America Online Inc v. Acnk Ltd.
Claim Number: FA0110000100313
Complainant is America Online, Inc., Dulles, VA ("Complainant") represented by James R. Davis, II, of Arent, Fox, Kintner, Plotkin & Kahn. Respondent is Acnk Ltd., Deungchon Dong, Korea ("Respondent").
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are: <icqasian.com>, <icqcelebs.com>, <icqebony.com>, <icqgay.com>, <icqhardcore.com>, <icqlesbo.com>, <icqmature.com>, <icqteen.com>, <icqtoons.com>, <icqvoyeur.com>, registered with Intercosmos Media Group, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on October 4, 2001; the Forum received a hard copy of the Complaint on October 9, 2001.
On October 5, 2001, Intercosmos Media Group, Inc. confirmed by e-mail to the Forum that the domain names <icqasian.com>, <icqcelebs.com>, <icqebony.com>, <icqgay.com>, <icqhardcore.com>, <icqlesbo.com>, <icqmature.com>, <icqteen.com>, <icqtoons.com>, <icqvoyeur.com> are registered with Intercosmos Media Group, Inc. and that Respondent is the current registrant of the name. Intercosmos Media Group, Inc. has verified that Respondent is bound by the Intercosmos Media Group, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the "Policy").
On October 9, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 9, 2001 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@<icqasian.com>, postmaster@<icqcelebs.com>, postmaster@<icqebony.com>, postmaster@<icqgay.com>, postmaster@<icqhardcore.com>, postmaster@<icqlesbo.com>, postmaster@<icqmature.com>, postmaster@<icqteen.com>, postmaster@<icqtoons.com>, and postmaster@<icqvoyeur.com> by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On November 8, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its Decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
The disputed domain names are identical and confusingly similar to its ICQ U.S. and Korean registered marks.
Respondent has no rights or legitimate interests in respect to the disputed domain names.
Respondent registered and used the disputed domain name in bad faith.
No response was received.
Since 1996, Complainant has used its ICQ mark in connection with its computer and telecommunications services. Complainant registered the ICQ mark on the Principal Register of the United States Patent and Trademark Office as Registration No. 2,411,657 on December 12, 2000. Complainant also holds a Korean trademark registration for its ICQ mark.
Respondent registered the disputed domain names on June 30, 2001. Respondent has developed websites at each of the disputed domain names which display and advertise pornographic material, and adult entertainment services for a fee.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Identical and/or Confusingly Similar
Complainant has established rights in its ICQ mark through Complainant’s registration of the ICQ marks in several countries, including Korea, where Respondent is domiciled. Furthermore, the addition of a generic word to Complainant’s ICQ mark, makes the disputed domain names confusingly similar to Complainant’s mark. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the Complainant combined with a generic word or term).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Respondent has failed to submit a response in this proceeding. It is well established that Panels may presume that a Respondent has no rights or legitimate interests in a disputed domain name where the Respondent fails to submit a response. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under certain circumstances the mere assertion by the Complainant that the Respondent has no right or legitimate interest is sufficient to shift the burden of proof to the Respondent to demonstrate that such a right or legitimate interest does exist).
Furthermore, the creation of websites located at the disputed domain names containing adult entertainment services and pornographic material is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i). See MatchNet plc v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that it is not a bona fide offering of goods or services to use a domain name for commercial gain by attracting Internet users to third party sites offering sexually explicit and pornographic material, where such use is calculated to mislead consumers and tarnish the Complainant’s mark).
There is no evidence that Respondent is commonly known by the disputed domain name, or using the domain names in connection with a legitimate noncommercial or fair use. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question); see also Body Shop Int’l PLC v. CPIC NET & Hussain, D2000-1214 (WIPO Nov. 26, 2000) (finding "that on the evidence provided by the Complainant and in the absence of any submissions from the Respondents, that the Complainant has established that (i) the Respondents are not using and have not used, or are not demonstrating and have not demonstrated, an intent to use the said domain name in connection with a bona fide offering of goods or services; (ii) the Respondents are not and have not been commonly known by the said domain name; and (iii) the Respondents are not making legitimate noncommercial or fair use of the said domain name, without intending to mislead and divert consumers or to tarnish Complainant’s <THE BODY SHOP> trademark and service mark").
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied, and Respondent has no rights or legitimate interests in respect to the disputed domain names.
Registration and Use in Bad Faith
Respondent’s attraction of Internet users to the disputed domain names by creating a likelihood of confusion for commercial gain supports a finding of bad faith pursuant to Policy ¶ 4(b)(iv). See Land O' Lakes Inc. v. Offbeat Media Inc., FA 96451 (Nat. Arb. Forum Feb. 23, 2001) (finding bad faith under Policy 4(b)(iv) where Respondent utilized a domain name confusingly similar to the Complainant’s mark and used a confusingly similar pornographic depiction of the Complainant’s registered trademark on its web site that may cause confusion as to the source or affiliation of the site).
Furthermore, Respondent’s posting of pornographic material on the dispute domain name sites is evidence of bad faith registration and use. See Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (use of another's well known mark to provide a link to a pornographic site is evidence of bad faith registration and use); see also MatchNet plc. v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that association of confusingly similar domain name with pornographic website can constitute bad faith).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three of the elements under the ICANN Policy, the Panel concludes that the requested relief should be hereby granted.
Accordingly, it is Ordered that the <icqasian.com>, <icqcelebs.com>, <icqebony.com>, <icqgay.com>, <icqhardcore.com>, <icqlesbo.com>, <icqmature.com>, <icqteen.com>, <icqtoons.com>, and <icqvoyeur.com> domain names be transferred from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: November 19, 2001
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page