AOL LLC v. Loto LLC
Claim Number: FA0709001075473
PARTIES
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 <eicq.net>, registered with Network
Solutions, Inc. (the "Registrar").
PANEL
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.
Mr. Peter L. Michaelson, Esq. as Panelist.
PROCEDURAL HISTORY
The Complaint was brought pursuant to the Uniform Domain Name Dispute
Resolution Policy (“Policy”), available at <icann.org/services/udrp/udrppolicy24oct99.htm>, which was
adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on
August 26, 1999, and approved on October 24, 1999, and in accordance
with the ICANN Rules for Uniform Domain Name Dispute Resolution Policy
(“Rules”) as approved on October 24, 1999, as supplemented by the National
Arbitration Forum Supplemental Rules for Uniform Domain Name Dispute Resolution
Policy then in effect (“Supplemental Rules”).
Complainant submitted a Complaint to the National Arbitration Forum
("Forum") electronically on September
7, 2007; the National Arbitration Forum received a hard copy of the
Complaint, along with Exhibits 1-18, on September
10, 2007.
On September 10, 2007, Network Solutions, Inc. confirmed by e-mail to
the National Arbitration Forum that the <eicq.net> domain name is registered
with Network Solutions, Inc. and that the
Respondent is the current registrant of the name. The Registrar also verified that Respondent
is bound by the Network Solutions, Inc.
registration agreement and has thereby agreed to resolve domain-name disputes
brought by third parties in accordance with the “Policy.”
On September 11, 2007, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of October 1, 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@eicq.net by e-mail.
A timely Response was received and determined to be complete on October 1, 2007.
On October 5, 2007 and in compliance with Supplemental Rule 7,
Complainant timely submitted an additional submission to the Forum.
Also on October 5, 2007, and pursuant to
Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Mr. Peter L. Michaelson, Esq. as Panelist and set a due date of October 19, 2007
to receive the decision from the Panel.
Subsequently, on October 8, 2007 and in compliance with Supplemental
Rule 7, Respondent timely submitted its additional submission to the Forum.
Owing to unexpected time conflicts experienced by the Panel all of
which constituted unforeseen circumstances, the Panel, by its order dated
October 19, 2007, extended the due date for this decision to November 2, 2007.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. Confusing
similarity/identicality
Complainant contends that the disputed domain name is confusingly
similar to its ICQ Mark inasmuch as the name consists of the Complainant's mark
ICQ prepended by the letter E and thus is unable to sufficiently distinguish
the resulting name from the mark so as to dispel confusion of Internet users.
Hence, Complainant concludes that it has met the requirements of
paragraph 4(a)(i) of the Policy.
2. Rights and legitimate
interests
Complainant contends that Respondent has no rights or legitimate
interests in the disputed domain name under paragraph 4(a)(ii)
of the Policy.
Specifically, Respondent is using the name in conjunction with a
website that provides goods and services that directly compete with those
provided by Complainant under its ICQ Mark.
Inasmuch as the name, being confusingly similar to Complainant's mark,
acts to divert Internet users who are interested in Complainant's ICQ-branded
goods and services to Respondent's site instead, that use is not a bona fide, a legitimate noncommercial or
a fair use of the domain name under the Policy.
Furthermore, inasmuch as the WHOIS record for the
disputed domain name lists "Loto LLC" as the registrant,
there is no evidence that Respondent
is commonly known by the mark EICQ or by the domain name.
3. Bad faith use and
registration
Complainant contends that, for any one of various reasons, Respondent
has registered and is using the disputed domain name in bad faith, hence in
violation of paragraph 4(a)(iii) of the Policy.
Specifically, Complainant contends that Respondent, through use of its
domain name that is confusingly similar to the ICQ Mark, is attempting to
divert Internet users who seek
Complainant's ICQ-branded chat service to Respondent's commercial
website which offers those users competitive products, particularly those that
are the same or similar to those offered by Complainant, to Complainant's
detriment. These actions also disrupt
Complainant's business.
Further, Respondent, through its offer to
sell various assets, including the disputed domain name, to Complainant for US
$ 500,000 -- which is a sum well in excess of its costs of registration.
Lastly, since the domain name was registered several years after
Complainant began widely using its ICQ Mark, Respondent registered the name
with knowledge of that mark and Complainant's service offering there under and,
in spite of that knowledge, designed its EICQ product to be compatible with
Complainant's ICQ service and used the ICQ mark without authorization.
B. Respondent
1. Confusing
similarity/identicality
Respondent contests Complainant's allegation that the disputed domain
name is confusingly similar to the ICQ Mark.
First, although the only difference between the disputed domain name
and the ICQ mark is the letter "E," Respondent's mark "SPEED
EICQ" differs, by more than half of its letters, from Complainant's ICQ
Mark. The domain name, which Respondent
uses for marketing and sales, is a simplification of the SPEED EICQ mark and
name and thus causes no purchaser confusion.
Second, Respondent contends that no incident of actual confusion has
arisen as a result of concurrent use of its mark SPEED EICQ when used in
conjunction with its translation software and the ICQ Mark for Complainant's
Internet chat service. In that regard, a
purchaser would buy this software as a package, including a disk and an
instruction book, for a specific purpose, namely Chinese-English translation,
which has absolutely nothing to do with Internet chat services.
2. Rights and legitimate
interests
Respondent claims, contrary to Complainant's allegations, that it has
rights and legitimate interests in the disputed domain name.
First, Respondent states that since February 21, 2002, the disputed
domain name was merely used as vehicle to forward Internet users to
Respondent's website reachable at <lotousa.com>. Respondent registered the name to protect its
interests in its translation software marketed under its mark SPEED EICQ.
Second, Respondent states it did not need any authorization from
Complainant to use the mark SPEED EICQ as Respondent's product name and
mark. Furthermore, Respondent previously
offered its software through its website and thus is commonly known by the name
SPEED EICQ. Consequently, as Respondent
states, "the derivative name eicq.net shall be legitimate."
Third, Respondent is using the disputed domain name in connection with
a bona fide offering of its
translation software, SPEED EICQ, to its customers.
3. Bad faith use and
registration
Respondent also contradicts Complainant's allegations that it
registered and used the disputed domain name in bad faith.
First, Respondent contends that it registered the name in good faith
with regard to just its SPEED EICQ Chinese to English translation
software. No evidence exists of record
to support Complainant's assertion that Respondent intended, through
registering the name, to attract Internet users seeking Complainant's ICQ
service to Respondent's website instead.
This software, contrary to Complainant's view, does not interact with
Complainant's ICQ service nor is it similar to that service.
Second, Complainant induced Respondent into providing a monetary offer
to relinquish the disputed domain name, among other assets, to Complainant if
for no other purpose than to stop Complainant from continuing its
harassment. Moreover, Respondent never
offered to sell the disputed domain name through an auction. Respondent claims that the amount of money, $
500,000, which it sought through its July 11, 2003 e‑mail to
Complainant's counsel, in exchange for relinquishing its two domain names <eicq.net> and <eicq.org>
and the mark SPEED EICQ to Complainant was intended to compensate Respondent
for expenses it apparently had incurred up to that date in printing, design,
advertisement and sales under those domain names and mark.
C. Additional Submissions
The Panel has fully considered both submissions as both were timely
made and complied with the requirements of Supplemental Rule 7.
Nevertheless, the Panel finds that, for the most part, both submissions
reiterate and amplify various arguments already set forth in the primary filings
and, to a lesser extent, raise additional arguments, such as dilution in the
Chinese Internet community, that are irrelevant to a determination under the
Policy. Hence, for the sake of brevity,
the Panel will simply dispense with summarizing either of these additional
submissions.
FINDINGS
A copy of the WHOIS registration record for
the disputed domain name appears in Exhibit 2 to the Complaint. As indicated, the domain name was registered
on February 21, 2002.
A. Complainant’s
ICQ Marks
Complainant
owns a
ICQ
filed: October 29,
1997
This mark is
currently registered for use in connection with "computer operating
programs that may be downloaded from a computer information network; computer
software and prerecorded computer programs for accessing computer networks and
computer systems comprising computer hardware and computer software for
electronic communications that may be downloaded from a computer information
network; and computer software for accessing online electronic diaries, online
databases, websites, online chat rooms, and electronic yellow pages that may be
downloaded from a computer information network" in international class 9;
"online directory of businesses and people; and providing employment
information via computer networks" in international class 35;
"providing financial information via electric means" in international
class 36; "telecommunications services, namely, services relating to
electronic transmission of data, images and documents via computer terminals,
electronic mail services, facsimile transmission, personal communication
services, paging services, store and forward messaging services; providing
multiple‑user access to computer information networks, in and electronic
bulletin boards and chat rooms for the transmission of messages among computer
users concerning topics of general interest" in international class 38;
"providing entertainment, arts, sports and music information via
electronic means" in international class 41; and "providing
information in the field of personal advice, romance, general interest news,
health, computers and technology via computer networks" in international
class 42. The registration certificate
states that both first use and first use in commerce of the mark for the goods
and services in all the classes commenced as of November 30, 1996.
Complainant also claims ownership of common
law rights in various other marks that incorporate the term ICQ, including ICQ
MAIL, ICQ.COM, ICQ2GO, ICQ CHAT, and ICQ LABS.
B.
Complainant and its Activities
Complainant is one of the world's largest and
well-known interactive online service providers, with tens of millions of
subscribers and users in the
Since at least as early as November 1996 and continuing to the present,
Complainant and its predecessor-in-interest uses the ICQ mark, both in domestic
and international commerce, in connection with advertising and sale of
Complainant's computer-related goods and Internet-based services. Complainant has invested substantial sums of
money in developing and marketing its goods and services under its ICQ mark. Each year, tens of millions of Complainant's
customers worldwide obtain goods and services offered under the ICQ mark;
millions more are exposed to this mark through Complainant's advertising and
promotion. This advertising has been
disseminated through television programs, radio broadcasts and print media
including newspapers and periodicals.
C. Respondent and its Activities
Respondent uses the disputed domain name to redirect Internet users to
its commercial website at <lotousa.com> through which Respondent promotes
and provides software and provides various services (a copy of several of the
pages, including the home page, of that website appears in Exhibit 7 to the
Complaint).
Of particular pertinence here, that site promotes one of Respondent's
software products under the mark SPEED EICQ (hard-copy printouts of various
relevant pages from that site appear in Exhibits 9 and 10 to the
Complaint). This particular product
primarily provides automatic translation of Chinese into English; it does not
provide Internet chat functionality. Respondent's
website characterizes this product as providing "a multilingual chatting
platform with instant translation function for global live business talks and
private chatting, and supports online game instant translation for customers
from different countries" and useful with "embedded translation of
PDA, Pocket PC, Notebook, ICQ, online games and chatting room"
(specifically, Exhibit 10). Respondent
sells its SPEED EICQ product primarily to Chinese-speaking customers and users
in the
Respondent claims that Complainant's interactive online chat service
ICQ has diminished to insignificance in the
Respondent has invested a substantial amount of money in promoting its
SPEED EICQ software on Chinese television, the Internet and through print and
other media.
D. Interactions between the
Parties
On April 1, 2003, Complainant's counsel sent a letter (a copy of which
appears in Exhibit 11 to the Complaint) to Respondent asking for
additional information into the nature of Respondent's services obtainable
through its <lotousa.com> website and under the mark SPEED EICQ.
Through a letter dated April 29, 2003, Respondent indicated that it was
using the disputed domain name in conjunction with its website also resolvable
through <lotousa.com> and had filed a trademark application with the US
Patent and Trademark Office to register the mark SPEED EICQ. Respondent claimed that while it used the
term in conjunction with its translation software, that software can not be
used with Complainant's ICQ chat service.
During April-July, 2003, Complainant's counsel and Respondent
corresponded, by e‑mail, regarding Respondent's continuing use of the
mark EICQ (copies of this correspondence appear in Exhibit 13 to the
Complaint). Respondent stated that it
has used ICQ in its mark and through its message dated July 11, 2003 expressed
its interest in selling the domain names <eicq.net> and <eicq.org>, and the mark SPEED EICQ to
the Complainant for $500,000.
Complainant's counsel, through its message of July 29, 2003, rejected
Respondent's offer.
Respondent eventually abandoned its federal trademark application for
the mark SPEED ICQ and represented to Complainant's counsel that it would cease
using the mark EICQ. Copies of
correspondence between the parties were provided in Exhibits 14 and 15 to the
Complaint.
Despite those representations, Complainant's counsel learned that
Respondent had not ceased its use of either the mark EICQ or the two domain
names <eicq.net> and
<eicq.org>. During
February-September, 2006, Complainant's counsel sent further e‑mail
messages to Respondent concerning this, as reflected in the messages in
Exhibits 16 and 17 to the Complaint, but evidently received no further
response from Respondent.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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.”
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
The Panel finds that the disputed domain name is
confusingly similar to Complainant’s ICQ Mark.
The proper analysis under paragraph 4(a)(1)
of the Policy simply focuses on comparing the disputed domain name, <eicq.net>, to Complainant's ICQ
Mark to assess the degree of similarity between the two and its likely potential
to cause confusion of Internet users.
Any dissimilarities between Respondent's product name or mark, SPEED
EICQ, used on its translation product and Complainant's ICQ Mark, as well as
any differences between the functioning of that product and Complainant's ICQ
chat service and any and all incompatibilities there between are all totally
irrelevant to this analysis and will thus be ignored. What matters here is the disputed domain name
<eicq.net>.
From a simple comparison of the disputed domain name
and the mark ICQ, no doubt exists that the name is confusingly similar to that
mark. The only differences between the
name and that mark are the prepending of the letter "E" and the
appending of a gTLD (generic top level domain) “.net” to the mark ‑‑
with the latter being totally irrelevant in assessing confusing similarity or
identicality under paragraph 4(a) of the Policy and thus ignored.
It is now very well‑established in UDRP
precedent, including numerous decisions previously rendered by this Panel, that
minor variations, such as adding short letter or number groups or even generic
words to a mark, are each insufficient in and of itself, when used in forming a
domain name that results from modifying the mark, to confer requisite and
sufficient distinctiveness to that name to avoid user confusion. Prepending the letter "E" such that
the term “ICQ” becomes in the domain name “EICQ” is clearly such a minor
variation. See Tetris Holding, LLC v. Smashing
Conceptions, FA 1030720 (Nat. Arb.
Forum Sept. 11, 2007); see also Associated
Bank Corp. v.
Therefore, the Panel finds that the disputed
domain name <eicq.net> is
confusingly similar to Complainant’s ICQ Mark as to cause confusion; hence,
Complainant has satisfied its burden under paragraph 4(a)(i)
of the Policy.
Rights or Legitimate
Interests
Respondent has not provided any basis that, under the circumstances
here, would legitimize a claim to the disputed domain name under
paragraph 4(c) of the Policy.
No evidence exists of record that Complainant has ever authorized
Respondent to utilize Complainant's ICQ Mark or any mark confusingly similar
thereto in the United States, nor does Complainant have any relationship or
association whatsoever with Respondent.
The Panel looks to the pertinent facts of record pertaining to
Complainant's rights and Respondent's activities in the
Consequently, any use in the United States to which Respondent were to
put the ICQ Mark or one confusingly similar thereto, certainly including EICQ,
in connection with identical or similar goods and services to those currently
provided by Complainant under its ICQ Mark would violate the exclusive federal
trademark rights now residing in Complainant.
In that regard, given the high degree of consumer recognition and
goodwill which Complainant enjoys in the United States for its ICQ-branded
Internet chat service and hence for its ICQ Mark, the Panel believes that
Internet users certainly in the United States who seek Respondent's software
would reasonably think, by virtue of the goodwill and reputation Complainant
has acquired over time in its ICQ Mark and upon seeing the disputed domain name
<eicq.net>, that a
relationship or affiliation of some sort exists between Complainant and
Respondent, when, in actuality, none exists at all. See Nat’l Football League v. Blucher, D2007‑1064 (WIPO Sept. 24, 2007); see also Toilets.com, Inc., cited supra; see also Associated Bank, cited supra;
see also GoDaddy.com, Inc., v.
GoDaddysDomain.com, Clark Signs, Graham Clark, D2007‑0303 (WIPO May 7, 2007);
Citgo Petroleum Corp. v. Antinore, D2006‑1576 (WIPO Mar. 14, 2007); see also New Destiny Internet Group, LLC v. SouthNetworks, D2005‑0884 (WIPO Oct. 14, 2005); see also Cheesecake Factory Inc., Napster and Caesars Entm’t, Inc., all cited
supra; see also Pelmorex Commc’ns
Inc. v. weathernetwork, D2004‑0898 (WIPO Dec. 28, 2004);
see also Sybase, Inc. v. Analytical Sys., D2004‑0360 (WIPO June 24, 2004); see also Caesars World, Inc. and Park Place
Entm’t Corp. v. Japan Nippon, D2003‑0615 (WIPO Sept. 30, 2003);
see also Leiner
Health Servs. Corp. v. ESJ Nutritional Prods., FA 173362 (Nat. Arb. Forum Sept. 16, 2003); see also AT&T Corp. v. Roman Abreu, cited supra; see also MPL Commc’ns, Ltd. v.
1WebAddress.com, FA 97092 (Nat.
Arb. Forum June 4, 2001); see
also Am. Online, Inc. v.
Xianfeng Fu, D2000‑1374 (WIPO Dec. 11, 2000). Consequently, the Respondent, being located
in the United States not China, could not legally acquire any public
association between it and the ICQ Mark or one similar thereto, at least in the
United States for the services rendered there by the Complainant or for goods
and service that might be similar thereto.
Hence, based on the evidence before the Panel, the Respondent does not
fall within paragraph 4(c)(ii) of the Policy.
Further, there is absolutely no evidence of record that the Respondent
has ever been commonly known by the disputed domain name. In that regard, while it can be assumed that
Respondent may have acquired some degree of consumer recognition in its mark
SPEED EICQ, specifically in conjunction with its translation software product
-- that mark is not the subject of this dispute; the term EICQ alone is. Respondent has solely used that term, in the
context of the disputed domain name, to re‑direct Internet users to its
website at <lotousa.com>. The
Respondent could never have become known by that term in the United States in
light the Complainant’s continuous use of its ICQ Mark for nearly 6 years prior
to the date (February 21, 2002) on which the Respondent registered the
name, without infringing on the exclusive trademark rights of the
Complainant. See Treeforms, Inc. v. Cayne Indus. Sales, Corp., FA 95856 (Nat. Arb. Forum Dec. 18, 2000).
Moreover, since Respondent's use of the name is clearly commercial in
nature, that use does not constitute either a legitimate noncommercial or fair
use, and hence does not fall within paragraph 4(c)(iii)
of the Policy. Further, since
Respondent's use of the name infringes Complainant's trademark rights, that use
is not bona fide within paragraph 4(c)(i) of the Policy.
Accordingly, the Panel concludes that the Respondent has no rights or
legitimate interests in the disputed domain name within paragraph 4(a)(ii) and 4(c) of the Policy.
Registration and Use in Bad
Faith
The Panel believes that Respondent’s actions
constitute bad faith registration and use of the disputed domain name.
An e-mail message (see Exhibit 14 to the
Complaint) dated July 11, 2003 from Respondent to Complainant's counsel,
states, in pertinent part:
We are interested in selling the eicq.net and
eicq.org domain names, SPEED EICQ name and mark to your client. Our offer is $ 500,000.
The Panel finds that, under the specific
facts of record here, Complainant did not solicit a specific monetary offer
from Respondent to purchase the name but that Respondent did make such an offer
to sell the name. Specifically,
Respondent made a package offer that also encompassed a companion name
<eicq.org>, differing only in its gTLD from the disputed domain name,
together with the mark SPEED EICQ.
Though Respondent set forth a package price of $500,000 without
specifying a particular sum for sale of the disputed domain name itself, it is
reasonable for the Panel to infer, from the lack of any evidence to the
contrary, that Respondent then sought a sum for that name which was still well
in excess of its cost of registration, hence allowing Respondent to
commercially benefit from the sale of that name -- a name which infringes
Complainant's exclusive federal trademark rights.
The Panel finds that such conduct constitutes
bad faith under the general paragraph 4(b) and thus also under paragraph 4(a)(iii) of the Policy.
Accordingly, the Panel concludes that
Complainant has provided sufficient proof of its allegations to establish a prima
facie case under Paragraph 4(a) of the Policy upon which the relief it now
seeks can be granted.
DECISION
In accordance with Paragraph 4(i) of the Policy and Paragraph 15 of the
Rules, the relief sought by Complainant is hereby GRANTED.
Accordingly, the Panel orders that the disputed domain name, <eicq.net>, is to be TRANSFERRED
from Respondent to Complainant.
Peter L. Michaelson, Esq., Panelist
Dated: November 2, 2007
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