AOL defeated in controversial cybersquatting case

The war between trademark owners and cybersquatters over the rights in scandalous deviations of trademarks continued in a recent battle between America Online (AOL) and a known cybersquatter.

In the case American Online Inc v Johuathan Investments Inc (UDRP Case D 2001-0918), the respondent, previously found guilty of cybersquatting, had registered the domain names 'aolnews.com' and 'fucknetscape.com'. The World Intellectual Property Organization arbitration panellist had little trouble finding that the former domain name had been registered in bad faith. More difficult, however, was reaching the same result for the latter.

Inferences were drawn from the registrant's failure to respond to the complaint. One of those inferences was that the registrant was obviously aware of the famous NETSCAPE trademark and did not have a legitimate interest in the mark. However, the panellist did not agree that 'fucknetscape.com' is identical to or could be confused with the NETSCAPE mark.

AOL had hoped that the fame of its mark and the registrant's past history would be enough for the panellist to find the requisite bad faith, especially because the domain name was used for a pornographic website. But the panellist instead stated that he could see no reason (i) why AOL would ever have registered the offensive domain name, or (ii) why people would believe that the domain name and site had anything to do with AOL.

The panellist acknowledged that some trademark owners have registered domain names of this kind "but only to forestall and/or impede the more obvious protest sites, not because they believe people will believe that the domain name in question … belongs to or is endorsed by the trademark owner." Since AOL had not specifically contended that it intended to register the domain name for the purpose of avoiding protest, the panellist ruled that confusion would not result, and refused to transfer the domain name to AOL.

This is a troubling decision, and is inconsistent with the purpose of the Uniform Dispute Resolution Policy. The panellist's acknowledgement that many companies register these types of domain name to prevent others from using them should have been enough for a finding of confusion, since the domain name is as likely to belong to the trademark owner as to a protestor. Moreover, the panellist should have given AOL the benefit of the fame of its NETSCAPE mark. Also of importance was the fact that the registrant was using the domain name for a purpose inextricably tied to bad faith - pornography. Under the circumstances, the panellist should have found in favour of AOL.

For a detailed discussion of the ongoing battle to deal with protest sites, see Does your company suck.com?

Steven Weinberg, Weinberg Cummerford Legal Group, Phoenix