Arbitrator Has Harsh Words for AOL in Domain Dispute
Friday, September 11th, 2009
AOL loses domain dispute; arbitrator condemns company and its lawyer.
AOL, already known for playing fast an loose with trademarks, has lost a domain dispute for four domains including AutoBlogReviews.com.
National Arbitration Forum panelist Paul M. DeCicco found that AOL failed to prove secondary meaning and rights to the term AUTOBLOG. AOL acquired AutoBlog.com in its Weblogs acquisition. DeCicco displayed a common sense approach to proving that a company has trademark rights — most panels place little emphasis on this. DeCicco wrote:
Complainant must prove the status of its mark via competent evidence, not by conjecture or innuendo. Furthermore, the degree of burden to prove that a mark has acquired distinctiveness should not be attenuated because of the abbreviated nature of the instant proceeding. Nor should it be increased. To do either would indicate an arbitrary predisposition in favor the benefited partyâ€™s alignment. Expedience should not be served at the cost of fairness.
He found AOL’s evidence insufficient and blasted the company for its “demonizing account” of the respondent:
There is only trace circumstantial evidence tending to prove that Respondent intentionally â€œcopiedâ€ Complainantâ€™s mark in its domain name. Respondentâ€™s explanation of how and why he came to pick and register the at-issue domain names is far more plausible than Complainantâ€™s demonizing account that characterizes Respondent, a full time college student, as one willing and wanton to capitalize on Complainant AOLâ€™s goodwill. Since it does not appear that Respondent set out to copy Complainantâ€™s claimed mark, â€œcopyingâ€ is not a factor favoring a finding of secondary meaning.
The panelist also questioned why a company of AOL’s stature never applied for a trademark for AUTOBLOG:
Complainant is legally sophisticated and with substantial resources. There is no obvious reason that can be gleaned from the record, or otherwise, explaining why Complainant apparently has not sought and does not seek federal registration for the AUTOBLOG mark. Notably, evidence of a valid trademark registration generally avoids the necessity to prove-up secondary meaning within a UDRP proceeding since rights are presumed, although rebuttable.
Now, before you get on the case of AOL’s lawyers at Arent Fox for filing the instant case, you should know one more piece of information. The same lawyer at Arent Fox filed a case earlier this year for AutoBlogNews.com. In that case, National Arbitration Forum panelist Paul A. Dorf ruled that AOL did have rights to the AUTOBLOG name. So not only does AOL have egg on its face, but National Arbitration deserves some blame, too. It’s easy to assume that Arent Fox used a similar argument for its rights in both cases. But with two different arbitrators there were two different decisions.