AOL LLC v. N/A d/b/a Kozlov Sergei Sergeevich
Claim Number: FA0711001107954
Complainant is AOL LLC (“Complainant”), represented by James
R. Davis, of Arent Fox LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <icqdom.net>, registered with Estdomains, 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.
Honorable Paul A. Dorf, (Ret.) as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On November 13, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 3, 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@icqdom.net 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 <icqdom.net> domain name is confusingly similar to Complainant’s ICQ mark.
2. Respondent does not have any rights or legitimate interests in the <icqdom.net> domain name.
3. Respondent registered and used the <icqdom.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, AOL LLC, is a company that provides a variety
of online services. Under the registered
mark, ICQ, Complainant provides services including: providing online
information, online directories and online telecommunication services. The mark ICQ was registered by Complainant with
the United States Patent and Trademark Office (“USPTO”) on
Respondent registered the domain name <icqdom.net> 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.
Complainant has established rights in the ICQ mark pursuant
to Policy ¶ 4(a)(i) through registration of the mark with USPTO and
Respondent’s <icqdom.net>
domain name is confusingly similar to Complainant’s ICQ mark pursuant to ¶
4(a)(i) because Respondent’s domain name incorporates the mark with a generic
word or term. The word “dom” in Russian
translates to “house” in English and so “ICQdom” in Russian translates into
English as “ICQ house.” See Arthur Guinness Son & Co. (
The Panel finds that Policy ¶ 4(a)(i) has been satisfied
Complainant has alleged that Respondent does not have rights
or legitimate interest in the <icqdom.net>
domain name. Once Complainant makes a prima facie case in support of its
allegations, the burden shifts to Respondent to prove that it does have rights
or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds that Complainant has
established a prima facie case. Due to Respondent’s failure to respond to the
Complaint, the Panel assumes that Respondent does not have rights or legitimate
interests in the disputed domain name. See G.D.
Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum
Respondent is using the <icqdom.net>
domain name on a website that contains the ICQ flower logo and advertises services
that are not affiliated with Complainant and are in competition with
Complainant. Respondent’s use of a
domain name that is confusingly similar to the mark to direct users interested
in Complainant’s products to a website incorporating the ICQ flower logo and
offering similar competing products is not a use in connection with a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the
domain name pursuant to Policy ¶ 4(c)(iii).
See Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum
Mar. 17, 2003) (finding that the respondent’s diversionary use of the
complainant’s mark to attract Internet users to its own website, which
contained a series of hyperlinks to unrelated websites, was neither a bona
fide offering of goods or services nor a legitimate noncommercial or fair
use of the disputed domain names); see
also TM Acquisition Corp. v. Sign
Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the
respondent’s diversionary use of the complainant’s marks to send Internet users
to a website which displayed a series of links, some of which linked to the
complainant’s competitors, was not a bona fide offering of goods or
services); see also Am. Online, Inc. v. Advanced
Membership Servs., Inc., FA 180703 (Nat.
Arb. Forum Sept. 26, 2003) (“Respondent's registration and use of the
<gayaol.com> domain name with the intent to divert Internet users to
Respondent's website suggests that Respondent has no rights to or legitimate
interests in the disputed domain name pursuant to Policy Paragraph 4(a)(ii).”).
Additionally, the record indicates no evidence suggesting
Respondent is commonly known by the <icqdom.net>
domain name. Thus, Respondent has not
established rights or legitimate interests in the <icqdom.net> domain name pursuant to Policy ¶ 4(c)(ii). See
Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <icqdom.net>
domain name, which is confusingly similar to Complainant’s ICQ mark, to direct
Internet users to Respondent’s commercial website that advertises good and
services that compete with Complainant’s business. The Panel finds that such use constitutes
disruption and is evidence of bad faith registration and use pursuant to Policy
¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum
In
addition, Respondent is using the <icqdom.net>
domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because
Respondent is using Complainant’s ICQ mark to attract Internet users to a
website that displays the ICQ flower logo and advertises for services of
Complainant’s competitors. This conduct
is evidence that the Respondent is attempting to profit by giving the
impression of being affiliated with the Complainant. See Am. Univ. v.
Cook, FA 208629 (Nat. Arb. Forum Dec. 22,
2003) (“Registration and use of a domain name that incorporates another's mark
with the intent to deceive Internet users in regard to the source or
affiliation of the domain name is evidence of bad faith.”); see
also Amazon.com, Inc. v. Shafir,
FA 196119 (Nat. Arb. Forum Nov. 10, 2003) (“As Respondent is using the domain
name at issue in direct competition with Complainant, and giving the impression
of being affiliated with or sponsored by Complainant, this circumstance
qualifies as bad faith registration and use of the domain name pursuant to
Policy ¶ 4(b)(iv).”).
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 <icqdom.net> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf, (Ret.), Panelist
Dated: December 17, 2007
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