August 22, 2001 12:19pm
AOL Loses Web Porn Dispute
Source: ManNet
by: Steven Bonisteel, newsbytes.com
(GENEVA, SWITZERLAND) -- America Online [http://AOL.com], the Internet arm of communications giant AOL Time Warner [http://AOLTimeWarner.com], is rarely denied in its efforts to shoo alleged cybersquatters from Internet domains that sound like the names of its own products. But an international arbitrator says AOL's claim that the address "NudeScape.com" [http://NudeScape.com] is a play on the moniker of its Netscape Web browser is one pun too far.
The World Intellectual Property Organization [http://wipo.int], which refereed a two-domain dispute between AOL and Canadian porn site operator Media Dial Communications [http://stsim.com], said the Dulles, Va., Internet company could take the domain AOLFind.com [http://AOLFind.com], but that its "Netscape" trademark couldn't be used to prevent others from using the word fragments "nude" and "scape."
Although Media Dial didn't bother to submit its own response to AOL's cybersquatting charges, WIPO Arbitrator Clive Elliott wrote: "It seems ... there is a reasonably good argument that [Media Dial] should have a right to use these common English words to describe its pornographic services. Otherwise, parts of the English language would soon be acquired and removed from common use by those wishing to name their businesses or describe their services."
Elliott [http://www.bswip.co.nz], an intellectual property lawyer in Auckland, New Zealand, acknowledged AOL's claim that Media Dial had run a banner advertising campaign for NudeScape.com that described the site as "the site of choice for AOL users."
He wrote that the advertising's association with AOL was "inappropriate and amounts to evidence of bad faith," but that the rules of the dispute-resolution policy used by WIPO require that complainants such as AOL demonstrate a trademark conflict.
WIPO's Arbitration and Mediation Center [http://arbiter.wipo.int], based in Geneva, Switzerland, is one of four organizations accredited to process complaints under a speedy dispute resolution process of the Internet Corporation for Assigned Names and Numbers [http://www.ICANN.org].
ICANN's Uniform Domain Name Dispute Resolution Policy (UDRP) was launched in
December 1999 to sort out conflicts between Internet address holders and those who feel the addresses should belong to them because they own a similar trademark.
AOL has turned to WIPO or the U.S.-based National Arbitration Forum to win more than 100 domains reminiscent of its AOL and America Online trademarks, its ICQ and AIM instant messaging software, its Winamp and Spinner digital music applications, its CompuServe online service, and its Netscape browser.
Last fall, AOL claimed NetCaper.net via WIPO. Earlier this year, it claimed HomeNetScape.com, NrtCcape.com, and NstScape.com -- again by complaining to WIPO.
WIPO's Elliott wrote that, unlike Media Dial's use of NudeScape.com, there was no doubt that the firm's AOLFind.com conflicted with AOL's trademark and that it was wielded in bad faith.
AOL's complaint alleged that Media Dial had also once held the domains AOLSearchEngine.com and AOL-Online.com, and had offered to sell them, along with AOLFind.com, to the Dulles Company for $100,000. Under threat of legal action from AOL, Media Dial relinquished two of the addresses and removed links to pornography on AOLFind.com, posting instead a message that reads: "This Site Is Not Associated With (America Online BBS Service)."
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