DECISION

 

America Online, Inc. v. Hector R. Gonzalez

Claim Number: FA0111000101573

 

PARTIES

Complainant is America Online, Inc., Dulles, VA (“Complainant”) represented by James R. Davis, of Arent Fox Kintner Plotkin & Kahn.  Respondent is Hector R. Gonzalez, San Antonio, TX (“Respondent”).

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <saleicq.com>, registered with Network Solutions.

 

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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on November 1, 2001; the Forum received a hard copy of the Complaint on November 5, 2001.

 

On November 6, 2001, Network Solutions confirmed by e-mail to the Forum that the domain name <saleicq.com> is registered with Network Solutions and that Respondent is the current registrant of the name.  Network Solutions has verified that Respondent is bound by the Network Solutions 5.0 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 November 8, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 28, 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@saleicq.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 4, 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from the Respondent to the Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

Respondent’s domain name is confusingly similar to Complainant’s ICQ registered trademark.

 

Respondent has no rights or legitimate interests in respect to <saleicq.com>.

 

Respondent registered <saleicq.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.

 

Respondent registered <saleicq.com> in July of 2001, well after Complainant began using its ICQ mark.  Moreover, Respondent uses the ICQ flower logo at its domain name while emphasizing the ICQ in <saleicq.com>.  Respondent’s site is a commerical site that among other things, posts advertising banners.

 

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 combined with a generic word.  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); see also 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 makes prominent reference to the ICQ mark on its website and uses the ICQ flower logo. As a result, the domain name is confusingly similar.  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.

 

Rights or Legitimate Interests

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 resolve to its website posting advertising banners indicates that Respondent was not making a bona fide offering of goods and therefore, has no rights or legitimate interests pursuant to ¶ 4(c)(i).  See FAO Schwarz v. Zuccarini, FA 95828 (Nat. Arb. Forum Dec. 1, 2000) (finding no rights or legitimate interests in the domain names <faoscwartz.com>, <foaschwartz.com>, <faoshwartz.com>, and <faoswartz.com> where Respondent was using these domain names to link to an advertising website).

 

The fact that Respondent 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 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  Policy 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

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’”).

 

Moreover, Respondent’s use of banner advertisements on its website indicates bad faith.  See Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding bad faith where the Respondent linked the domain name in question to websites displaying banner advertisements and pornographic material); see also McLellan v. Smartcanuk.com, AF-0303 (eResolution Sept. 25, 2000) (finding bad faith where the domain name resolved to a website containing banner ads, a link to the Respondent’s website, and a brief history of the McLellen name).

 

Finally, Respondent’s use of Complainant’s mark in its confusingly similar domain name in order to attract Internet users to its website is bad faith pursuant to Policy ¶ 4(b)(iv).  See State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where the Respondent registered the domain name <bigtex.net> to infringe on the Complainant’s good will and attract Internet users to the Respondent’s website); see also Drs. Foster & Smith, Inc. v. Jaspreet Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the Respondent directed Internet users seeking the Complainant’s site to its website for commercial gain).

 

The Panel finds that Policy ¶ 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 <saleicq.com> be tranferred from Respondent to Complainant.

 

 

John J. Upchurch, Panelist

 

Dated: December 10, 2001