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 party’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 “copiedâ€ Complainant’s mark in its domain name. Respondent’s explanation of how and why he came to pick and register the at-issue domain names is far more plausible than Complainant’s demonizing account that characterizes Respondent, a full time college student, as one willing and wanton to capitalize on Complainant AOL’s goodwill. Since it does not appear that Respondent set out to copy Complainant’s claimed mark, “copyingâ€ 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.
NAF are the biggest SOBs from those UDRP bodies, probably most corrupted (or just most stupid, take your pick)
How the hell does AOL have rights for AutoBlog unless they are selling an unrelated product that gives it secondary meaning?
“Auto Blog” is generic and should NEVER be allowed to be trademarked for an Auto Blog.
Does CarBlog.com now have to worry about AOL?
What a load of sh*t from the AOL and the USPTO !!!
Andrew Allemann says
Johnny – this wasn’t USPTO. In fact, I suspect the reason they haven’t tried to trademark it with USPTO is because it would be rejected.
Domain Investor says
In regards to the AutoBlogNews.com domain AOL won –
“The Respondent failed to submit a Response in this proceeding.”
Whenever the respondent does not respond, 99% of the time they lose.
And, the law firm justifies their job to the client plus bills the client for an excessive amount of time (and revenue).
The law firm figured that the second guy would not fight it and they would win.
Plus, maybe the law firm needed some additional billable hours.
Now, the law firm and AOL have egg on their face. The next time they file, they will be more prepared. (Plus, more billable hours.)
Chip Meade says
Funny thing is that I first thought of an automatic (or bot) blog product rather than car. That to me might be a TM able software or service. Intereting thought anyway.
Andrew Allemann says
Chip – as a matter of fact, the respondent pointed out that there is a software product called AutoBlog