America Online wins 'aol.cl' domain name dispute
In Comercial Raymarket Limitada v America Online Inc (Recurso 3687/2002, Resolucion 144072), the Court of Appeals of Santiago has affirmed the decision given by an arbitrator under the NIC Chile arbitration and dispute resolution system ordering the cancellation of the domain name 'aol.cl'.
Comercial registered the country-code top-level domain name 'aol.cl' and alleged that it was intended for use as a website providing information on domestic pets. It argued that the term 'aol' was an abbreviation for 'animales online' and maintained that:
- the registration was made in accordance with NIC Chile Regulations;
- there were no oppositions to the application (NIC Chile provides a 30-day opposition period before granting registrations);
- it had no knowledge of America Online or its trademark AOL;
- America Online and its trademark AOL are not well known in Chile; and
- America Online had abandoned a prior application for the same name.
At the arbitration proceedings, America Online argued that its prior application for 'aol.cl' had lapsed due to lack of payment and not to lack of interest. It further contended that Comercial had registered the name in bad faith since the name and trademark AOL are famous worldwide and Comercial should have been aware of them. America Online also highlighted that Comercial had not registered the domain name 'animalesonline.cl' and therefore did not have a legitimate interest in the name 'aol.cl'. The arbitrator agreed and ordered the cancellation of the domain name.
The appellate court affirmed the decision. This is the first time that the Court of Appeals of Santiago has ruled on a conflict between the owner of a famous trademark and the registrant of a disputed domain name, and the decision gives judicial support to the NIC Chile arbitration and dispute resolution system.
Luis Felipe Claro Swinburn, Claro y Cia, Santiago
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