America Online, Inc. v. George Stoyanov
Claim Number: FA0205000114446
PARTIES
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.
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.
David
E. Sorkin as Panelist.
PROCEDURAL HISTORY
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 postmaster@icqauctions.com, postmaster@icqbooks.com,
postmaster@icqcareers.com, postmaster@icqhistory.com, postmaster@icqkids.com,
postmaster@icqmarketing.com, postmaster@icqremote.com,
postmaster@icqscheduler.com, postmaster@icqsystem.com,
postmaster@icqwallet.com, postmaster@icqwhitepages.com, and
postmaster@icqwizard.com, postmaster@icqyellowpages.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.
RELIEF SOUGHT
Complainant
requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
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.
B.
Respondent
Respondent
did not submit a timely Response in this proceeding.
FINDINGS
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.
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 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.[1] 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.
DECISION
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
Click Here to
return to the main Domain Decisions Page.
Click Here to return to our Home Page
[1] 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.