AOL wins first '.name' case

International

In the case of America Online Inc v Adrian Paul Miles, America Online (AOL) became the first complainant to succeed under the Eligibility Requirements Dispute Resolution Policy (ERDRP) - the dispute resolution procedure for '.name'.

The ERDRP attempts to reconcile individuals' rights to register their personal names as domain names with the rights of entities that own trade names or trademarks by allowing registrants to keep '.name' domains that correspond to their legal name, even if they are not famous.

AOL submitted a complaint to the National Arbitration Forum in March, alleging that two domain names containing AOL's INSTANT MESSENGER and AIM marks were registered in violation of the ERDRP. The domain names, 'aim5.instantmessenger.name' and 'instant.messenger.name' were registered with BulkRegister by Adrian Paul Miles.

Section 4(b) of the ERDRP requires a complainant to prove that:

  • the registered domain name is not the legal name of the registrant;

  • the domain name is not the name of a fictional character in which the registrant has trademark or service mark rights; and

  • the registrant has not been commonly known by the name corresponding with the registered domain name.

Miles conceded in his response that the domain names did not comply with the ERDRP, and asked the panel to cancel the registrations so that neither he nor AOL could own the domain names. AOL also requested cancellation of the contested names in its complaint.

The panel agreed to cancel the names and determined that no detailed analysis of the individual requirements was necessary. The panel also did not address whether AOL met the requirements that would entitle it to transfer of either of the names.

While not a groundbreaking decision, the panel in the AOL Case enumerated the factors that will be used by panels in analyzing '.name' cases under the ERDRP. It also serves as a lesson to registrants that hope to make money speculating on '.name' registrations of well-known trademarks.

James L Bikoff and Patrick L Jones, Silverberg Goldman & Bikoff, LLP, Washington DC

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