AOL eyes on KOL.COM

[Dale Hubbard]

Will be interesting to see if any of our esquires comment here.

 

[zehrila]

In my point of view its bully by big boy ? its not even typo AOL A is extreme left on keyboard and Kol K is extreme right, shame they are multimillion/billion dollar company and they cant spend money to buy it off if they really need it.
peace

 

[VioxxLawyers]

AOL should go after LOL !

I'm a AOL customer and feel ashamed.

In my point of view its bully by big boy ? its not even typo AOL A is extreme left on keyboard and Kol K is extreme right, shame they are multimillion/billion dollar company and they cant spend money to buy it off if they really need it.
peace

Carl Icahn was right, AOL is all about bureaucracy and waste of corporate money.

Yoshiki should contact him, he hates AOL managers.

 

[webfreak]

(2)

(A)
The owner of a mark may file an in rem civil action against a domain name in the judicial district in which the domain name registrar, domain name registry, or other domain name authority that registered or assigned the domain name is located if--

(i)
the domain name violates any right of the owner of a mark registered in the Patent and Trademark Office, or protected under subsection (a) or (c); and
(ii)
the court finds that the owner--

(I) is not able to obtain in personam jurisdiction over a person who would have been a defendant in a civil action under paragraph (1); or (II) through due diligence was not able to find a person who would have been a defendant in a civil action under paragraph (1) by--

http://www.bitlaw.com/source/15usc/1125.html

Unfortunately, AOL has a case. Now, eNom is located in WA and VeriSign's in CA, so who knows why they filed where in VA, where AOL is located?

Based on my quick research, they're not suing you per se, they're suing for the KOL.COM domain name.

in rem
adj. from Latin "against or about a thing," referring to a lawsuit or other legal action directed toward property, rather than toward a particular person. Thus, if title to property is the issue, the action is "in rem." The term is important since the location of the property determines which court has jurisdiction and enforcement of a judgment must be upon the property and does not follow a person. "In rem" is different from "in personam," which is directed toward a particular person.

http://dictionary.law.com/default2.asp?selected=978

 

[GeorgeK]

There's a ruling that disagrees with webfreak's analysis. From the May 4, 2006 edition of BNA's Internet Law News:

CT RULES NO IN REM CLAIM TO DOMAIN WHEN OWNER RESPONDS
BNA's Electronic Commerce & Law Report reports that a
federal court in Washington has ruled that the domain name
owner's filing of an answer to an in rem action against the
domain name divests the court of in rem jurisdiction over
that property. It dismissed the in rem action because, under
the Anticybersquatting Consumer Protection Act, the in rem
option is only proper upon a showing that the plaintiff is
unable to obtain personal jurisdiction. Case name is Graham
& Buffet Ltd. v. www.vilcabama.com. Article at
<http://pubs.bna.com/ip/bna/eip.nsf/eh/a0b2t0b0p9>
For a free trial to the source of this story, visit
http://www.bna.com/prodcuts/ip/eplr.htm

Advise them that you intend to fully respond in this matter, and that the relevant jurisdiction is Japan. Better yet, have your lawyer tell them this.

Furthermore, their first use in commerce for the mark is AFTER the domain registration date, as you pointed out:

http://tarr.uspto.gov/servlet/tarr?regser=serial&entry=76511196

"First Use in Commerce Date: 2003-09-29"

which makes their claim even flimsier. And if they don't have a Japanese TM, you're not on notice in any event.

Just make sure your lawyer does respond, as their "in rem" argument does need to be challenged.

P.S. By the way, in case folks didn't realize it, AOL does have a TM for "KOL" ("Kids On Line"), that's why they're after the domain, not because of a resemblance to their "AOL" mark. However, as I mention above, their position is extremely weak.

 

[JEsports]

P.S. By the way, in case folks didn't realize it, AOL does have a TM for "KOL" ("Kids On Line"), that's why they're after the domain, not because of a resemblance to their "AOL" mark. However, as I mention above, their position is extremely weak.

Ty, this had me baffled because i could not figure out why AOL filed the tm for KOL.

 

[jberryhill]

You're in Kobe man....

So what? The name is registered via Enom, which is in the US.

(aside from which, under the ACPA, an _in rem_ action can be filed against any .com name in the US, since the .com registry is here).

Advise them that you intend to fully respond in this matter, and that the relevant jurisdiction is Japan. Better yet, have your lawyer tell them this.

The point, George, is that the in rem ACPA provision requires the absence of personal jurisdiction over the registrant. OF COURSE, if you show up and admit to jurisdiction, then the claim converts to an in personam situation, and the in rem action is dismissed. But you can't then "hide the ball" and deny that court's jurisdiction over you in connection with the domain name.

By doing that, of course, you have also upped the ante to allow monetary damages.

 

[Olney]

How long would it take to transfer his domain to a Japanese registry?
So you are saying that if you have a domain like KAT.com in Japan, registered even by a Japanese registry, & KITKAT US puts a trademark on KAT only in the US, they legally can take the domain from the person even in another country?

Not doubting you at all but that means only US companies would have trademark rights to dot coms. People outside of the US can't standup for their registrations.

The good thing is if it does get transfered to a Japanese registry. Emails in English would just get filed...

 

[DNQuest.com]

I did a lookup in archive.org, it seems the domain was never used as a website. And in 2005, it seems the domain was loaded with popups (my PC wouldnt load any of them and I decided to not look at them in case it was pop-up hell). Though you registered before the first use, if you had competeing ads on the the site or anything that would infringe on thier mark or create unfair competition, that would be the angle they go after.

It seems they were in contact with you before, what were tey saying and how were they trying to be amicable?

 

[LeeRyder]

any updates on this or new info?

 

[WhoDatDog]

Hire an Attorney and a United States publicist and put them to the test. When you win your name will be worth much more because of the publicity.

 

[Salient]

Looks to me like the AOL crew didnt jump on the domain wagon early enough. They should have secured the domain before they filed the TM for KOL and paid a fraction of what it will demand now you know they want it.

It appears they are opting for the "We will bully the name outta the guy" method.

However, I have one question for Yoshiki which I dont expect and answer...

The lawyers language indicates they have been in contact with you, even hints that you specifically refused to work out whatever it is they wanted to work out. I'd be interested to read all the dialogue leading up to this letter.

 

[nitronet]

Screw them, I would fight this all the way.

 

[hardnova]

I would think they should have purchased it if they were worried about combinations containing _ol.com a long time ago. Who do these people think they are? They dont have anything to stand on...countersue them for stress and reverse hijacking...the second they file you have proof. Ari Goldberger in NYC may be able to advise you on this, but he thinks he is hot stuff so have a backup lawyer too.

AOL vs KOL ha, let them burn up some of that extra cash they have lying around to hire expensive lawyers to reverse hijack regular people...then sue until they feel it. I hate scumbag hijackers...the reason anyone can buy a domain is simple...so anyone can buy one.

 

[Deleted member 70408]

AOL vs KOL ha, let them burn up some of that extra cash they have lying around to hire expensive lawyers to reverse hijack regular people...then sue until they feel it. I hate scumbag hijackers...the reason anyone can buy a domain is simple...so anyone can buy one.

I believe you missed the point. KOL is also trademarked by AOL, and has been for several years, which is the reason they filed the suit. I think KOL is a 3 letter generic, but they didn't file a suit simply because the name ends in OL.

 

[Dave Zan]

I think KOL is a 3 letter generic

Long ago, someone once asked if 3 letters are generic or not:

http://www.dnforum.com/showthread.php?t=62627&highlight=intent

Note jberryhill's first response on that thread.

 

[Deleted member 70408]

He made some very good points. I guess it really depends what KOL was used for in the past.

 

[stevesko]

Would it matter if he owned the domain prior to them TM'ing it?

Sony recently TM'ed a name I have owned for years...

Good luck fighting AOL...

Steve

 

[John-MI]

Wow i would deffintly fight this. As it looks like you have had the name longer than AOL has beeen around which schould put them out of bussiness right there.

i think even with the Kids on line thing you would win, just becaus ethe time you bought the domain.

But as they said counter sue them for stress, and stuff lol.

- John

 

[David G]

It's a real shame there is no website or ppc page since the name must be a high traffic name what with 877 with ext in OV.

Also see in 2001 it was being used in the context of it being "Korea Online" That could easily be the reason AOL feels like they will prevail in the lawsuit since they may feel it was mimicking America Online.

http://web.archive.org/web/20010518055716/http://www.kol.com/

I wonder how John Berryhill would view the above information and how it could impact AOL winning, if at all?