America Online has won an arbitration battle against Aimster, and the music software company must now hand over aimster.com, aimstertv.com and aimstertv.net to the online giant.
The National Arbitration Forum decided that the "Aim" at the start of Aimster's name infringed AOL's trademark - standing for AOL Instant Messenger. AOL has it in for Aimster and its founder Johnny Deep because the company produces freeware that rides on top of AOL Instant Messenger and allows users to swap files (mostly music files).
The most intriguing aspect of this whole case is AOL's decision to go to NAF, rather than its arbitrator of choice, WIPO. WIPO has been very good to AOL in the course of its hundreds of dispute cases and has made a fair bit of money, thanks to the arbitration fees. Of all the cases filed by AOL against others, we know of only three that WIPO hasn't ruled in favour of. These were aolvacations.com, aoltrader.com and icqplus.org.
Why No WIPO?
It is the last of these cases that makes the most interesting reading. It sets what we like to call a precedent. WIPO makes great use of previous cases to justify its flawed logic in future cases. The precedent in this case however would have made it impossible for WIPO to hand over the Aimster domains to AOL.
AOL embarked on a huge number of domain disputes over its ICQ trademark and won all of them including icqwap.com, icqpal.com, icqteam.com etc etc. All that is except icqplus.org. The owner of icqplus.org, Vadim Eremeev, makes a freeware software product called ICQPlus which rides on top of ICQ and enhances and compliments the software, also allowing users to alter the appearance of ICQ. AOL said the domain was infringing its three-letter trademark at the start of the domain. It lost the case.
The parallels with the Aimster case are startling, and WIPO could never have ruled in AOL's favour. And so AOL went to NAF instead.
NAF is the younger brother of WIPO. Both have an overwhelmingly celebrity and corporate-friendly approach to deciding disputes. However, NAF has been eclipsed by WIPO. WIPO has managed to attract celebrities and huge companies by making flawed decisions in their favour. Since a complainant has the right to decide which arbitrator the case goes to, the publicity resulting from celebrity cases makes it by far the best-known arbitrator and hence the most popular.
Large corporates can also rely WIPO to make decisions in their favour, so WIPO rakes in huge sums in the form of arbitration fees from lawyer-happy companies.
Diced and Sliced
NAF has been keen to get a slice of the action. The company is so desperate for attention that it pumps out its own press releases whenever a slightly famous person or big company comes to it for a decision. When AOL's lawyers realised they would never be able to shut down Aimster by going to WIPO, they went to the next best option.
Look at it from NAF's perspective. The largest online company in the world turns to you to sort out a high-profile domain dispute. Decide in its favour and you can expect heavy publicity and possibly all future actions from AOL. Decide against and you have the image of being corporate-unfriendly. One brings in the money, the other ruins your one shot at the heavyweight champion. What would you do?
NAF decided two to one in favour of AOL. Panellists Peter Michaelson and James Carmody said Aimster has included "Aim" in its name to lure IM users who "are likely to think that [Deep's] service, or its Web site, is somehow related to, and affiliated with or sponsored by AOL, when in fact it is not."
They managed to ignore the fact that the UDRP (uniform dispute resolution policy) requires more than just a likeness to a trademark. It must also be shown that it was registered in "bad faith" and that the current owner has no legitimate rights to the domain. The fact someone is using the domain to run a successful business is usually enough to rule against the complainant.
Good Faith, Bad Faith
However, the third panellist, G. Gervaise Davis, was having none of it. "I would agree that the domain name Aimster.com is similar to AOL's AIM trademark," he said, "but believe that the issue of confusing similarity is an issue of fact more appropriately determined in a court of law, rather than in a summary arbitration proceeding where there is no opportunity for the relevant facts to be developed and where the arbitrators must simply speculate as to whether or not the similarity would, in fact, cause confusion.
He went on: "I also disagree with the majority's finding of bad faith, which similarly requires detailed factual information in a case like this far beyond that which can be presented to the panel in the limited written documentation available in an ICANN proceeding."
And more: "The majority decision states and [Deep] quite correctly notes in its pleadings that its peer-to-peer services piggyback, or interact, with the AOL Instant Messenger service," Davis wrote. "In my view, this is why it is perfectly legitimate for [Deep] to bring to the mind of the user a nominative reference to the AIM service."
We have been critics of domain dispute arbitrators since the beginning. Should Internet domain names be decided by bodies competing with one another for corporate attention? The answer, clearly, is no.®