America Online Inc v. RMCMAHON Inc.
Claim Number: FA0110000101267
Complainant is America Online, Inc., Dulles, VA (“Complainant”) represented by James R. Davis, II, of Arent Fox Kintner Plotkin & Kahn. Respondent is RMCMAHON, Inc., Dayton, OR (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <icq-friends.com>, registered with Tucows, Inc.
On November 30, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James P. Buchele as Panelist. 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.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on October 24, 2001; the Forum received a hard copy of the Complaint on October 26, 2001.
On October 24, 2001, Tucows, Inc. confirmed by e-mail to the Forum that the domain name <icq-friends.com> is registered with Tucows, Inc. and that Respondent is the current registrant of the name. Tucows, Inc. has verified that Respondent is bound by the Tucows, 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 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 firstname.lastname@example.org 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.
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 name be transferred from the Respondent to the Complainant.
The disputed domain name is confusingly similar to Complainant’s registered mark, ICQ.
Respondent has no rights or legitimate interests in respect to the disputed domain name.
Respondent registered and used the disputed domain name in bad faith.
No response received.
Since 1996, Complainant has used its ICQ mark in connection with its computer and telecommunications services. Complainant registered the 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 at least 40 other trademark registrations, worldwide, for the name ICQ. In addition to its registration of the ICQ trademark, Complaint also owns various trademarks, service marks, and trade names that incorporate the ICQ mark, such as ICQmail.com, ICQphone.com, ICQanywhere, and ICQCommunity.
Respondent registered the disputed domain name, <icq-friends.com> on March 29, 2001. Respondent’s site consists almost entirely of advertisements for and links to other commercial sites. On August 20, 2001, Respondent offered to sell the disputed domain name to Complainant.
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 registration with the U.S. Patent and Trademark Office. The addition of “friends,” a generic word, to Complainant’s ICQ mark makes the disputed domain name confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). 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).
Further, the addition of a hyphen in the domain name does not eliminate the confusing similarity created by the use of Complainant’s mark. See Teradyne Inc. v. 4Tel Tech., D2000-0026 (WIPO May 9, 2000) (finding that the “addition of a hyphen to the registered mark is an insubstantial change”).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Because the Respondent has failed to submit a Response to this proceeding, the Panel may presume that Respondent has no rights or legitimate interests in the disputed domain name. 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 CMGI, Inc. v. Reyes, D2000-0572 (WIPO Aug. 8, 2000) (finding that Respondent’s failure to produce requested documentation supports a finding for Complainant).
Respondent’s use of Complainant’s mark was not intended for legitimate purposes, but rather, to create an impression that it was affiliated with Complainant’s ICQ service. See Ziegenfelder Co. v. VMH Enter., Inc. D2000-0039 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests based on the fact that the domain names bear no relationship to the business of the Respondent and that the Respondent would only legitimately choose to use the Complainant’s mark in a domain name if the Respondent was seeking to create an impression that the two businesses were affiliated).
Further, Respondent’s use of the confusingly similar domain name as a portal to other commercial sites was not a bona fide offering of goods or services. See America Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that use of Complainant’s mark “as a portal to suck surfers into a site sponsored by Respondent hardly seems legitimate”); see also Computer Doctor Franchise Sys., Inc. v. The Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) (finding that the Respondent’s website, which is blank but for links to other websites, is not a legitimate use of the domain names).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied, and Respondent has no rights or legitimate interests in respect of the disputed domain name.
Registration and Use in Bad Faith
Respondent’s unauthorized use of Complainant’s popular ICQ mark for profit indicates bad faith under Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the Complainant’s well known mark, thus creating a likelihood of confusion strictly for commercial gain); see also National Rifle Ass'n. v. fredg.com, FA 95837 (Nat. Arb. Forum Nov. 30, 2000) (finding bad faith where Respondent registered the domain names “friendsofnra.com,” “friendsofnra.net,” and “friendsofnra.org” with the intention of using the domain names in connection with individual NRA fundraising, but without permission from Complainant to use the registered marks).
Respondent’s offer to sell the disputed domain name, even without naming a specific price, adds a further appearance of bad faith. See American Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three required elements under the ICANN Policy, the Panel concludes that the requested relief should be hereby granted.
Accordingly, it is Ordered that the <icq-friends.com> domain name be transferred from Respondent to Complainant.
James P. Buchele, Panelist
Dated: December 7, 2001
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