AOL LLC v. Svertnev Yuriy Aleksandrovich d/b/a icq-mobile
Claim Number: FA0906001267620
Complainant is AOL
LLC (“Complainant”), represented by James
R. Davis, of Arent Fox LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <icq-mobile.info>, registered with Directi Internet Solutions Pvt. Ltd.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 10, 2009; the National Arbitration Forum received a hard copy of the Complaint on June 12, 2009.
On June 17, 2009, Directi Internet Solutions Pvt. Ltd. confirmed by e-mail to the National Arbitration Forum that the <icq-mobile.info> domain name is registered with Directi Internet Solutions Pvt. Ltd. and that Respondent is the current registrant of the name. Directi Internet Solutions Pvt. Ltd. has verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. 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 17, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 7, 2009 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@icq-mobile.info by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 13, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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.
A. Complainant makes the following assertions:
Complainant offers personal communication services such as text, voice, and video, under Complainant’s ICQ mark.
Complainant holds multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its ICQ mark (including Reg. No. 2,411,657, issued December 12, 2000).
Respondent is not authorized by Complainant to use the ICQ mark.
Respondent registered the <icq-mobile.info> domain name on December 4, 2007.
The disputed domain name resolves to a website featuring adult-oriented content.
Respondent’s <icq-mobile.info> domain name is confusingly similar to Complainant’s ICQ mark.
Respondent does not have any rights to or legitimate interests in the <icq-mobile.info> domain name.
Respondent registered and uses the <icq-mobile.info> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark and service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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 response, the Panel shall decide this administrative proceeding on the basis of 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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also 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.”
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has established rights in its ICQ mark under Policy ¶ 4(a)(i) through its trademark and service mark registration with the USPTO. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007):
As
the [complainant’s] mark is registered with the USPTO, [the] complainant has
met the requirements of Policy ¶ 4(a)(i).
See also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); further see Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which a respondent operates; rather, it is sufficient that a complainant can demonstrate registration of a mark in some jurisdiction).
The disputed domain contains Complainant’s mark in its entirety, and merely adds a hyphen, the descriptive word “mobile” which relates to Complainant’s communication business, and the top-level domain “.info.” The addition of the word “mobile” does not distinguish the disputed domain name from Complainant’s ICQ mark. Similarly, the addition of the hyphen and top-level domain is irrelevant in a Policy ¶ 4(a)(i) analysis. See Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity between a mark and a competing domain name where <kohlerbaths.com>, the disputed domain name, contained a complainant’s mark in its entirety and adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”); see also Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003):
[T]he
addition of punctuation marks such as hyphens is irrelevant in the
determination of confusing similarity pursuant to Policy ¶ 4(a)(i).
Further see Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
For these reasons, the Panel finds that Respondent’s <icq-mobile.info> domain name is confusingly similar to Complainant’s ICQ mark under Policy ¶ 4(a)(i).
Complainant alleges that Respondent does not have any rights to or legitimate interests in the <icq-mobile.info> domain name. In light of this prima facie allegation, the burden shifts to Respondent to prove that it does have rights to or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that, once a prima facie case has been established by a complainant, the burden shifts to a respondent to demonstrate its rights or legitimate interests in a disputed domain name pursuant to Policy ¶ 4(c)).
Complainant having made out a prima facie showing, Respondent’s failure to respond to the allegations of the Complaint permits us to presume that Respondent does not have rights to or legitimate interests in the disputed domain name. See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000):
Failure
of a respondent to come forward to [contest complainant’s allegations] is
tantamount to admitting the truth of complainant’s assertions in this regard.
We will nonetheless examine the record in light of the considerations set out in Policy ¶ 4(c) to determine if there is any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name sufficient for purposes of the Policy.
We begin by noting that Complaint alleges, and Respondent does not deny, that Respondent uses the <icq-mobile.info> domain name to resolve to a website featuring adult-oriented content. Such a use of a disputed domain name is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair uses of the domain under Policy ¶ 4(c)(iii). See Paws, Inc. v. Zuccarini, FA 125368 (Nat. Arb. Forum Nov. 15, 2002) (holding that the use of a domain name that is confusingly similar to an established mark to divert Internet users to an adult-oriented website “tarnishes Complainant’s mark and does not evidence noncommercial or fair use of the domain name by a respondent”); see also Vivendi Universal Games v. Chang, FA 206328 (Nat. Arb. Forum Dec. 17, 2003) (finding that a respondent did not use a domain name in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use because that respondent used the domain to divert Internet users seeking a complainant's goods or services to adult-oriented material and links).
We also consider that Complainant asserts, and Respondent does not deny, that Respondent is not authorized to use the ICQ mark, and there is nothing in the record to suggest that Respondent is commonly known by the disputed domain name. Indeed, the pertinent WHOIS information identifies Respondent merely as “Svertnev Yuriy Aleksandrovich.” Therefore, we conclude that Respondent has not established rights to or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that a respondent was not commonly known by the domain name <coppertown.com> where there was no evidence in the record, including the relevant WHOIS information, suggesting that that respondent was commonly known by the disputed domain name); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that a respondent was not commonly known by the <lilpunk.com> domain name, where there was no evidence in the record showing that that respondent was commonly known by the domain name, and where the pertinent WHOIS information did not support the suggestion that respondent was so known, and where a complainant asserted, without contradiction, that it did not authorize or license that respondent’s use of its mark in a domain name).
The Panel therefore finds that Policy 4(a)(ii) has been satisfied.
Policy ¶ 4(b) is not an exclusive list of examples of bad faith registration and use of a disputed domain name. The totality of the circumstances may be considered when analyzing a contention of bad faith registration and use of a domain under Policy ¶ 4(a)(iii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000):
[T]he
examples [of bad faith] in Paragraph 4(b) are intended to be illustrative,
rather than exclusive.
See also Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in paragraph 4(b) of the Policy do not constitute an exhaustive list of bad faith evidence).
Respondent’s <icq-mobile.info> domain name resolves to a website featuring adult-oriented content. The disputed domain name is confusingly similar to Complainant’s ICQ mark. In the circumstances here presented, Internet users interested in Complainant may become confused about the possibility of Complainant’s affiliation with the resolving website. Therefore, we conclude that Respondents use of the disputed domain name as alleged constitutes bad faith registration and use of the domain under Policy ¶ 4(a)(iii). See Wells Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (finding that a respondent’s tarnishing use of disputed domain names to redirect Internet users to adult-oriented websites was evidence that the domain names were being used in bad faith); see also Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that, absent contrary evidence, linking the domain names there in question to graphic, adult-oriented websites is evidence of bad faith).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <icq-mobile.info> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: July 28, 2009
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