AOL LLC v. Abed Esb
Claim Number: FA0907001275754
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 <icq6skins.com>, registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.
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 July 27, 2009; the National Arbitration Forum received a hard copy of the Complaint on July 28, 2009.
On July 29, 2009, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the <icq6skins.com> domain name is registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that Respondent is the current registrant of the name. Melbourne It, Ltd. d/b/a Internet Names Worldwide has verified that Respondent is bound by the Melbourne It, Ltd. d/b/a Internet Names Worldwide 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").
30, 2009, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of August
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, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 24, 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 is a provider of telecommunication products and services, and promotes those products and services, including background graphics known as “skins,” under the ICQ mark.
Complainant registered the ICQ trademark and service mark with the United States Patent and Trademark Office (“USPTO”) on December 12, 2000 (Reg. No. 2,411,657), and the same trademark with the Israeli trademark authority (Registrar of Trade Marks of Israel) on December 5, 1999 (Reg. No., 123,156).
Complainant’s software marketed under the ICQ mark has been downloaded more than 400 million times, and more than 700 million messages are sent over the ICQ network every day.
Complainant has not licensed the ICQ mark for Respondent’s use.
Respondent registered the <icq6skins.com> domain name on April 28, 2007.
The disputed domain name resolves to a website that provides software downloads and features Complainant’s logos and the ICQ mark.
Respondent gains financially from the sales of software products on the website that resolves from the disputed domain name.
Respondent’s <icq6skins.com> domain name is confusingly similar to Complainant’s ICQ mark.
Respondent does not have any rights to or legitimate interests in the <icq6skins.com> domain name.
Respondent registered and uses the <icq6skins.com> 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 the ICQ mark pursuant
to Policy ¶ 4(a)(i) through its trademark registrations. See Miller Brewing
Complainant contends that
Respondent’s <icq6skins.com> domain name is confusingly
similar to its ICQ mark. Respondent’s
domain name contains Complainant’s ICQ mark in its entirety and adds the numeral
“6” and the term “skins,” which describes one of Complainant’s products, plus
the generic top-level domain “.com.” Adding
a numeral does not sufficiently distinguish the disputed domain name from
Complainant’s mark pursuant to Policy ¶ 4(a)(i), nor
does either the addition of a descriptive term, or the addition of a generic
top-level domain. See Am. Online, Inc. v. garybush co
Respondent’s domain name is confusingly similar to Complainant’s AOL mark because the disputed domain name incorporates the mark with the mere addition of the nondistinctive number ‘0.’ The addition of the number ‘0’ is insufficient to distinguish the domain name from Complainant’s mark.
See also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied); further see Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003):
The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.
Because the changes made to Complainant’s mark do not sufficiently distinguish the disputed domain name under Policy ¶ 4(a)(i), the Panel finds that the domain name is confusingly similar to Complainant’s ICQ mark pursuant to Policy ¶ 4(a)(i).
Complainant contends that Respondent lacks rights to and legitimate interests in the <icq6skins.com> domain name. Once Complainant has established a prima facie case under the Policy, the burden of proof shifts from to Respondent to bring forth evidence of its rights or legitimate interests in the disputed domain name. See Document Techs., Inc. v. Int’l Elec. Commc’ns Inc., D2000-0270 (WIPO June 6, 2000):
Although Paragraph 4(a) of the Policy requires that the Complainant prove the presence of this element (along with the other two), once a Complainant makes out a prima facie showing, the burden of production on this factor shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights to or legitimate interests in the Domain Name.
See also Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the panel and a respondent did not come forward to suggest any right or interest it may have possessed).
Complainant has established a prima facie case, while Respondent, for its part, has failed to answer the allegations of the Complaint. We may therefore presume that Respondent does not have rights to or legitimate interests in the contested domain name. See, for example, Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to the allegations of a complaint allows a presumption that a complainant’s allegations against it are true unless clearly contradicted by the evidence). However, we will examine the record to determine whether there is any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name under the tests set out in Policy ¶ 4(c).
We begin by noting that Complainant contends that Respondent is not commonly known by the <icq6skins.com> domain name. Consistent with this assertion, the pertinent WHOIS information lists the registrant as “Abed Esb.” Moreover, Complainant contends that it has not licensed the ICQ mark for Respondent’s use. Consequently, we conclude that Respondent is not commonly known by the <icq6skins.com> 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 <coppertown.com> domain name where there was no evidence in the record, including the relevant WHOIS information, suggesting that that respondent was commonly known by that domain name); see also IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that a respondent failed to establish rights to or legitimate interests in the <emitmortgage.com> domain name where a respondent was not authorized to register domain names featuring a complainant’s mark and failed to submit evidence that it was commonly known by the disputed domain).
We also observe that there is no dispute as to Complainant’s assertion that Respondent is using the <icq6skins.com> domain name to redirect Internet users to a website that provides software downloads that compete with Complainant’s products, and which features the ICQ mark as well as Complainant’s corporate logos. Such a use of the disputed domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003): “Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.” See also Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that a respondent was not using domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use where that respondent used the domain names to divert Internet users to a website that offered services that competed with those offered by a complainant under its marks).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant has shown that the <icq6skins.com> domain name, registered on April 28, 2007, redirects Internet users to a website featuring Complainant’s logos and marks, and advertising products that compete with Complainant’s own services. Respondent’s diversion of Internet users in the manner alleged disrupts Complainant’s business, and is evidence of bad faith registration and use of the contested domain name pursuant to Policy ¶ 4(b)(iii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that a respondent registered and used disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii) by using them to operate websites that competed with a complainant’s business); see also Marriott Int’l, Inc. v. MCM Tours, Inc., FA 444510 (Nat. Arb. Forum May 6, 2005):
The Respondent is a travel agency and thus operates in the same business as the Complainant. The parties can therefore be considered as competitors. The Panel thus finds that the Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor, which constitutes evidence of registration and use in bad faith under Policy 4(b)(iii).
Complainant also contends, and Respondent does not deny, that Respondent is gaining financially from the sales of software products on the website that resolves from the disputed domain name. in the circumstances here presented, Respondent’s use of the disputed domain name for commercial gain is further evidence of Respondent’s bad faith registration and use of the domain under Policy ¶ 4(b)(iv). See Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding bad faith pursuant to Policy ¶ 4(b)(iv) because a respondent and a complainant were in the same line of business and that respondent used a domain name confusingly similar to that complainant’s FITNESS WAREHOUSE mark to attract Internet users to its <efitnesswarehouse.com> domain); see also TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where a respondent used a domain name, for commercial gain, to attract users to a direct competitor of a complainant).
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 <icq6skins.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: August 27, 2009
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