AOL LLC v Jan Tomasiewicz
Nominet UK Dispute Resolution Service
DRS 04816
Decision of Independent Expert
1. PARTIES
Complainant: AOL LLC
Country: US
Respondent: Jan Tomasiewicz
Country: GB
2. DISPUTED DOMAIN NAMES
Iaol.co.uk; getaol.co.uk; loveaol.co.uk (the "Domain Names")
3. PROCEDURAL BACKGROUND
3.1 On 21 June 2007 the dispute was entered into the Nominet Dispute Resolution Service (DRS). Hard copies of the Complaint were received in full by Nominet on 22 June 2007. The Complaint was validated by Nominet on 22 June 2007 and sent to the Respondent on the same day to the Respondent by post and email to the addresses held by Nominet.
3.2 No Response was received from the Respondent and therefore informal mediation was not possible. On 8 August 2007 the Complainant paid the fee to obtain the Expert's decision pursuant to paragraph 21 of the Procedure for the conduct of proceedings under the DRS.
3.3 On 16 August 2007, Veronica Bailey, having confirmed to Nominet that she was independent of each of the parties and that she knew of no matters which ought to be drawn to the attention of the parties, which might appear to call into question her independence and/or impartiality, was appointed expert (the "Expert").
4. OUTSTANDING FORMAL/PROCEDURAL ISSUES
4.1 The Respondent has not submitted a Response to Nominet in time or at all (in compliance with paragraph 5a of the Procedure).
4.2 Paragraph 15(b) of the Procedure provides that "If, in the absence of exceptional circumstances, a Party does not comply with any time period laid down in the Policy or this Procedure, the Expert will proceed to a Decision on the complaint".
4.3 Nominet appears to have used all of the available contact details to try to bring the Complaint to the Respondent's attention. Consequently, there do not appear to me to be any exceptional circumstances involved and I will therefore proceed to a decision on the Complaint notwithstanding the absence of a Response.
5. THE FACTS:
5.1 The Complainant, AOL LLC, is part of the AOL group of companies (together referred to as "AOL"). AOL provides internet services to countries throughout the world.
5.2 The Complainant is the owner of numerous trade mark registrations for and including the mark AOL which cover a range of computer and internet services. These registered trade marks include:
(a) UK Trade Marks 2011484 and 2046170 for "AOL" registered in 1996;
(b) Community Trade Mark E118547 for "AOL" registered in 1998; and
(c) Community Trade Mark E224667 for "LOVE@AOL", registered in 2002.
5.3 The Complainant has a wide portfolio of domain names incorporating the AOL name including aol.co.uk; aol.com; aol.eu; aolsports.com; aolnews.com; aolmail.eu; aolvideo.com; aolradio.com; aoltv.com; aolshopping.com; aolautos.com; aolgames.com; aoltravel.com; aolireland.com; aolireland.eu; aolfrance.com; aolspain.com; and aolspain.eu.
5.4 The Respondent registered each of the disputed Domain Names, Iaol.co.uk; getaol.co.uk; loveaol.co.uk, on 20 April 2004.
6. THE PARTIES' CONTENTIONS
Complainant
6.1 In summary the Complainant makes the following submissions:
A) Rights in a name or mark which is similar to the Domain Names
(a) the Complainant is part of the AOL Group of Companies ("AOL") which operates under the AOL mark.
(b) AOL offers email, messaging and a range of interactive services including news, sport, chat, lifestyle health and entertainment ("AOL Service") and millions are exposed to the AOL mark through advertising and promotion.
(c) the Complainant owns numerous trade mark registrations containing the AOL Mark in the UK, Europe, the US and worldwide each covering a range of internet services.
(d) the Complainant has been using the mark AOL in the UK since 1996 and the mark has been used extensively and continuously in the USA for many years prior to this by the AOL group of companies.
(e) the Complainant and the AOL group of companies have broad portfolio of domain names comprising of, and including, the mark AOL and therefore a comprehensive internet presence;
(f) each of the Domain Names contains the AOL mark in full and is confusingly similar to the AOL mark. The Domain Name love@aol.co.uk contains the key components of the LOVE@AOL trade mark. The addition of the generic words/letter "i", "get" and "love" to the AOL mark will do nothing to lessen the likelihood of confusion and does not distinguish the AOL mark in any meaningful way. "I" is a prefix which is often used to relate to interactive or online/electronic services; "get" may be used to refer to accessing the AOL services; and "love"" may well be construed as a reference to the dating section of the AOL services.
(g) the Respondent is not licensed or otherwise authorised to register or use a domain name that is identical or confusingly similar to the AOL mark.
(h) decisions of WIPO administrative panels in which AOL has prevailed numerous times reflect that the AOL mark is well established as in WIPO Case NO. D2001-0835 (ioal.net).
B) Abusive Registration
The Complainant contends that the Respondent has registered (acquired or used) Domain Names, in which the Complainant has rights, in such a manner that they constitute Abusive Registrations because such registrations must have been made:
(a) to sell the Domain Names to a competitor of the Complainant; and/or
(b) to block the Complainant from use of the Domain Names; and/or
(c) to unfairly disrupt the Complainant's business; and/or
(d) and form part of a pattern of abusive registrations; and the use of the Domain Names takes unfair advantage of the Complainant's rights in, and the public's recognition and association of the Complainant with, the AOL Marks, and cause detriment to those rights
Respondent
6.2 The Respondent has not responded to communications from Nominet and has not provided a Response.
DISCUSSIONS AND FINDINGS
General
7.1 Under paragraph 2 of the Dispute Resolution Service Policy ("The Policy") the Complainant is required to show on the balance of probabilities, that:
(i) it has Rights in a name or mark that is identical or similar to the Domain Name; and
(ii) the Domain Name, in the hands of the Respondent, is an Abusive Registration.
Complainant's Rights
7.2 The Policy defines rights as including, but "not limited to, rights enforceable under English law". The Complainant is the registered owner of UK and Community Trade Marks for the mark AOL and owns the Community Trade Mark registration for LOVE@AOL. The Complainant trades worldwide using the AOL name and uses the name AOL in its domain names including aol.com, aol.co.uk, aol.fr and aol.de.
7.3 The Complainant has established rights in the AOL name as evidence by its trade mark registrations and extensive use of that name.
7.4 The Respondent's Domain Names are similar to the mark in which the Complainant has rights. The addition of the prefixes 'i', 'get' and 'love' used in the disputed Domain Names do not change the overall character of the name which is well known as identifying the Complainant. Further, in respect of the Domain Name, loveaol.co.uk, the Complainant owns a Community Trade Mark in the mark LOVE@AOL which, ignoring the ampersand in the mark, and the .co.uk suffix in the domain name, is similar to the loveaol.co.uk Domain Name.
7.5 Accordingly, I find that the Complainant has rights a name or mark which is similar to the disputed Domain Names and that on the balance of probabilities the first element of paragraph 2 a. of the Policy has been met.
Abusive Registration
7.6 Having concluded that the Complainant has rights in a name which is identical or similar to the Domain Name, it is necessary to consider whether the Domain Name constitutes an abusive registration. An abusive registration is defined in the Policy as a domain name which either:
(i) was registered or otherwise acquired in a manner which, at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant's Rights; OR
(ii) has been used in a manner which took unfair advantage of, or was unfairly detrimental, to the Complainant's Rights.
Paragraph 3 of the Policy provides a non-exhaustive list of factors that may evidence the fact that a domain name is an Abusive Registration The most relevant of these in considering the Complainant's contentions below are paragraphs 3a.i A; 3a.i.B 3a.ii and 3a. iii.
(a) Selling the Domain Names
There is no relationship between the Complainant and the Respondent and the Respondent has not been licensed to use the Complainant's well known mark AOL. The Respondent has ignored the Complainant's requests to transfer the Domain Names to the Complainant. Two of the Domain Names, getoal.co.uk and love.aol.co.uk have been offered for sale by the Respondent. Although the Domain Names were not offered directly to the Complainant, offering for sale such well known names could well have attracted interest from competitors of the Complainant, or have been designed to invite an offer from the Complainant. In respect of the Domain Names getoal.co.uk and love.aol.co.uk, I find on the balance of probabilities that those Domain Names were registered or acquired for selling those Domain Names to the Complainant or a competitor of the Complainant.
(b) Blocking registrations
The Complainant has an extensive portfolio of domain names incorporating the AOL mark. To that extent, the Complainant has not been blocked from registering its own name but has only been blocked from registering the disputed Domain Names.
(c) Unfairly disrupting the business of the Complainant.
The Respondent has been and is using the Domain Names to resolve to a website which advertises massage and other alternative therapies, not connected to the Complainant. The metags used for getaol.co.uk and loveaol.co.uk include AOL. The reputation of the Complainant is such that web traffic to the Domain Names must intend and expect to find the Complainant and not the Respondent's website. In registering and using the Domain Names and using the metatag AOL, the Respondent must have intended that the Domain Names attract visitors to the Respondent's website who are looking for the Complainant. At the very least, there must be initial confusion that the Domain Names are associated with the Complainant. The use of the Domain Names and AOL as a metatag in connection with them is likely to disrupt the Complainant's business by diverting prospective customers and business from the Complainant.
(d) Pattern of abusive registrations
The Respondent is the registrant of a number of domain names incorporating well known names in which the Respondent has no apparent rights. These include iyahoo.co.uk; getgoogle.co.uk; loveyahoo.co.uk and billgates.org.uk. Some of these follow the format of the disputed Domain Names in having the prefix "i". "get"; and "love". In the circumstances I have no hesitation in finding that the there is a pattern of abusive registrations and that the requirements of paragraph 3a.iii of the Policy have been met.
7.7 The Respondent has failed to explain or justify its registration and use of the Domain Name which incorporates the AOL name in which the Complainant has rights. There is no obvious justification for the Respondent's use of the AOL name in the Domain Names. The AOL mark had been used in the UK for eight years prior to the registration of the Domain Names by the Respondent and it is improbable hat the Respondent did not have the Complainant and its reputation in the mark in mind when it registered the Domain Names. In view of the finding above, I find that the Domain Names have been registered and used in a manner which takes unfair advantage of and is unfairly detrimental to the Complainant's rights.
For the reasons set out above, I find that the Complainant has proved, on the balance of probabilities, that it has Rights in a name or mark which are similar to the Domain Names, and that the Domain Names in the hands of the Respondent are an Abusive Registration. The Expert directs that the Domain Names be transferred to the Complainant.
Veronica M. Bailey
Date: 29 August 2007