America
Online, Inc. v. Lenard Iszak c/o ZKUSA Inc.
Claim Number: FA0110000100712
PARTIES
Complainant is America Online, Inc., Dulles, VA (“Complainant”) represented by James R. Davis, of Arent Fox Kintner Plotkin & Kahn. Respondent is Lenard Iszak
c/o ZKUSA Inc., Plantation, FL (“Respondent”).
REGISTRAR AND
DISPUTED DOMAIN NAME
The domain name at issue is <icqmultipager.com>, registered with Iholdings.
PANEL
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.
James A. Carmody, Esq., as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on October 19, 2001; the Forum received a hard copy of the Complaint on October 25, 2001. On October 19, 2001, Iholdings confirmed by e-mail to the Forum that the domain name <icqmultipager.com> is registered with Iholdings and that Respondent is the current registrant of the name. Iholdings has verified that Respondent is bound by the Iholdings 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 26, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 15, 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@icqmultipager.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 December 3, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James A. Carmody, Esq. 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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from the Respondent to the Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Respondent’s <icqmultipager.com> domain name is confusingly similar to Complainant’s registered ICQ trademark.
Respondent has no rights or
legitimate interests in respect to <icqmultipager.com>.
Respondent registered <icqmultipager.com>
in bad faith.
B. Respondent
No Response was received.
FINDINGS
Since 1996, Complainant has used the ICQ trademark in connection with telecommunications, electronic transmission of data, paging, and messaging services.
Additionally, Complainant owns at least 41 registrations of the ICQ mark including a Federal trademark registration in the U.S. Moreover, Complainant promotes the ICQ mark extensively over the Internet through its <icq.com> domain name.
Complainant’s ICQ mark generates millions of dollars in sales and services each year. Further, the ICQ service has registered over one million subscribers, making it one of the largest online communities in the world.
In August 2001, Respondent registered the <icqmultipager.com> domain name. Respondent initially used the domain name in connection with a commercial website that made reference to Complainant’s ICQ mark. Subsequently, Respondent threatened to sell the domain name to an unnamed Russian entity unless Complainant paid Respondent $50, 000.
DISCUSSION
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
Respondent’s domain name is confusingly similar to Complainant’s ICQ registered trademark because the domain name includes Complainant’s mark in its entirety. See Hollywood Network, Inc, v. Video Citizen Network, FA 95897 (Nat. Arb. Forum Dec. 20, 2000) (finding that the domain name <hollywoodnetwork.tv> is identical and confusingly similar to Complainant’s HOLLYWOOD NETWORK mark because the “inclusion of the entirety of Complainant’s mark in the domain name at issue makes it confusingly similar”); see also Quixtar Inv., Inc. v. Smithberger and QUIXTAR-IBO, D2000-0138 (WIPO Apr. 19, 2000) (finding that because the domain name <quixtar-sign-up.com> incorporates in its entirety the Complainant’s distinctive mark, QUIXTAR, the domain name is confusingly similar).
The likelihood that Internet users would associate Respondent’s website with Complainant’s business is substantial because Respondent made reference to Complainant’s mark on its website. Further, Complainant offers similar paging services. See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding that given the similarity of the Complainant’s marks with the domain name, consumers will presume the domain name is affiliated with the Complainant …the Respondent is attracting Internet users to a website, for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, or endorsement of the Respondent’s website); see also Surface Protection Indus., Inc. v. The Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding the domain name confusingly similar “so as to likely confuse Internet users who may believe they are doing business with Complainant or with an entity whose services are endorsed by, sponsored by, or affiliated with Complainant; hence, satisfying the confusing similarity requirement”).
The Panel finds that that Policy ¶ 4(a)(i) has been satisfied.
Respondent’s failure to provide both a response and evidence that it has rights in the domain name indicates that Respondent has no rights or legitimate interests. 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).
Respondent’s use of the domain name to advertise services nearly identical to those of Complainant while using a domain name confusingly similar to Complainant’s registered mark indicates that Respondent intended to divert Internet users to its site by inferring an association between Complainant and Respondent. This is not a bona fide offering of goods and thus, indicates that Respondent does not have any rights or legitimate interests pursuant to policy ¶ 4(c)(i). See Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001) (finding no rights or legitimate interests where Respondent diverted Complainant’s customers to his websites); see also Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name).
The fact that Respondent, known as Lenard Isak, is not commonly known by the domain name indicates that Respondent has no rights or legitimate interests pursuant to Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in domain name when Respondent is not known by the mark); see also Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent has no rights or legitimate interests in domain names because it is not commonly known by Complainant’s marks and Respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use).
Respondent’s intention to divert Internet users to its website by suggesting an association with the Respondent is not a non-commercial or fair use of the domain name, and as a result, indicates that Respondent does not have any rights or legitimate interests pursuant to ¶ 4(c)(iii). See Kosmea Pty Ltd. v. Krpan, D2000-0948 (WIPO Oct. 3, 2000) (finding no rights in the domain name where Respondent has an intention to divert consumers of Complainant’s products to Respondent’s site by using Complainant’s mark).
The Panel finds
that 4(a)(ii) has been satisfied.
The well-known nature of Complainant’s trademark indicates that Respondent’s use of the famous mark in its domain name is opportunistic bad faith. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the “domain names are so obviously connected with the Complainants that the use or registration by anyone other than Complainants suggests ‘opportunistic bad faith’”).
Respondent’s intention to sell the infringing domain name to Complainant for $50,000 indicates Respondent’s bad faith use pursuant to Policy ¶ 4(b)(i). See Little Six, Inc v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding Respondent's offer to sell the domain name at issue to Complainant was evidence of bad faith); see also Moynahan v. Fantastic Sites, Inc., D2000-1083 (WIPO Oct. 22, 2000) (finding bad faith where the Respondent offered to sell the Domain Name to the Complainant for $10,000 when Respondent was contacted by Complainant). Moreover, Respondent’s willingness to sell the domain name within a month of purchase indicates Respondent’s bad faith registration. See Microsoft Corp. v. Amit Mehrotra, D2000-0053 (WIPO Apr. 10, 2000) (finding bad faith where that Respondent registered the domain name for the purpose of selling it).
A presumption of bad faith use pursuant to Policy ¶ 4(b)(iii) will be made where Respondent registers an infringing domain name where Complainant and Respondent offer similar services in a specialized field. See SR Motorsports v. Rotary Performance, FA 95859 (Nat. Arb. Forum Jan. 4, 2001) (finding it "obvious" that the domain names were registered for the primary purpose of disrupting the competitor's business when the parties are part of the same, highly specialized field).
The Panel finds that 4(a)(iii) has been satisfied.
DECISION
Having established all three elements required under the ICANN policy,
the Panel concludes that the requested relief shall be hereby granted.
Accordingly, it is Ordered that the domain name <icqmultipager.com> be tranferred from Respondent
to Complainant.
James A. Carmody, Panelist
Dated: December 11, 2001
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page