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AOL Owns Patch.com, But Can’t Win wwwPatch.com UDRP

October 14, 2010AOL, Domaining, Domainnamewire, National Arbitration Forum, patch.com, Policy & Law, udrpComments Off on AOL Owns Patch.com, But Can’t Win wwwPatch.com UDRP

AOL’s lawyers didn’t provide enough evidence of common law rights.

Patch.comAOL owns the web site Patch.com, yet it has failed to obtain the typo wwwPatch.com through a National Arbitration Forum proceeding.

How is this possible? It seems that AOL’s lawyers may have taken this case for granted and not supplied enough evidence.

The panel found that wwwPatch.com is confusingly similar to AOL’s PATCH mark, and that the respondent doesn’t have any rights or legitimate interests in the domain name.

Proving registration and use in bad faith is where AOL tripped up. AOL got the Patch.com domain name on February 4, 2009. The typo was registered 8 days later. After the typo was registered AOL filed for trademarks. So the panelist looked to any sort of common law rights before wwwPatch.com was registered on February 12:

…Complainant has failed to provide sufficient evidence of common law rights in the PATCH.COM that would effectively predate Respondent’s registration of the wwwpatch.com domain name. Therefore, the Panel concludes that Respondent could not have registered the disputed domain name with the requisite bad faith under Policy.

I must say I’m somewhat surprised by this decision. Even if AOL didn’t provide the necessary information, 9 out of 10 panelists would have transferred the domain.


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AOL Ad.com Trademark Claim Refused as Generic

June 23, 2010ad.com, AOL, Domaining, Domainnamewire, Policy & LawComments Off on AOL Ad.com Trademark Claim Refused as Generic

Trademark examiner refuses Ad.com trademark again.

AOL’s continued battle to trademark a domain name it doesn’t even own has hit another roadblock. On June 21, a U.S. Patent and Trademark Office examiner refused the trademark for Ad.com on the grounds that it’s generic.

The USPTO previously refused the mark because Ad.com was merely descriptive of AOL’s services. In response, AOL amended the application to add a claim of acquired distinctiveness.

In refusing the application on the basis of its generic nature, the examiner noted:

Generic terms are terms that the relevant purchasing public understands primarily as the common or class name for the goods and/or services…Generic terms are by definition incapable of indicating a particular source of the goods and/or services, and cannot be registered as trademarks and/or service marks; doing so “would grant the owner of the mark a monopoly, since a competitor could not describe his goods as what they are…Thus, applicant’s claim of acquired distinctiveness under 15 U.S.C. §1052(f) is insufficient to overcome the refusal because no amount of purported proof that a generic mark has acquired secondary meaning can transform it into a registrable trademark.

The addition of .com is generally considered just an internet address and is often disregarded. This is a similar problem that 1-800-Mattress had trying to trademark Mattress.com. But at least in that case it actually owned the domain name it was trying to trademark.


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Advertise.com Scores First Victory in Lawsuit with AOL

October 19, 2009ad.com, advertise.com, advertising.com, AOL, Domaining, Domainnamewire, Policy & LawComments Off on Advertise.com Scores First Victory in Lawsuit with AOL

Judge forces AOL to change venue.

Advertise.comAdvertise.com 1, AOL 0.

Online advertising company Advertise.com has scored its first victory in its legal battles with AOL: a judge has ruled against AOL’s favored jurisdiction of the Eastern District Court of Virginia. AOL was forced to refile the case in California Central District Court, where Advertise.com is based.

Both companies sued each other back in August, after AOL blamed Advertise.com of trademark infringement of AOL’s Advertising.com brand. AOL is also claiming trademark rights to Ad.com, which derailed the $1.4M sale of that domain name.

Advertise.com released the following statement today:

In a lawsuit filed in August 2009, corporate giant America Online continues the dirty tactics long associated with big business by suing Advertise.com for its use of the generic word “advertise” in its designation and domain names.

Termed a battle between David & Goliath by the court itself, AOL seeks to monopolize the online advertising market and unfairly restrain its competitors by asserting extremely broad rights to words commonly used in our daily vernacular. AOL’s lawsuit is an attempt to unjustly overtake the entire online marketing space and if unopposed could likely lead to attacks on other competitors in the Internet advertising world.

Advertise.com won its first battle against latter-day Goliath on October 9, 2009, when it prevailed in a motion to dismiss based on venue in the Eastern District Court of Virginia. AOL purposely chose to bring the suit in Virginia, well-known for its exceedingly fast docket, even though the disputed action took place in California and AOL’s own headquarters are located in New York.

AOL failed when the court ruled in favor of Advertise.com and granted a transfer of venue. This was AOL’s underhanded and calculated scare tactic to keep Advertise.com off balance with mountains of paperwork and multiple legal threats in hopes it would give in to AOL’s unfounded demands.


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Arbitrator Has Harsh Words for AOL in Domain Dispute

September 11, 2009AOL, Domaining, Domainnamewire, National Arbitration Forum, Policy & LawComments Off on Arbitrator Has Harsh Words for AOL in Domain Dispute

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

Autoblog.comAOL, 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 “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 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.


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