America Online, Inc. v. George Stoyanov
Claim Number: FA0205000114446
Complainant is America Online, Inc., Dulles, VA, USA (“Complainant”), represented by James R. Davis, of Arent Fox Kintner Plotkin & Kahn. Respondent is George Stoyanov, Rousse, BULGARIA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain names at issue are <icqauctions.com>, <icqbooks.com>, <icqcareers.com>, <icqhistory.com>, <icqkids.com>, <icqmarketing.com>, <icqremote.com>, <icqscheduler.com>, <icqsystem.com>, <icqwallet.com>, <icqwhitepages.com>, <icqwizard.com> and <icqyellowpages.com>, registered with Network Solutions, 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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on May 30, 2002; the hard copy was received on June 14, 2002.
On June 3, 2002, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain names <icqauctions.com>, <icqbooks.com>, <icqcareers.com>, <icqhistory.com>, <icqkids.com>, <icqmarketing.com>, <icqremote.com>, <icqscheduler.com>, <icqsystem.com>, <icqwallet.com>, <icqwhitepages.com>, <icqwizard.com>, and <icqyellowpages.com> are registered with Network Solutions, Inc. and that Respondent is the current registrant of the names. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 June 18, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 8, 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 email@example.com, firstname.lastname@example.org, email@example.com, firstname.lastname@example.org, email@example.com, firstname.lastname@example.org, email@example.com, firstname.lastname@example.org, email@example.com, firstname.lastname@example.org, email@example.com, and firstname.lastname@example.org, email@example.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 July 11, 2002, Respondent submitted an untimely Response that did not comply with the Rules for the Uniform Domain Name Dispute Resolution Policy (the “Rules”).
On July 23, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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 “to employ reasonably available means calculated to achieve actual notice to Respondent.”
Because Respondent’s submission was received late, the Panel has determined that the Response’s contents will not be considered in its decision. Accordingly, the Panel will issue its decision based on the timely documents submitted, 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. The Panel notes that it has reviewed all materials submitted by both parties and finds that consideration of the Response would not have affected the outcome of the case.
Complainant requests that the domain names be transferred from Respondent to Complainant.
Complainant contends that the disputed domain names are confusingly similar or nearly identical to ICQ, a mark in which Complainant has rights, and other marks of Complainant that contain ICQ; that Respondent has no rights or legitimate interests in respect to the disputed domain names; and that Respondent registered and is using the disputed domain names in bad faith to capitalize on the famous ICQ mark and to confuse consumers.
Respondent did not submit a timely Response in this proceeding.
The Panel finds that the disputed domain names are confusingly similar to a mark in which Complainant has rights, that Respondent has no rights or legitimate interests in respect of the disputed domain names, and that Respondent registered and is using the disputed domain names in bad faith.
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 timely 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 operates ICQ, an online communications service with over 100 million registered subscribers. Complainant and its predecessor have used the mark ICQ to refer to this service since 1996. The mark is registered in the United States and many other countries, and an application for trademark registration currently is pending in Respondent’s country, Bulgaria. Among related marks registered by Complainant are ICQmail, ICQphone, ICQgames and ICQcommunity. Complainant uses the domain name <icq.com> as the portal site for its ICQ service.
The disputed domain names all begin with the ICQ mark, with various words appended thereto, along with the top-level domain “.com”. The ICQ mark is the focal point of each domain name. The appended words all describe applications or services that might plausibly be offered in conjunction with ICQ; none of them appear on their face to disparage the ICQ mark or otherwise disassociate the domain name from the mark. Compare America Online, Inc. v. GSD Internet, D2001-0629 (WIPO June 25, 2001) (holding that <icqporn.com> is not confusingly similar to ICQ) with, e.g., America Online, Inc. v. Balfe, D2000-0913 (WIPO Sept. 30, 2000) (decided by the same Panelist, holding that <icqcell.com> and several other ICQ domain names are confusingly similar to ICQ).
The Panel therefore finds that the disputed domain names are confusingly similar to a mark in which Complainant has rights.
Complainant alleges that Respondent lacks rights or legitimate interests in respect of the disputed domain names, on the basis that Respondent is not named ICQ and is not licensed or otherwise authorized to use Complainant’s ICQ marks. Respondent has failed to submit a timely Response in this proceeding, and does not appear to have made any active use of the disputed domain names. No right or legitimate interest that Respondent might have in respect of the disputed domain names is apparent to the Panel. It is therefore presumed that the Respondent has no such rights or legitimate interests. See Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000). The Panel so finds.
Complainant alleges that Respondent registered and is using the disputed domain names in bad faith to capitalize on Complainant’s mark and to confuse consumers. The Panel may conclude that the disputed domain names were registered in bad faith if the circumstances indicate that Respondent registered the domain names primarily for the purpose of selling them to Complainant for valuable consideration in excess of Respondent’s costs. Policy paragraph 4(b)(i). The Panel considers those circumstances (if present) and all other relevant evidence in making its determination as to registration and use in bad faith.
Respondent registered the disputed domain names on May 15, 2001. More than one year later there is no indication that Respondent has ever made any active use of the domain names. The only communication between the parties appears to be an exchange initiated by Complainant, requesting that Respondent transfer one of the disputed domain names to Complainant and offering to reimburse Respondent’s expenses. Respondent declined but invited Complainant to “try another offer.” The Panel is hesitant to draw any conclusions from this communication, in part because it was initiated by Complainant rather than Respondent. Nonetheless, taking all of the circumstances into consideration, the Panel is of the view that Respondent registered and is using the disputed domain names primarily for the purpose of attempting to sell them to Complainant for an amount substantially exceeding Respondent’s costs.
The Panel finds that the disputed domain names were registered and are being used in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be hereby GRANTED.
Accordingly, it is Ordered that the following domain names be TRANSFERRED from Respondent to Complainant: <icqauctions.com>, <icqbooks.com>, <icqcareers.com>, <icqhistory.com>, <icqkids.com>, <icqmarketing.com>, <icqremote.com>, <icqscheduler.com>, <icqsystem.com>, <icqwallet.com>, <icqwhitepages.com>, <icqwizard.com> and <icqyellowpages.com>.
David E. Sorkin, Panelist
Dated: August 6, 2002
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 This is not to say that it is impossible for an entity not authorized by Complainant to acquire such rights or legitimate interests, see America Online, Inc. v. Eremeev, D2001-0003 (WIPO Feb. 15, 2001) (finding that vendor of “ICQ Plus” software may have been making legitimate noncommercial or fair use of ICQ mark); but merely that no indication of such rights or interests appears in the record before this Panel.