single Panelist pursuant to Complainant’s request, with which the Respondent agreed in its Response, see Section IV of Response, paragraph 13. The Panelist was duly appointed by the Center. A Statement of Acceptance and Impartiality and Independence was submitted to the Center by the Panelist on November 1, 2001, and the Panelist was appointed by the Center on November 2, 2001. A decision on the Complaint is normally due within 14 days of the appointment of the Panel under Paragraph 15(b) of the Rules.
There is one other important procedural aspect to note here. In its Response, the Respondent has asked this Panel for relief in the forms of large monetary damages, an emergency order, and a cease-and-desist order against the Complainant, among other things.
Without passing on the merits of Respondent’s requests and counterclaims in this regard, we must point out that under the Policy, Rules and Supplemental Rules, the power of this Panel is expressly limited to deciding whether or not to issue an order to the Registrar canceling or transferring the domain names to Complainant. Any other remedies requested by either party must be taken to a national court. The UDRP and the Rules also provide that either party to this kind of UDRP proceeding may initiate a de novo case in a national court to reverse the decision of a UDRP Administrative Panel.
4. Factual Background
Of the five domain names in dispute here, the Panel only found one that resolved to an active website during an exploration on November 8, 2001. The active domain name and website is: <americaonlinelatino.com>. This is consistent with Respondent’s statement in Paragraph 7 of its Response that it did not intend to renew the registrations of the other four domain names.
Respondent states that its company has been active in pursuing the Hispanic internet market in the United States for some time, and that it does business on a daily basis in both Spanish and English. See Response, Paragraph 7. Respondent, in paragraphs 8 (c), (d), and (e) of its Response, states that it has been in negotiations with Complainant for "nearly a year and a half to purchase our business model".
Complainant states that for a long time prior to Respondent’s registration of the domain names, Complainant has continuously owned and used the names and trademarks "AMERICAONLINE" and "AOL" in connection with its computer and internet communication related products and services, with numerous trademark registrations worldwide for these names and two prominent trademarks of Complainant registered with the U.S. Patent & Trademark Office, Registration Number 1,984,337 ("AOL"), registered on July 2, 1996, in International Class 009 (computer operating programs and operating systems; prerecorded computer programs for accessing computer networks, computer online systems), and Registration Number 1,618,148 ("AMERICA ONLINE"), registered on October 16, 1990, in international class 042 (leasing access time to computer database in the field of news, sports, financial, entertainment, and educational information). See Complaint, paragraph 12 (2) and Annex B thereto.
Complainant also states therein that it has registered with the U.S. Patent & Trademark Office the trademark "AOL.COM", on March 7, 2000, Registration Number 2,325,292 in international class 38 (telecommunications services, namely electronic transmission of data, images and documents via computer terminals; electronic store-and-forward messaging; electronic mail services, and facsimile transmission). See Complaint, paragraph 12(2) and Annex B thereto.
Paragraph 12 (2) of the Complaint declares that Complainant has created and registered the domain name <aol.com> for its website. A visit to this website by the Panel on November 6, 2001, confirms that it is functioning viably and legitimately in Complainant’s name.
In addition, Complainant points out that from its many years of widespread advertising using these marks, the "AOL" trademark has become one of a class of "famous marks" worldwide. See Complaint, Paragraph 12(8).
5. Parties’ Contentions
Complainant alleges the elements of its case as follows:
i) The domain names as registered and used by Respondent are confusingly similar or nearly identical to the AOL marks and "obviously play off of AOL’s entrance into the Latin American market" (see Complaint, paragraph 12(10); and
ii) It has legitimate intellectual property interests in the domain names, and that Respondent has no such interests (see Complaint, paragraph 12(12); and
iii) Respondent has registered and used the domain names in bad faith, as shown by:
- the timing of Respondent’s registration of the domain names soon after Complainant publicly announced its intention to enter the Latin American internet market (see Complaint, paragraphs 12(9) and 12(12)(b), and by
- attempts by Respondent to sell the domain names to Complainant, and to offer them for auction on the internet (see Complaint, paragraph 12(12)(c), and by
- an allegedly "significant pattern" by Respondent in registering other non-AOL related allegedly infringing domain names (see Complaint, paragraph 12(12)(d).
As a result, Complainant asks this Panel to issue a decision to the effect that the domain names be transferred to Complainant, in accordance with Paragraph 4(i) of the Policy.
1. On element (i), confusion between the domain names and Complainant’s trademarks, Respondent challenges by:
a. noting that Complainant merely pleaded this element in the Complaint, but did not submit any evidence of actual confusion by potential or current customers (see Response, paragraph 12c); and
b. observing that Respondent’s activity is aimed at the U.S.-based Hispanic market, while Complainant’s activity is aimed primarily at the South America-based Hispanic market - initially Mexico and Argentina (Response, paragraphs 10, 11d) 1 ; and
c. offering disclaimers on the websites to which the domain names resolve, to the effect that Respondent is not affiliated with Complainant (Response, paragraph 11b), and
d. telling the Panel in an email to the WIPO Center dated November 14, 2001, that "1) the aol2it.com means ‘aqui on line 2 it’, 2) aolsil.com means ‘aqui online yes 1’, 3) celulaol.com means ‘celula online’ (cell phone), and 4) latinaol2it.com means ‘latina online 2it’. None of these names have anything to do with AOL." Although the Panel does speak Spanish, it thanks Respondent for its explanation of these terms.
2. On element (ii), legitimacy of Complainant’s intellectual property rights, Respondent challenges by asserting that
a. "America" and "Online" are not proprietary words subject to trademark protection, and
b. Respondent further raises a cultural/linguistic challenge by stating in its Response, paragraph 7(a), that the expression "America" is of Spanish language origin, deriving from Spain’s naming the New Continent in honor of explorer Amerigo Vespucci (see Response, Exhibit C-1a), and hence not subject to protection as a trademark by the U.S. Patent and Trademark Office. Respondent asserts its right and cultural heritage to use the Spanish expressions free of any encumbrance.
3. On element (iii), bad faith, Respondent denies bad faith by:
a. offering not to re-register four of the domain names the registrations of which have expired (see Response, paragraph 7 and Annex A thereto), ie all the domain names EXCEPT <americaonlinelatino.com>; and by
b. denying that it had actual knowledge of Complainant’s intention to enter the South American internet market (see Response, paragraph 10); and by
c. denying that it offered the domain names for sale to Complainant (Response, paragraph 8c); and by
d. denying that it expressly offered the domain names for auction on the internet (Response, paragraph 12d); and by
e. justifying its registration of a non-AOL related domain name which Complainant alleged was infringing the rights of third parties (Response, paragraph 12n).
6. Discussion and Findings
Based on the facts and contentions referenced above, the Panel finds as follows:
I. As regards proof of element (i) above, the confusion between Complainant’s marks and the domain names as registered and used by Respondent, the Panel finds:
a. Respondent claims correctly that the Complainant has not supplied evidence of actual customer confusion. But in this matter, this Panel agrees with the WIPO Panel decision in America Online, Inc. v. Frank Albanese, WIPO Case D2000-1604, involving the domain name <aoltrader.com>. Footnote 1 at the bottom of that decision states: "The Panel emphasizes that the issue of whether a domain name is identical or confusingly similar to a mark in which Complainant has rights, under para. 4.a.(i) of the Policy, is different than whether a likelihood of confusion exists. Whether a likelihood of confusion exists, which must be determined in the context of the goods and services upon which the parties' marks and domain name are used, is beyond the purview of the Panel. Thus, the parties' arguments with respect to the issue of likelihood of confusion are not relevant to the instant proceeding."
This means that actual customer confusion need not be proven, but a case must be made that a reasonable person could be confused. It is quite possible that people who were confused may still be confused and hence not aware of the difference so as to be able to write a letter to Complainant.
b. Disclaimers by Respondent on its webpages to which the domain names resolve: On the only currently active webpage visited by the Panel on November 8, 2001, there is a disclaimer in medium-sized type at the bottom of the page stating that "WE ARE IN NO WAY ASSOCIATED WITH AOL." A disclaimer such as this one can help lessen potential confusion, but usually does not eliminate confusion caused by domain names with strong similarities to others’ trade or service marks – especially after the initial pull to Respondent’s website.
c. The internet is a communications mechanism with global reach, so it is virtually impossible to avoid confusion by delineating separate markets on the basis of geography, especially when the same language – Spanish, with some local and national variations – is in play for both the U.S. Hispanic market and the Latin American Hispanic market.
II. As regards proof of element (ii) above, intellectual property rights, the Panel finds:
a. Complainant has adequately demonstrated its own intellectual property rights in the trademarks "AOL", "AOL.COM" and "AMERICAONLINE" in the relevant trademark product/service international classes. Although the words "America" and "online" may not be legally protectable trademarks by themselves, as Respondent contends, the U.S. Patent & Trademark Office has permitted registration of the combination of these words as a legally protectable trademark, in the international classes of goods and services referenced in section 4 above of this Panel’s decision.
b. As regards the lack of legitimate interest or rights in the domain name, Respondent has failed to assert any such interest or right of its own which is legally protectable. The Panel does take note of Respondent’s claim of cultural difference with respect to the Spanish versus the English words for "America", but finds that in this area, Respondents do not have any legally protectable interest or right as such. Nor does the Panel agree that because the word "America" is the same in Spanish and English, that this would prevent Complainant from holding an enforceable trademark. Furthermore, the Panel does observe that Respondent’s website to which the domain name <americaonlinelatino.com> resolves, is not in Spanish, but in English.
III. As regards proof of element (iii) above, the bad faith registration and use elements, the Panel believes these to be the most important elements in this case.
In general, this Panel has not accepted in its prior UDRP rulings, and does not accept in this case, evidence of success or failure in negotiations between the parties as evidence of good or bad faith on the part of any party. Admitting into this proceeding evidence taken from settlement negotiations runs contrary to public policy adopted by all courts in the U.S. at least, to encourage parties to settle their disputes amicably by keeping confidential between them all evidence of their settlement negotiations.
a. On Complainant’s claims of bad faith, the Panel finds:
(1) Timing of Respondent’s registration of domain names closely after Complainant’s public announcement to enter to Latin American market: This claim is vigorously denied by Respondent, and Complainant does not offer any proof beyond the text of its own announcement. Nor is the Panel convinced by Complainant’s statement that a representative of Respondent at one time held an AOL user account. Therefore the Panel finds this aspect not proven satisfactorily.
(2) Attempts by Respondent to sell the domain names to Complainant:
As noted above, generally this Panel will not take into evidence the substance of failed negotiations. Respondent claims that the proffered sale was part of the transfer of a larger business model. Both sides offered transfer agreements as evidence, but no agreement appears to be signed by both parties. Hence this argument is not acceptable to the Panel.
(3) Offer by Respondent to sell the domain name or names on an internet auction site: Annex H of the Complaint contains printouts from the auction page <www.greatdomains.com> where three of the domain names are offered for sale: <latinaol2it.com>, <aol2it.com>, and <aolsi1.com>. Respondent replies that these were not really offers for sale, but that it "placed ALL its domain names with an impartial third party in the event of future negotiations" (see Response, paragraph 12(d)). The Panel finds Respondent’s explanation that this is a mere appraisal service, unsubstantiated by any independent third-party statement or declaration, to be unconvincing. A visit by the Panel to <www.greatdomains.com> reveals a page containing a description of each domain name for sale by Respondent as follows:
"Description: Can be used as an ISP/Business site. This domain is part of a 50 name package in both the USA and Latin markets, as a Cell Phone and Internet Service..."
Asking price: Make Offer"
(1) Pattern of registration by Respondent of other infringing domain names: Complainant really only points to one other domain name, and Respondent has made a technical argument in justification of its registration of that name. The Panel finds that Complainant has not made its case on this item.
b. On Respondent’s defenses to bad faith, the Panel finds:
(1) Its offer not to re-register four of the five domain names at issue: this can be some indication of good faith, with respect to the four domain names involved.
(2) Timing: See the finding in paragraph 6(III)(a)(1) above.
(3) Non-offer of domain names for sale to Complainant: see the finding in paragraph 6(III)(a)(2) above.
(4) Non-offer of domain names for auction on the internet: see the finding in paragraph 6(III)(a)(3) above.
(5) Justification of registration of other allegedly infringing domain names: s ee the finding in paragraph 6(III)(a)(4) above.
IV. Finally, a legitimate defense by a Respondent, even if bad faith is proven, is a legitimate business activity where the domain name plays an integral part, which is not in competition with Complainant. This was the situation in the <aoltrader.com> case, America Online, Inc. v. Frank Albanese, WIPO Case D2000-1604, January 25, 2001, where the Panel declined to transfer the <aoltrader.com> domain name to Complainant AOL, Inc. because the Respondent was engaging in a legitimate, non-competing business in which this domain name was an essential part – the brokerage of AOL shares of stock. However, Respondent has not made out a similar case here.
On the contrary, when visiting Respondent’s website <www.americaonlinelatino.com> and clicking on the "What We Do" tab at the top of the page, the following message is placed there: "We can provide you with the best Latino Internet Service (ISP) and Hosting available. We will also help you build a professional money making Web Site that takes payment by credit card, or check live, with complete Point and Click ease. Sell our products like PRE-PAID INTERNET ACCESS CREDIT CARDS, CELL PHONES, and DSL SERVICE, or we will help you sell your own products. No programming is needed on your part! We will show you how to trade on our success! It's as easy as 1,2,3!" The ISP aspect, at least, appears to be quite similar to the primary type of services provided by Complainant. Nor does this tab seem to match Respondent’s assertion that "the current Web Site is non-commercial" (Response, paragraph 12l).
Summary of Findings:
(i) Respondent’s domain names and corresponding websites can be confused with the marks of Complainant by a reasonable internet user, which could create a likelihood of confusion regarding the sponsorship and affiliation of these sites.
(ii) Complainant’s intellectual property rights in the marks "AOL", "America Online" and "AOL.COM" have been proven to the Panel. Respondent has not demonstrated any rights of its own in these marks or names.
(iii) Respondent has shown a degree of bad faith by offering all the domain names for auction on an internet site. Respondent has failed to make the case for a legitimate business need for the domain names, as described in Paragraph 6(IV) above.
Paragraph 4(b) of the Policy cites, without limitation, various examples of bad faith. Paragraph 4(b)(iv) of the Policy provides one such example of bad faith by a respondent:
"(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."
The Panel finds that this situation occurs in the present case. While it is often difficult to prove a Respondent’s actual intent, the Panel may clearly infer such intent by the use of domain names that include the well-known marks "America Online" and "AOL" on Respondents’ web pages.
There is no doubt that Respondent has the right to market its own wide array of services on the internet aiming at the U.S. Hispanic market. The Complainant does not have the right to prevent Respondent from doing so. And Respondent may have the right to use the phrases "latino","2it", and/or "celul" in its domain names. However, Respondent is not entitled to do this by combining these phrases in its domain names with Complainant’s legally protected marks, then giving rise to domain names that could reasonably cause confusion with Complainant’s well-known and registered marks - especially in similar spheres of business activity.
Based upon the Panel’s Findings from Section 6 above, and under its authority vested by Paragraph 4(i) of the Policy, the Panel hereby issues its order as follows:
transfer of the registration by the Registrar to the Complainant of the domain names <americaonlinelatino.com>, <aol2it.com>, <latinaol2it.com>, <aolsi1.com>, and <celulaol.com>.
Paul E. Mason
Dated: November 20, 2001
1. Respondent has described Complainant as being in the "South American market". However, Mexico, where Complainant is very active, is part of North America.