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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION America Online, Inc. v. ran! Albane"e Ca"e No. D#$$$%&'$( &. Partie" The Complainant in this administrative proceeding is America Online, Inc., a Delaware corporation with its principal place of business at 22000 AO !a", Dulles, #irginia, $.%.A. The &espondent is 'ran( Albanese, whose address is )*+ ,. -adison %uite ),, %pringfield, Illinois .2/0*, $.%.A. #. Domain Name and Re)i"trar The domain name in dispute is as follows0 1aoltrader.com2 The domain name was registered b" &espondent with 3etwor( %olutions, Inc. 43%I5 on -arch 22, 2000. *. Proced+ral ,ac!)ro+nd On 3ovember 20, 2000, the !I6O Arbitration and -ediation Center received from Complainant via e7mail a complaint for decision in accordance with the $niform Domain 3ame Dispute &esolution 6olic", adopted b" the Internet Corporation of Assigned 3ames and 3umbers 4ICA335 on August 2., *+++ 486olic"95, the &ules for $niform Domain 3ame Dispute &esolution 6olic", approved b" ICA33 on October 2:, *+++ 4;&ules;5, and the !I6O %upplemental &ules for $niform Domain 3ame Dispute &esolution 6olic" 4%upplemental &ules5. The Complaint was filed in compliance with the re<uirements of the &ules and the %upplemental &ules, pa"ment was properl" made, the administrative panel was properl" constituted, and the panelist submitted the re<uired %tatement of Acceptance and Declaration of Impartialit" and Independence. The instant Administrative 6roceeding was commenced on December *2, 2000. On December 2+, 2000, !I6O received a &esponse from &espondent via e7mail. A ;corrected; &esponse was received b" !I6O via e7mail on =anuar" >, 200*. page *

The decision of the 6anel was due to !I6O on or before =anuar" 2>, 200*. (. act+al ,ac!)ro+nd !ith over 2) million subscribers, Complainant America Online, Inc. 4AO 5 operates the most widel" used interactive online service in the world. Complainant owns numerous $.%. trademar( registrations for the mar( AO , as used since *+?+ in connection with various computer services, including computeri@ed research and reference materials in the fields of business and finance. %ee Complaint, AnneA B. AO also uses the mar( AO .CO- as a domain name for its portal !eb site. 1aol.com2also is the subCect of two $.%. trademar( registrations owned b" Complainant. %ee Complaint, AnneA C. ComplainantDs mar(s have been and continue to be widel" publici@ed throughout the $.%. and the world. %ales of services under the mar(s have amounted to man" billions of dollars. As noted above, &espondent registered the domain name in dispute with 3%I on -arch 22, 2000. The domain name is used in connection with a commercial !eb site that provides stoc( trading services. %ee Complaint, AnneA D. ComplainantDs counsel, on =ul" *0, 2000, August 2?, 2000, %eptember 20, 2000, and %eptember 2+, 2000, sent ;cease and desist; letters to &espondent or his attorne" re<uesting the transfer to Complainant of the disputed domain name. The partiesD counsel, apparentl", discussed the matter on October ), 2000. In a letter dated October :, 2000, ComplainantDs counsel indicated to &espondentDs counsel that ;EAO F is willing to reimburse -r. Albanese for his G/0 domain registration feeH however, AO reCects "our offer to pa" -r. Albanese an amount in eAcess of the registration fee. AO also reCects "our clientDs offer to enter into a licensing agreement whereb" -r. Albanese would share his 1aoltrader.com2 profits with AO .; %ee Complaint, AnneA ,. -. Partie". Contention" Complainant contends that the domain name in issue is nearl" identical and confusingl" similar to ComplainantDs registered mar(s AO and AO .CO- and that &espondent 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 that0 4*5 &espondent registered the domain name long after AO Ds adoption and use of the AO and AO .CO- mar(sH 425 the services and information provided b" &espondent at its web site are nearl" identical to those provided b" Complainant at its online financial pageH 4)5 &espondent has registered numerous other domain names that infringe upon famous mar(s, including 1inteltrader.com2, 1ciscotrader.com2, 1ibmtrader.com2, and 1delltrader.com2H and 4:5 &espondent refused to transfer the disputed domain name, re<uested that AO pa" a premium in stoc( or cash to resolve the matter, and failed to terminate its site after receiving letters from ComplainantDs counsel that eAplained AO Ds rights in the mar(s AO and AO .CO-. page 2

In its &esponse, &espondent contends that0 4*5 the disputed domain name is not identical nor confusingl" similar to a trademar( or service mar( in which AO has rightsH 425 it has a right or legitimate interest in respect of the domain name because it is in the business of providing investment and trading advice on stoc(s, options and mutual fundsH and 4)5 the domain name was not registered and is not being used in bad faith because &espondent is not tr"ing to divert clients from the America Online site of AO .CO- and &espondent posted a notation on its web site stating that ;This site is not affiliated with American Online.; According to &espondent, ;-" site is a place where someone who is interested in trading the America Online stoc( via a bro(erage transaction can come to me for advice on what the best available purchaseIsale price ma" be at the time. Therefore, because I trade the stoc( AO , I bought the domain name 1aoltrader.com2.; &espondent further argues that the partiesD web sites are not confusingl" similar since it is not in the business of advertising or selling Internet computer7related services. '. Di"c+""ion and indin)" The 6anel has carefull" reviewed the evidence presented and determines that Complainant has not met all the re<uirements set forth in para. :.a. of the 6olic". 'irst, there is no <uestion that the domain name in dispute is confusingl" similar to ComplainantDs AO and AO .CO- mar(s.* The inclusion of the generic term ;trader; in &espondentDs domain name is without legal significance. It is also clear that Complainant, through its long use of, and registrations covering, the AO and AO .CO- mar(s, has rights in the mar(s. Jowever, the 6anel determines that &espondent has rights or legitimate interests with respect to the domain name. -ore specificall", the 6anel finds, based on the above7recited facts, that, prior to notice to &espondent of this dispute, &espondent used the domain name in connection with a bona fide offering of services, i.e., online stoc( bro(erage services, within the meaning of para. :.c.4i5 of the 6olic". The 6anel further concludes that &espondent is ma(ing a ;fair use; of the disputed domain name, within the meaning of para. :.c.4iii5 of the 6olic". The evidence indicates that consumers ma" trade in AO stoc( at &espondentDs 1aoltrader.com2 web site. Thus, &espondentDs use of the domain name appears to be merel" descriptive of the services offered b" &espondent. 'urther, &espondentDs disclaimer on its web site of an" affiliation with Complainant supports a determination of ;good faith,; for purposes of application of the ;fair use; doctrine. %ee *>

The 6anel emphasi@es that the issue of whether a domain name is identical or confusingl" similar to a mar( in which Complainant has rights, under para. :.a.4i5 of the 6olic", is different than whether a li(elihood of confusion eAists. !hether a li(elihood of confusion eAists, which must be determined in the conteAt of the goods and services upon which the partiesD mar(s and domain name are used, is be"ond the purview of the 6anel. Thus, the partiesD arguments with respect to the issue of li(elihood of confusion are not relevant to the instant proceeding. 2 It should be noted that a finding of legitimate right to a domain name means onl" that the streamlined dispute7 resolution procedure is not available and that the dispute is a ;legitimate; one that should be decided b" the courts. ,ven though the dispute is ;legitimate,; the domain name holderDs rights ma" not ultimatel" prevail over a trademar( in court. %ee %econd %taff &eport on Implementation Documents for $niform Dispute &esolution 6olic".

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$.%.C. K***>4:5. !hile the 6anelDs finding on the issue of ;rights or legitimate interests; is dispositive of the instant matter, for the sa(e of completeness, it will address the issue of ;bad faith; registration and use. The 6anel finds that there is evidence of ;bad faith; registration and use. In particular, &espondent concedes in his &esponse that he offered to sell the domain name to Complainant for G>,000, which is far in eAcess of his documented out of poc(et eApenses directl" related to the domain name, within the meaning of para. :.b.4i5 of the 6olic". In the 6anelDs view, however, such a finding does not detract from the fact, as determined above, that &espondent used the domain name in connection with a bona fide offering of services, within the meaning of para. :.c.4i5 of the 6olic". 6ursuant to para. :.c. of the 6olic", such circumstance ;shall demonstrate; oneDs rights or legitimate interests to the domain name. 4emphasis added5. The 6olic" is clear that ;the complainant must prove that each of these three elements Ei.e., confusing similarit", no rights or legitimate interests, and bad faithF are present.; This it has failed to do. /. Deci"ion In view of the above, the 6anel D,3I,% ComplainantDs re<uest for transfer to it of the domain name 1aoltrader.com2. LLLLLLLLLLLLLLLLLLLLLL =effre" -. %amuels %ole 6anelist Dated0 =anuar" 2>, 200*

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