America Online, Inc. v. Inforian, Inc.
Claim Number: FA0207000115086
Complainant is America Online, Inc., Dulles, VA (“Complainant”) represented by James R. Davis, of Arent Fox Kintner Plotkin & Kahn. Respondent is Inforian, Inc., Cerritos, CA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cicq.net>, registered with Network Solutions.
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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on July 12, 2002; the Forum received a hard copy of the Complaint on July 12, 2002.
On July 19, 2002, Network Solutions confirmed by e-mail to the Forum that the domain name <cicq.net> is registered with Network Solutions and that Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions 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 July 19, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 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 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 August 20, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Harold Kalina (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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
The <cicq.net> domain name is confusingly similar to Complainant's ICQ mark.
Respondent has no rights or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name in bad faith.
Respondent failed to submit a Response.
Complainant has used the ICQ mark in commerce in relation to telecommunication services since November of 1996. Complainant has registered the mark in many countries throughout the world including Austria, Australia, Israel, Italy, Germany, France, Denmark, Norway, China, Chile, Spain, and Switzerland. Complainant also registered the mark in the United States with the United States Patent and Trademark Office as Registration Number 2,411,657 on December 12, 2000. Complainant is also the owner of a family of marks that incorporate the ICQ letters including marks such as: ICQMAIL, ICQGAMES, and ICQPHONE.
Complainant services millions of customers a year under the ICQ mark. Customers worldwide obtain goods and services under the mark, and even more are exposed through Complainant’s advertising on radio, TV and print media. Complainant has spent a substantial amount of money on advertising, and has created a significant amount of goodwill in its ICQ mark as a result.
Respondent registered the disputed <cicq.net> domain name on August 11, 1998. Respondent’s website at the disputed domain name advertises CICQ communication services, and creates the impression that Respondent is affiliated with Complainant. Respondent is on notice of Complainant’s rights in the ICQ mark because it was the Defendant of a lawsuit filed by Complainant in the Eastern District of Virginia for trademark infringement and dilution in July of 2000. The lawsuit however, was dismissed without prejudice for lack of personal jurisdiction. After the lawsuit was dismissed Complainant attempted to amicably resolve the dispute, and Respondent agreed to cease using the disputed domain name. Respondent has failed to carry out its agreement with Complainant. Respondent has also registered other domain names that incorporate Complainant’s well-known ICQ mark including, <picq.com>, and <picq.net>.
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.
Identical and/or Confusingly Similar
Complainant has established that it has rights in the ICQ mark through registration and widespread use throughout the world. Respondent’s <cicq.net> domain name is confusingly similar to Complainant’s ICQ mark because it incorporates Complainant’s entire mark and merely adds the letter “c” to the beginning. The addition of a single letter to a well-known mark does not create a distinct mark capable of overcoming a claim of confusingly similarity. See America Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that <oicq.net> and <oicq.com> are confusingly similar to Complainant’s mark, ICQ); 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).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Respondent has failed to come forward with a Response and therefore it is presumed that Respondent has no rights or legitimate interests in 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, when Respondent fails to submit a Response the Panel is permitted to make all inferences in favor of Complainant. 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 is using a confusingly similar domain name in order to attract Internet users to a website that competes with Complainant’s services. This type of use is not considered to be a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor is it considered to be a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). 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 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 Telstra Corp. v. Nuclear Marshmallow, D2000-0003 (WIPO Feb.18, 2000) (finding (i) the fact that the Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks and (ii) the fact that the word TELSTRA appears to be an invented word, and as such is not one traders would legitimately choose unless seeking to create an impression of an association with the Complainant, demonstrate that Respondent lacks rights or legitimate interests in the domain name).
Respondent has not come forward with any evidence that establishes that it is commonly known as CICQ or <cicq.net>. Respondent is known to this Panel only as “Inforian, Inc.” Therefore, Respondent has not established that it has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). 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); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Based on the fact that Respondent owns at least two other variations of the ICQ mark as domain names (<picq.com> and <picq.net>), as well as the fame of Complainant’s mark worldwide, it can be inferred that Respondent registered and used the disputed domain name in order to create a likelihood of confusion as to the source, sponsorship and affiliation of the domain name in order to attract Complainant’s customers to Respondent’s website for Respondent’s commercial gain. This behavior is considered to be evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where Respondent registered the domain name <bigtex.net> to infringe on Complainant’s goodwill and attract Internet users to Respondent’s website); 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).
Respondent has engaged in a pattern of registering domain names that infringe upon Complainant’s ICQ mark. Respondent’s behavior therefore constitutes evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(ii). See YAHOO! Inc. v. Syrynx, Inc., D2000-1675 (WIPO Jan. 30, 2001) (finding a bad faith pattern pursuant to Policy ¶ 4(b)(ii) in Respondent's registration of two domain names incorporating Complainant's YAHOO! mark); see also Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that registration of more than one domain name that infringes on another’s registered mark(s) supports the inference that the Respondent knew of the Complainant’s marks upon registering the domain names; and the registration of multiple domain names that infringe on the Complainant’s trademark(s) is evidence of a pattern of conduct).
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 the requested relief shall be hereby granted.
Accordingly, it is Ordered that the domain name <cicq.net> be transferred from Respondent to Complainant.
Dated: August 26, 2002
Judge Harold Kalina (Ret.), Panelist
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page