AOL LLC v. icqitalia.com
Claim Number: FA0709001082149
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 <icqitalia.com>, registered with Tucows Inc.
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.
Joel M. Grossman, Esq. as
Panelist.
PROCEDURAL HISTORY
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
postmaster@icqitalia.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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant asserts rights in the ICQ.COM mark both in the
B. Respondent
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.
FINDINGS
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.
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.
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.
DECISION
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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