America Online, Inc. v. Anony Mous a/k/a
Taha Arvas
Claim Number: FA0205000114368
PARTIES
Complainant
is America Online, Inc., Dulles, VA
(“Complainant”) represented by James R.
Davis, of Arent Fox Kintner Plotkin
& Kahn. Respondent is Anony Mous a/k/a Taha Arvas, Syracuse,
NY (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <icqlite.com>,
registered with Go Daddy Software.
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.
The
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on May 21, 2002; the Forum received a hard copy of the Complaint
on May 24, 2002.
On
May 21, 2002, Go Daddy Software confirmed by e-mail to the Forum that the
domain name <icqlite.com> is
registered with Go Daddy Software and that Respondent is the current registrant
of the name. Go Daddy Software has
verified that Respondent is bound by the Go Daddy Software 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
May 24, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of June 13,
2002 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@icqlite.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
June 26, 2002 pursuant to Complainant’s request to have the dispute decided by
a single-member Panel, the Forum appointed the Honorable Charles K. McCotter,
Jr. (Ret.) as Panelist.
Having
reviewed the communications records, the Administrative Panel (the “Panel”)
finds that the 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 Forum’s Supplemental Rules and any rules and
principles of law that the Panel deems applicable, without the benefit of any
Response from Respondent.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. Respondent’s <icqlite.com> domain
name is confusingly similar to Complainant’s registered ICQ family of marks.
2. Respondent has no rights or legitimate
interests in the <icqlite.com> domain name.
3. Respondent registered and used the <icqlite.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
FINDINGS
Complainant owns many trademark
registrations worldwide for the ICQ mark, including, U.S. Patent and Trademark
Office (“USPTO”) Reg. No. 2411657 for the ICQ mark as registered on the
Principal Register on December 12, 2000. Complainant is the owner of numerous
trademarks, service marks and trade names that include the ICQ mark (e.g.,
ICQmail, ICQphone, ICQgames and ICQcommunity). Complainant uses the ICQ.COM
mark in conjunction with a corresponding <icq.com> domain name for a
portal to reach its ICQ service.
Each year, tens of millions of customers
worldwide obtain goods and services offered under the ICQ mark; millions more
are exposed to Complainant’s ICQ mark through advertising and promotion.
Complainant’s ICQ service has registered over 100,000,000 subscribers
worldwide, making it one of the largest online communities in the world.
Respondent registered the disputed <icqlite.com>
domain name on October 3, 2001. Respondent’s domain name is used in connection
with a commercial website that makes prominent references to Complainant’s ICQ
service while offering competing telecommunications services. Respondent is not
licensed or authorized to use the ICQ mark.
DISCUSSION
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 the 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.
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; and
(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.
Complainant has established its rights in
the ICQ family of marks through international registration, including a listing
on the Principal Register of the USPTO in the U.S. and subsequent continuous
use of the mark.
Respondent’s <icqlite.com>
domain name is confusingly similar to Complainant’s mark. Respondent’s addition
of a generic word fails to detract from the dominant presence of Complainant’s
ICQ mark. 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 is therefore confusingly similar); see also Westfield Corp., Inc. v. Hobbs, D2000-0227 (WIPO May 18, 2000)
(finding the <westfieldshopping.com> domain name confusingly similar
because the WESTFIELD mark was the dominant element).
Accordingly, the Panel finds that Policy
¶ 4(a)(i) has been satisfied.
Because Respondent has not submitted a
Response in this proceeding, the Panel may presume it has no rights or
legitimate interests in respect of the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency
Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to
respond can be construed as an admission that they have no legitimate interest
in the domain names). Furthermore, Respondent’s failure to respond allows all
reasonable inferences made by Complainant to be deemed true. See 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”).
Respondent’s domain name routes unsuspecting
Internet users searching for Complainant’s ICQ site to Respondent’s competing
website. Respondent intentionally compounds confusion by using advertisements,
such as, “Dedicated to the fans of ICQ, like us” and images that emulate
Complainant’s famous ICQ mark. Respondent’s registration of a confusingly
similar domain name to divert Internet users to a competing website is not a
bona fide offering of goods or services under Policy ¶ 4(c)(i), nor is it a
noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).
Respondent undoubtedly is rewarded for this diversion by the advertisements
listed on its website. See N. Coast Med., Inc. v. Allegro Med., FA 95541 (Nat. Arb. Forum Oct. 2, 2000)
(finding no bona fide use where Respondent used the domain name to divert
Internet users to its competing website); see also Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9,
2000) (finding no legitimate use when Respondent was diverting consumers to its
own website by using Complainant’s trademarks); see also Ticketmaster Corp. v. DiscoverNet, Inc.,
D2001-0252 (WIPO Apr. 9, 2001) (finding no rights or legitimate interests where
Respondent generated commercial gain by intentionally and misleadingly
diverting users away from Complainant's site to a competing website).
The Panel finds that Policy ¶
4(a)(ii) has been satisfied.
Complainant’s ICQ family of marks has
represented Complainant’s telecommunications services internationally and
reflects famous and established marks. Because of Complainant’s renowned use of
its ICQ mark, its registration of the mark on the USPTO’s Principal Register
and Respondent’s conspicuous copying of Complainant’s logo, Respondent is
thought to have had notice of Complainant’s rights in its ICQ family of marks.
Respondent’s registration and use of its confusingly similar domain name,
despite knowledge of Complainant’s preexisting rights in its mark, represents
bad faith registration and use under the Policy. See Am. Online, Inc. v. Fu, D2000-1374 (WIPO
Dec. 11, 2000) (finding that 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 Samsonite Corp.
v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that
evidence of bad faith includes actual or constructive knowledge of a commonly
known mark at the time of registration).
Respondent’s registration and use of a
domain name confusingly similar to Complainant’s competing ICQ mark also
represents bad faith under Policy ¶ 4(b)(iii). Because Respondent is involved
in the same industry as Complainant, it can be inferred that Respondent’s
primary purpose for registering the disputed domain name was to disrupt
Complainant’s ICQ business. See Mission
Kwa Sizabantu v. Rost, D2000-0279 (WIPO June 7,2000) (defining “competitor”
as "…one who acts in opposition to another and the context does not imply
or demand any restricted meaning such as commercial or business competitor”); see
also Surface Prot. Indus., Inc. v.
Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the
competitive relationship between Complainant and Respondent, Respondent likely
registered the contested domain name with the intent to disrupt Complainant's
business and create user confusion).
Furthermore, Complainant’s ICQ mark is so
connected with Complainant’s services that the use of a confusingly similar
domain name by any other party suggests bad faith under Policy ¶ 4(b)(iv).
Respondent is attempting to intentionally attract, for commercial gain,
unsuspecting Internet users by creating a likelihood of confusion between
Respondent’s <icqlite.com> domain and Complainant’s ICQ mark and
corresponding services. See Am.
Online Inc. v. Shenzhen JZT Computer Software Co. Ltd, 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); 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 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).
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
DECISION
Having established all three elements required under
the ICANN Policy, the Panel concludes that the requested relief should be
hereby GRANTED.
Accordingly, it is Ordered that the <icqlite.com> domain name be
TRANSFERRED
from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated: July 3, 2002
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