AOL LLC v. Gestion Crevier
Claim Number: FA0708001053285
Complainant is AOL LLC (“Complainant”), represented by Blake
R. Bertagna, of Arent Fox LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <icq-software.com>, registered with Godaddy.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On August 3, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 23, 2007 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@icq-software.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <icq-software.com> domain name is confusingly similar to Complainant’s ICQ mark.
2. Respondent does not have any rights or legitimate interests in the <icq-software.com> domain name.
3. Respondent registered and used the <icq-software.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, AOL LLC, is one
of the world’s largest and well-known interactive online service providers,
with millions of subscribers and users worldwide. One of the brands that Complainant provides
services under is marketed under the ICQ mark.
Complainant uses this mark in connection with the provision of various
software, computer, and Internet-related communications goods and
services. To that effect, Complainant
owns a trademark registration for the ICQ mark with the United States Patent
and Trademark Office (“USPTO”) (Reg. No. 2,411,657 issued
Respondent registered the <icq-software.com>
domain name on
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 Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
The Panel finds that Complainant’s registration of the ICQ
mark with the USPTO sufficiently establishes Complainant’s rights in the mark
pursuant to the requirements of Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum
Additionally, the Panel finds that the <icq-software.com>
domain name is confusingly similar to Complainant’s ICQ mark under Policy ¶ 4(a)(i) as the disputed domain name contains Complainant’s mark
in its entirety with the addition of a hyphen, a generic top-level domain
(“gTLD”), and the generic term “software,” which has an obvious relationship to
the goods and services offered under Complainant’s mark. Accordingly, the Panel finds that these
modifications to the ICQ mark are insufficient to distinguish the disputed
domain name from Complainant’s mark under the parameters of Policy ¶ 4(a)(i). See Sports Auth. Mich. Inc. v. Batu 5, FA 176541 (Nat. Arb.
Forum Sept. 23, 2003) (“The addition of a hyphen to Complainant's mark does not
create a distinct characteristic capable of overcoming a Policy ¶ 4(a)(i)
confusingly similar analysis.”); see also Space Imaging LLC v. Brownell,
AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the
respondent’s domain name combines the complainant’s mark with a generic term
that has an obvious relationship to the complainant’s business); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat.
Arb. Forum
The Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
Under Policy ¶ 4(a)(ii) Complainant
is required to make a prima facie
case that Respondent lacks rights and legitimate interests in the <icq-software.com>
domain name. The Panel finds that
Complainant has satisfied its burden, and accordingly, the burden now shifts to
Respondent to bring forth evidence establishing its rights or legitimate
interests in the disputed domain name. See Compagnie
Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376
(WIPO
Respondent’s WHOIS information indicates that Respondent is
“Gestion Crevier” and there is no other evidence
indicating that Respondent is commonly known by the <icq-software.com>
domain name or authorized to use Complainant’s mark. The Panel therefore finds that Respondent is
not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See RMO,
Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum
Respondent is using the <icq-software.com>
domain name to display a website that offers goods and services in direct
competition with those offered by Complainant under its ICQ mark. Such a use of the disputed domain name is
neither a bona fide offering of goods
or services under Policy ¶ 4(c)(i) nor a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii). See Computerized Sec. Sys., Inc. v. Hu,
FA 157321 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the disputed domain name, which is
confusingly similar to Complainant’s mark, to market the sale of competing
goods and services. Accordingly, the
Panel finds that Respondent is using the <icq-software.com> domain
name to commercially benefit by creating the possibility that Internet users
will think the disputed domain name is somehow affiliated with or sponsored by
Complainant. Such use qualifies as bad
faith registration and use 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 marks, thus creating a likelihood of confusion strictly for
commercial gain); see also Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad
faith registration and use pursuant to Policy ¶ 4(b)(iv)
where the domain name resolved to a website that offered similar products as
those sold under the complainant’s famous mark).
Moreover, as a
competitor of Complainant, Respondent’s use of the <icq-software.com>
domain name qualifies as a disruption of Complainant’s business, and is further
evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See S.
Exposure v. S. Exposure,
Inc., FA 94864 (Nat. Arb.
Forum
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <icq-software.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: September 11, 2007
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum