AOL wins Microsoft and Sony domain names
In a strange turn of events, the National Arbitration Forum, an international network of legal scholars headquartered in the US city of Minneapolis, has rendered a decision in America Online Inc v Nasi that has left AOL the proud owner of a handful of domain names that include the trademarks of Microsoft and Sony.
AOL owns a number of worldwide trademark registrations and the domain name 'aol.com'. Nasi registered the domain names 'aol-msn.com', 'microsoft-aol.com', 'aol-microsoft.com' and 'aol-sony.com' between August and October 2001, and began attaching them to commercial and pornographic websites (one of which featured an unauthorized copy of the AOL triangle logo).
AOL alleged that Nasi offered to sell two of the domain names for $30,000 or all four for $50,000, and that he had also threatened to sell to an unidentified third party if these prices were not paid.
The complaint was upheld and the names were transferred to AOL. The National Arbitration Forum, one of the administrators of ICANN's Uniform Domain Name Dispute Resolution Policy, held that:
- the names were confusingly similar to AOL's trademarks and a reasonable internet user would think that they were associated with AOL in some way;
- Nasi did not have any rights or legitimate interest in the domain names; and
- the use of pornography in connection with the names, the offer to sell and the pointing of the names to commercial sites was all evidence of bad faith.
The result of this decision is, strangely, that AOL now owns several domain names that include the trademarks of Microsoft and Sony. The question must now be whether Microsoft and Sony will challenge the transfer.
Dawn Osborne, Willoughby & Partners, London
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