ADMINISTRATIVE PANEL DECISION America Online, Inc. v. Transoceanic Travel
Case No. D2000-1364
1. The Parties The Complainant in this administrative proceeding is America Online, Inc., a Delaware corporation with its principal place of business in the Commonwealth of Virginia, U.S.A.
The Respondent is Transoceanic Travel, which is located at 613 Ridge Road, Lyndhurst, New Jersey 07071, U.S.A.
2. The Domain Name and Registrar The domain name in dispute is as follows: . The domain name was registered by Respondent with Network Solutions, Inc. (NSI) on December 21, 1999.
3. Procedural Background On October 10, 2000, the WIPO Arbitration and Mediation Center received from Complainant via e-mail a complaint for decision in accordance with the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation of Assigned Names and Numbers (ICANN) on August 26, 1999 (“Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999 ("Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (Supplemental Rules).
The Complaint was filed in compliance with the requirements of the Rules and the Supplemental Rules, payment was properly made, the administrative panel was properly constituted, and the panelist submitted the required Statement of Acceptance and Declaration of Impartiality and Independence.
The instant Administrative Proceeding was commenced on October 19, 2000.
Respondent did not file a timely Response, and a "Notification of Respondent Default," dated November 8, 2000, was forwarded by WIPO to Respondent. However, on November 22, 2000, Respondent's counsel filed an "Answer."1
The decision of the Panel was due to WIPO on or before January 22, 2001.
4. Factual Background With over 23 million subscribers, Complainant America Online, Inc. (AOL) operates the most widely used interactive online service in the world. Complainant owns numerous U.S. trademark registrations for the mark AOL, as used since 1989 in connection with various computer services, including computerized research and reference materials in the field of travel. See Complaint, Annex B. AOL also uses the mark AOL.COM as a domain name for its portal Web site. AOL.COM also is the subject of two U.S. trademark registrations owned by Complainant. See Complaint, Annex C.
Complainant's marks have been and continue to be widely publicized throughout the U.S. and the world. Sales of services under the marks have amounted to many billions of dollars.
As noted above, Respondent registered the domain name in dispute with NSI on December 21, 1999. The domain name is used in connection with a commercial Web site that provides information and services regarding travel. See Complaint, Annex D.
Complainant's counsel, on April 6, 2000 and July 21, 2000, sent "cease and desist" letters to Respondent requesting the transfer to Complainant of the disputed domain name. Respondent did not respond to either of these letters.
5. Parties' Contentions Complainant contends that the domain name in issue is nearly identical and confusingly similar to Complainant's registered marks AOL and AOL.COM and that Respondent has no rights or legitimate interests in the domain name.
In support of its contention that the domain name was registered and is being "used" in "bad faith," Complainant notes and argues that: (1) Respondent registered the domain name long after AOL's adoption and use of the AOL and AOL.COM marks; (2) the services and information provided by Respondent at its web site are nearly identical to those provided by Complainant at its online travel page; (3) Respondent failed to respond to Complainant's "cease and desist" letters; and (4) Respondent's web site emphasizes the "AOL" portion of the domain name aolvacations.com and that such use evidences an intent to confuse consumers into believing that Complainant endorses or is affiliated with Respondent's services.
In its "Answer," Respondent contends that it has a legitimate right to use the domain name. It indicates that it uses the domain name in connection with a web site that provides information and services regarding travel and that it has been in the travel business since 1972. According to Respondent, the letters "aol" in its domain name represent "Alfonso On Line," Alfonso being the principal of Respondent and that the web site clearly indicates same. Finally, Respondent disputes Complainant's contention that the domain name is nearly identical and confusingly similar to the AOL and AOL.COM marks, given the differences in the parties' web sites.
6 . Discussion and Findings The Panel has carefully reviewed the evidence presented and determines that Complainant has not met all the requirements set forth in Para. 4.a. of the Policy.
First, there is no question that the domain name in dispute is confusingly similar to Complainant's AOL and AOL.COM marks. The inclusion of the generic term "vacations" in Respondent's domain name is without legal significance. The differences in the parties' web sites are irrelevant to a determination of "confusing similar[ity]" under the relevant Policy.
It is also clear that Complainant, through its long use of, and registrations covering, the AOL and AOL.COM marks, has rights in the marks.
However, the Panel determines that Respondent has rights or legitimate interests with respect to the domain name. More specifically, the Panel finds, based on the above-recited facts, that, prior to notice to Respondent of this dispute, Respondent used the domain name in connection with a bona fide offering of services, within the meaning of Para. 4.c.(i) of the Policy.2 While the Panel's finding on the issue of "rights or legitimate interests" is dispositive of the instant matter, for the sake of completeness, it will address the issue of "bad faith" registration and use. The Panel concludes that the evidence is inconclusive on the issue, given Respondent's assertion that the term "aol", as used in Respondent's web site, represents the phrase "Alfonso On Line," that the web site clearly represents such to be the fact, and that, indeed, Alfonso is the first name of Respondent's principal, Alfonso Albunia.
7. Decision In view of the above, the Panel DENIES Complainant's request for transfer to it of the domain name .
1 Upon review of the facts, including Respondent's apparent miscalculation of the date its Response was due, the Panel, exercising its general powers under Paragraph 10(b) and (c) of the Rules, determines to consider Respondent's late-filed "Answer."
2 It should be noted that a finding of legitimate right to a domain name means only that the streamlined dispute-resolution procedure is not available and that the dispute is a "legitimate" one that should be decided by the courts. Even though the dispute is "legitimate," the domain name holder's rights may not ultimately prevail over a trademark in court. See Second Staff Report on Implementation Documents for Uniform Dispute Resolution Policy.