Harsh Words for AOL in Domain Dispute — Arbitrator Has

AOL loses domain dispute; arbitrator condemns firm and its lawyer.

AOL, by now known for playing fast an loose with trademarks, has lost a domain dispute for four domains counting AutoBlogReviews.com.

National Arbitration Forum panelist Paul M. DeCicco found that AOL failed to prove secondary meaning and rights to the term AUTOBLOG. AOL purchased AutoBlog.com in its Weblogs buyout. DeCicco displayed a common sense approach to proving that a firm 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 purchased distinctiveness ought to not be attenuated since of the abbreviated nature of the instant proceeding. Nor ought to it be increased. To do either would indicate an arbitrary predisposition in favor the benefited party’s alignment. Expedience ought to not be served at the cost of fairness.

He found AOL’s evidence insufficient and blasted the firm for its “demonizing account” of the respondent:

There is only trace circumstantial evidence tending to prove that Respondent intentionally “copied” 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, “copying” is not a factor favoring a finding of secondary meaning.

The panelist also questioned why a firm 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, ahead of you get on the case of AOL’s lawyers at Arent Fox for filing the instant case, you ought to 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.