America Online, Inc. v Roberto Cirianni

2. AOL is the owner of numerous trademarks, service marks, and the trade names that include the mark ICQ, e.g., ICQmail, ICQphone, and ICQgames and ICQcommunity (collectively the ICQ Marks).

3. Many years prior to Respondent’s registration of the domain names <icq2000.net> <icqnews.net> <icqpoint.com> <icqpoint.net> and <icqpoint.org>. (the “Infringing Domains”), and at least as early as 1996, AOL and its predecessor-in-interest adopted and began using the ICQ mark in connection with computer- and Internet-related goods and services. Since its first adoption, the distinctive ICQ mark has been used continuously and extensively in interstate and international commerce in connection with the advertising and sale of goods and services.

4. AOL has invested substantial sums of money in developing and marketing its services.

5. Each year tens of millions of customers worldwide obtain goods and services offered under the ICQ mark; millions more are exposed to said mark through advertising and promotion.

6. The ICQ mark has been and continues to be widely publicized through substantial advertising throughout the United States and the world. A significant amount of money has been spent in connection with such advertising, which has been disseminated through network and cable television programs, radio broadcasts, and in print media including newpapers and periodicals.

7. Sales of service under the ICQ mark have been substantial and, as a result, the general public has come to associate the ICQ name and mark with services of a high and uniform quality.

8. Because of these substantial advertising expenditures and sales, the distinctive ICQ mark has become well-known and famous among members of the purchasing public. The ICQ service has registered over 100,000,000 subscribers worldwide, making it one of the largest online communities in the world.

9. Many years after AOL’s adoption and first use of its ICQ mark, and long after the ICQ mark became well-known and famous, Respondent registered the Infringing Domains for the bad faith purpose of profiting from the goodwill AOL has created in its ICQ Marks. Respondent also has attempted to sell many of the Infringing Domains for substantial amounts of money. Respondent is using the famous ICQ mark in the domain name, therefore, in an attempt to confuse consumers and profit from the fame and international goodwill AOL has created in its ICQ mark.

10. The Infringing Domains are confusingly similar or nearly identical to the ICQ Marks. The addition of generic words like “news” or “point” or the number “2002" to the famous ICQ mark is insufficient to prevent consumer confusion.

11. Respondent registered, uses, and continues to use the Infringing Domains in bad faith to capitalize on the famous ICQ mark and to confuse consumers.

12. Respondent has no rights or legitimate interests in respect to the Infringing Domains. Respondent is not named ICQ and is not licensed to use the ICQ mark.

13. Based upon (1) the fame of the ICQ mark, (2) Respondent’s offer to sell the domains for up to $250,000; (3) the Italian, U.S. and other trademark registrations for ICQ; (4) and the commercial use in which Respondent is using the Infringing Domains, Respondent cannot, in good faith, claim that he had no knowledge of AOL’s rights in the ICQ mark. Furthermore, Respondent cannot claim, in good faith, that he made a legitimate noncommercial or fair use of the domain names, or that he is commonly known by the name ICQ.

B. Respondent

In Respondent’s Response to Domain Complaint, he notes that AOL is a very BIG company and has the best attorneys and all the time necessary to study the situation, whereas, he is only one person and he is pressed to respond in a short period of time and in a language different from his own.

He does not understand how he can damage the business or create problems at AOL with his domain names. He points out that he is not a competitor of ICQ/AOL. He does not have software distribution or anything similar. He questions why ICQ/AOL did not register the domain name <icq2000.net> when he did and when it was available. He says he does not want to sell his domain names and does not desire to make money from such a sale. He was offended that he was called a “cybersquatter”.

FINDINGS

The domain names registered by Respondent are identical or confusingly similar to trademark or service marks in which Complainant has rights.

Respondent has no rights or legitimate interests in respect of the domain names.

The domain names have been registered and are 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.

Identical and/or Confusingly Similar Policy ¶ 4(a)(i).

Complainant asserts that it owns several trademarks worldwide for the ICQ mark, including trademark registrations in the Unites States and Italy (where Respondent is located). Complainant claims it uses the mark ICQ.COM as the domain name for its website related to ICQ services. Complainant asserts that it has used the ICQ mark since as early as November 1996. We so find.

Complainant asserts that Respondent’s domain names are confusingly similar to its ICQ mark because they contain the mark in its entirety with the addition of the generic words “news” or “point.” See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the Complainant combined with a generic word or term); See also AXA China Region Ltd. v. KANNET Ltd., D2000-1377 (WIPO Nov. 29, 2000) (finding that common geographic qualifiers or generic nouns can rarely be relied upon to differentiate the mark if the other elements of the domain name comprise a mark or marks in which another party has rights); see also America Online, Inc. v. Asian On-Line This Domain For Sale, FA94636 (Nat. Arb. Forum May 17, 2000) (finding that the domain names, which consist of “ao-l” and a geographic location are confusingly similar to Complainant’s mark). Moreover, Complainant asserts that the addition of a number to its ICQ mark does not defeat a confusing similarity claim. See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that adding the suffixes “502" and “520" to the ICQ trademark does little to reduce the potential for confusion); see also Am Online Inc. v. Chinese ICQ Network, D2000-0808 (WIPO Aug. 31, 2000) (finding that the addition of the numeral 4 in the domain name <4icq.com> does nothing to deflect the impact on the viewer of the mark ICQ and the domain name is therefore confusingly similar to the mark); see also Omnitel Pronto Italia S.p.A. v. Carlo Dalla Bella, D2000-1641 (WIPO Mar. 12, 2001) (finding that the contested <omnitel2000.com> domain name is confusingly similar to the OMNITEL trademark); see also Hitachi, Ltd. v. Fortune Int’l Dev. Ent, D2000-0412 (WIPO July 2, 2000) (finding that the domain name <hitachi2000.net> is confusingly similar to Complainant’s mark). We agree with this assertion, set forth above.

Further, we find that Respondent’s domain names are confusingly similar to Complainant’s ICQ mark because the addition of generic top level domains such as “.com,” “.net,” and “.org,” is without significance for the confusing similarity analysis. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding that “the addition of the generic top-level domain (gTLD) name ‘com’ is . . . without legal significance since use of a gTLD is required of domain name registrants”).

Rights or Legitimate Interests Policy ¶ 4(a)(ii).

We find that Respondent’s domain names are not used in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i). This is due to Complainant’s claim that the disputed domain names are intended for the purpose of causing confusion for Respondent’s commercial gain. See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name); see also Toronto-Dominion Bank v. Karpachev, 188 F.Supp. 2d 110, 114 (D.Mass 2002) (finding that, because the Respondent’s sole purpose in selecting the domain names was to cause confusion with the Complainant’s website and marks, it’s use of the names was not in connection with the offering of goods or services or any other fair use); see also MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous MSNBC mark where Respondent attempted to profit using the Complainant’s mark by redirecting Internet traffic to its own website).

Complainant asserts that Respondent is not commonly known by any of the disputed domain names; Respondent is only known as Roberto Cirianni. Therefore, the requirement of Policy ¶ 4(c)(ii) has not been satisfied and Respondent has no rights in the domain name. See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark). We agree.

Complainant asserts that Respondent’s websites, located at each disputed domain name, are tools to misleadingly divert consumers. Complainant claims that Respondent’s websites are set-up in a similar fashion to its <icq.com> website in order to confuse consumers and opportunistically trade on Complainant’s goodwill. See Kosmea Pty Ltd. v. Krpan, D2000-0948 (WIPO Oct. 3, 2000) (finding no rights in the domain name where Respondent has an intention to divert consumers of Complainant’s products to Respondent’s site by using Complainant’s mark); see also Caterpillar Inc. v. Quin, D2000-0314 (WIPO June 12, 2000) (finding that Respondent does not have a legitimate interest in using the domain names <caterpillarparts.com> and <caterpillarspares.com> to suggest a connection or relationship, which does not exist, with Complainant’s mark CATERPILLAR). We agree with Complainant’s position as asserted hereinabove.

Registration and Use in Bad Faith Policy ¶ 4(a)(iii).

Complainant asserts that Respondent registered the disputed domain names in bad faith under Policy ¶ 4(b)(i). Complainant claims that Respondent initially advertised the disputed domain names for sale, for an asking price between $25,000 and $250,000. Complainant maintains that such behavior evidences bad faith because it is an attempt to profit from Complainant’s international fame. See Am Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where Respondent offered domain names for sale); see also World Wrestling Fed’n Entmt., Inc. v. Bosman, D99-0001 (WIPO Jan14, 2000) (finding that Respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out of pocket costs); see also Pocatello Idaho Auditorium Dist. v. CES Mktg Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002) (“[w]hat makes an offer to sell a domain [name] bad faith is some accompanying evidence that the domain name was registered because of its value that is in some way dependent on the trademark of another, and then an offer to sell it to the trademark owner or a competitor of the trademark owner.”) We agree.

Complainant claims that, since Respondent registered five different domain names all containing its ICQ mark, Respondent’s registration was in bad faith pursuant to Policy ¶ 4(b)(ii). See Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii); see also Armstrong Holdings, Inc. v. JAZ Assoc., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the Respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names which infringe upon others’ famous and registered trademarks). We agree.

Complainant contends that Respondent uses the disputed domain names to attract, for commercial gain, Internet users to its websites by confusing them into believing that Respondent is affiliated with or endorsed by Complainant. This alleged behavior constitutes bad faith under Policy ¶ 4(b)(iv). See Am Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that Respondent intentionally attempted to attract Internet users to his website for commercial gain by creating a likelihood of confusion with the Complainant’s mark and offering the same chat services via his website as the Complainant); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent registered and used an infringing domain name to attract users to a website sponsored by Respondent); see also Identigene, Inc. v. Genetest Lab., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where Respondent’s use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that Complainant is the source of or is sponsoring the services offered at the site); see also 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). We agree with this contention of Complainant.

Furthermore, Complainant asserts that Respondent’s registration and use of the disputed domain names attempt to play on the goodwill that the ICQ mark has developed over the years. Complainant contends that the ICQ mark has gained worldwide notoriety through use in its <icq.com> website. Therefore, Complainant claims that Respondent was put on constructive notice of the ICQ mark and Respondent’s subsequent application of the mark in the disputed domain names constitutes bad faith. Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that the ICQ mark is so obviously connected with Complainant and its products that the use of the domain names by Respondent, who has no connection with Complainant, suggests opportunistic bad faith); see also Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18, 2000) (finding that Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the world-wide prominence of the mark and thus Respondent registered the domain name in bad faith); see also Ty Inc. v. Parvin, D2000-0688 (WIPO Nov. 9, 2000) (finding that Respondent’s registration and use of an identical and/or confusingly similar domain name was in bad faith where Complainant’s BEANIE BABIES mark was famous and Respondent should have been aware of it). Furthermore, Complainant claims that Respondent’s additions to the ICQ mark of “news,” “point,” and “2000" all have a relation to Complainant’s ICQ services; hence, Respondent registered the disputed domain names in bad faith. See Am. Online, Inc. v. Shenzhen JZT Computer Software Co., D2000-0809 (WIPO Sept. 6, 2000) (finding that <gameicq.com> and <gameicq.net> are obviously connected with services provided with the world-wide business of ICQ and that the use of the domain names by someone with no connection to the product suggests opportunistic bad faith). We fully agree with the position asserted by Complainant as set forth above.

DECISION

In accordance with ¶ 4(i) of the Policy, for the reasons described hereinabove, we decide and determine that the Infringing Domains be transferred to Complainant.

JUDGE RICHARD B. WICKERSHAM, (Ret. Judge), Panelist

Dated: June 10, 2002

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Claim Number: FA0205000113966