America Online, Inc. v. Inigo Investments
Ltd.
Claim Number: FA0211000132451
PARTIES
Complainant
is America Online, Inc., Dulles, VA,
USA (“Complainant”) represented by James
R. Davis, of Arent Fox Kintner
Plotkin & Kahn. Respondent is Inigo Investments Ltd., Tortola,
VIRGIN ISLANDS (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <icqsexclub.com>
and < sexicq.com>,
registered with Tucows, 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.
Judge
Harold Kalina (Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on November 11, 2002; the Forum received a hard copy of the
Complaint on November 13, 2002.
On
November 12, 2002, Tucows, Inc. confirmed by e-mail to the Forum that the
domain names <icqsexclub.com> and
< sexicq.com> are registered
with Tucows, Inc. and that Respondent is the current registrant of the
names. Tucows, Inc. has verified that
Respondent is bound by the Tucows, 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
November 13, 2002, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of December 3, 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@icqsexclub.com and postmaster@ sexicq.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
December 17, 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.
RELIEF SOUGHT
Complainant
requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
The
<sexicq.com>
and <icqsexclub.com>
domain names are confusingly similar to Complainant's ICQ mark.
Respondent
has no rights or legitimate interests in the disputed domain names.
Respondent registered and used the disputed domain names
in bad faith.
B.
Respondent
Respondent
failed to submit a Response.
FINDINGS
Complainant, America Online, Inc. and its
affiliate ICQ, Inc., are the owners of the ICQ trademark, registered with the
United States Patent and Trademark Office (“USPTO”) and in numerous countries
throughout the world. Complainant has
used the mark since as early as 1996 in relation to its computer and Internet
related goods and services. The ICQ
service offered by Complainant has been downloaded 200,000,000 times around the
world, making it one of the largest online communities in the world.
Respondent registered the disputed domain
names on July 25, 2002. Respondent is
using the two domain names in connection to commercial and pornographic
websites.
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 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 Respondent
is identical or confusingly similar to a trademark or service mark in which
Complainant has rights; and
(2)
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 continuous and substantial use throughout the
world, as well as its registration of the mark with the USPTO.
Respondent’s <sexicq.com> domain name is confusingly similar to Complainant’s
mark because it merely combines the entirety of Complainant’s mark with the
generic term “sex.” The addition of a
generic term to a well-known mark does not create any distinct features capable
of overcoming a claim of confusing similarity.
See 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); see also Arthur Guinness Son & Co. (Dublin)
Ltd. v. Healy/BOSTH, D2001-0026
(WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in
dispute contains the identical mark of Complainant combined with a generic word
or term).
The <icqsexclub.com> domain name is confusingly similar to
Complainant’s mark because it merely adds the phrase “sex club” to
Complainant’s well-known mark. The
addition of the phrase “sex club” does not overcome the fact that Complainant’s
mark is still the dominant feature of the domain name. Therefore, the addition does not defeat a
claim of confusing similarity. See Westfield Corp., Inc. v. Hobbs,
D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com>
domain name confusingly similar because the WESTFIELD mark was the dominant
element); see also Body Shop Int’l PLC v. CPIC NET &
Hussain, D2000-1214 (WIPO Nov. 26, 2000) (finding that the domain name
<bodyshopdigital.com> is confusingly similar to Complainant’s THE BODY
SHOP trademark).
The Panel finds that Policy ¶ 4(a)(i) has
been satisfied.
Rights or Legitimate Interests
Respondent has failed to come forward
with a Response. Therefore, it is
presumed that Respondent has no rights or legitimate interests in the disputed
domain names. 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 the disputed domain
names in order to host commercial and pornographic websites. The domain names are confusingly similar to
Complainant’s mark and therefore Internet users are likely to be confused as to
the source, sponsorship and affiliation of these websites. This could tarnish Complainant’s mark and
therefore affect the goodwill Complainant has established in its mark. This type of use is not considered to be in
connection with a bona fide offering of goods or services pursuant to Policy ¶
4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶
4(c)(iii). See Nat’l Football League Prop., Inc. v. One Sex Entm’t Co.,
D2000-0118 (WIPO Apr. 17, 2000) (finding that Respondent had no rights or
legitimate interests in the domain names <chargergirls.com> and
<chargergirls.net> where Respondent linked these domain names to its
pornographic website); see also Brown & Bigelow, Inc. v. Rodela, FA
96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that infringing on another's
well-known mark to provide a link to a pornographic site is not a legitimate or
fair use).
Based on the famous nature of
Complainant’s mark it would be very difficult for Respondent to prove that it
is commonly known as ICQ, SEXICQ, ICQSEXCLUB, <sexicq.com> or <icqsexclub.com>. Respondent has failed to come forward with
any evidence to establish that it is commonly known by the disputed domain
names and therefore the Panel may find that Respondent has no rights or
legitimate interests in the disputed domain names 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 Broadcom Corp. v. Intellifone
Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or
legitimate interests because Respondent is not commonly known by the disputed
domain name or using the domain name in connection with a legitimate or fair
use).
The Panel finds that Policy ¶ 4(a)(ii) has
been satisfied.
Registration and Use in Bad Faith
Respondent is using the confusingly
similar domain names in order to attract Internet users to its pornographic and
commercial websites. Therefore,
Respondent is creating a likelihood of confusion for its own commercial
gain. This type of behavior is evidence
of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See
State Farm Mut. Auto. Ins. Co. v. Northway, FA 95464 (Nat. Arb. Forum Oct.
11, 2000) (finding that Respondent registered the domain name
<statefarmnews.com> in bad faith because Respondent intended to use
Complainant’s marks to attract the public to the website without permission
from Complainant); 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).
Policy paragraph 4(b) lists four
situations that are evidence of bad faith registration or use. Paragraph 4(b) is not meant to be exclusive,
and therefore many other circumstances can give rise to evidence of bad
faith. See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24,
2002) (determining that Policy paragraph 4(b) sets forth certain circumstances,
without limitation, that shall be evidence of registration and use of a domain
name in bad faith); see also Cellular One Group v. Brien, D2000-0028
(WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy
is not an exhaustive list of bad faith evidence).
Respondent is using the disputed domain
names in connection with pornographic websites. This use, because it connects Complainant’s well-known mark with
pornography, tarnishes Complainant’s ICQ mark.
Therefore, this type of use is considered to be evidence of bad faith
registration and use pursuant to Policy ¶ 4(a)(iii). See MatchNet plc. v. MAC
Trading, D2000-0205 (WIPO May 11, 2000) (finding that the association of a
confusingly similar domain name with a pornographic website can constitute bad
faith); see also Youtv, Inc. v. Alemdar, FA 94243 (Nat. Arb. Forum Apr. 25, 2000)
(finding bad faith where Respondent attracted users to his website for
commercial gain and linked his website to pornographic websites).
Furthermore, based on the fame of
Complainant’s mark, and the fact that Respondent is using the disputed domain
names in order to attract Internet users to its websites, it can be inferred
that Respondent had knowledge of Complainant’s ICQ mark when it registered the
disputed domain names. Registration of
infringing domain names, despite actual knowledge of Complainant’s rights, is
evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii). See
Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000)
(finding that evidence of bad faith includes actual or constructive knowledge
of a commonly known mark at the time of registration); see also Chanel, Inc. AG v.
Designer Exposure, D2000-1832 (WIPO Feb. 15, 2001) (finding that
Respondent's registration and use of the famous CHANEL mark suggests
opportunistic bad faith).
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
DECISION
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 names <sexicq.com> and <icqsexclub.com> be transferred from Respondent to
Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated:
December 26, 2002
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