AOL LLC v. icqitalia.com
Claim Number: FA0709001082149
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 <icqitalia.com>, registered with Tucows Inc.
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.
Joel M. Grossman, Esq. as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 26, 2007; the National Arbitration Forum received a hard copy of the Complaint on September 27, 2007.
On September 26, 2007, Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the <icqitalia.com> domain name is registered with Tucows Inc. and that the 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 September 28, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 18, 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 email@example.com by e-mail.
A timely Response was received and determined to be complete on October 17, 2007.
On October 24, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Joel M. Grossman, Esq. as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant asserts rights in the ICQ.COM mark both in the
Respondent asserts that the domain name was used for a website which “was entirely programmed and set up by a group of internet enthusiasts who were interested in offering assistance and information to Italian users of the web, without of course any profit seeking motives.” Respondent asserts that it chose the domain name <icqitalia.com> to differentiate its name from Complainant’s mark, noting that it could have registered the more confusing names of <icqitaly.com> or <icqitalia.it>. While the Respondent does not directly address the three issues to be decided, it can be inferred from the Response that Respondent contends that the disputed domain name is not identical or confusingly similar to Complainant’s mark, that it’s use of the disputed domain name is not for profit, and therefore a legitimate use of the mark, and that the disputed domain name was not registered, and is not being used, in bad faith.
The Panel determines that:
a. the disputed domain name is identical or confusingly similar to Complainant’s mark;
b. the Respondent has no rights or legitimate interests in the disputed domain name; and
c. the disputed domain name was registered, and is being used, in bad faith.
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.
There is no doubt that the domain name <icqitalia.com> wholly incorporates Complainant’s mark, and suggests to users that it is the Italian branch, so to speak, of Complainant’s ICQ.COM mark. The introduction of a geographic term does not avoid the confusion. See Net2phone Inc v. Netcall SAGL, D2000-0666 (WIPO Sept. 26, 2000) (holding that the domain name net2phoneeurope.com is confusingly similar to the complainant’s mark because “the combination of a geographic term with the mark does not prevent a domain name from being found confusingly similar.”).
Respondent asserts that this is a non-profit site, established solely to provide free Internet assistance and information to users. However, Complainant asserts, and has supplied screen shots of Respondent’s site which demonstrate, that the site has advertising that takes it out of the realm of non-profit, and therefore out of the realm of legitimate use. Complainant adds that the website resolves to a commercial site that displays Complainant’s mark and offers technology services that compete with Complainant’s services, even though it also promotes Complainant’s services. Complainant further points out that Respondent is not commonly known by the disputed domain name. The Panel concludes that because this is not a purely noncommercial site, and because it diverts users to Complainant’s competitors’ sites, it is not a bona fide offering of goods or services, or a legitimate noncommercial use. See Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under [the Policy] nor does it represent a noncommercial or fair use under [the Policy.]”). Respondent’s assertions of fair use due to the educational nature of the website fail when it becomes clear that it is profiting from the site and diverting users to Complainant’s competitors.
Respondent does not deny that it knew of Complainant’s mark at the time it registered the domain name. Indeed, it admits that the purpose of the website was to help Italian users navigate Complainant’s site. That knowledge alone is a strong indicator that the registration was in bad faith. See Nortel Networks Ltd. v. Buymebuyme.com, Inc. FA 671847 (Nat. Arb. Forum May 16, 2006) (“Registration of a domain name with knowledge of the trademark owner’s rights has been consistently found to constitute bad faith under the UDRP.”). This knowledge of Complainant’s mark, coupled with the fact that Respondent’s website is diverting customers from Complainant’s website to competitors’ sites, makes it clear that the domain name was registered and is being used in bad faith. See S. Exposure v. S. Exposure, Inc. FA 94864 (Nat. Arb. Forum July 18, 2000). See also Lambros v. Brown, FA 198963 (Nat. Arb. Forum Nov. 19, 2003), which held that registration of a domain name was in bad faith when it directed users to competitors’ websites while using the complainant’s name, so that users would think that the site was being operated by the complainant. That is also true in this case. The disputed domain name at issue falsely suggests to users that it is the Italian branch of Complainant’s <icq.com>, and it is not. As noted by the Panel in Nortel Networks, in which the respondent had registered the domain names <nortelphones.com> and <norstarphones.com>, “Respondent uses the domain names to intentionally attract, for commercial gain, Internet users, by creating a likelihood of confusion with complainant’s famous Nortel and Norstar marks as to the source, sponsorship, affiliation, and/or endorsement of respondent’s website and the competing products advertised on respondent’s websites.” So too in this case, Respondent’s disputed domain name, which suggests a connection to Complainant’s <icq.com>, creates a likelihood of confusion as to the sponsorship and affiliation of Respondent’s website. Thus, the Panel determines that the disputed domain name was registered and is being used in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <icqitalia.com> domain name be TRANSFERRED from Respondent to Complainant.
Joel M. Grossman, Esq., Panelist
Dated: November 5, 2007
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