NATIONAL ARBITRATION FORUM

 

DECISION

 

AOL Inc. v. Bondarenko A Pavel

Claim Number: FA1006001328932

 

PARTIES

Complainant is AOL Inc. represented by James R. Davis, of Arent Fox LLP, (“Complainant”), Virginia, USA  Respondent is Bondarenko A Pavel, (“Respondent”), Russian Federation.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <icqshop.us>, registered with DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM.

 

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 Ralph Yachnin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on June 8, 2010; the Forum received a hard copy of the Complaint on June 16, 2010.

 

On June 11, 2010, DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM confirmed by e-mail to the Forum that the <icqshop.us> domain name is registered with DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM and that Respondent is the current registrant of the name.  DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM has verified that Respondent is bound by the DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).

 

On June 17, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 7, 2010 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).

 

Having received no Response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.

 

On July 13, 2010,  pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Ralph Yachnin 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.  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the 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 name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

 

1.      Respondent’s <icqshop.us> domain name is confusingly similar to Complainant’s ICQ mark.

 

2.      Respondent does not have any rights or legitimate interests in the <icqshop.us> domain name.

 

3.      Respondent registered and used the <icqshop.us> domain name in bad faith.

 

B. Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, AOL, Inc., is the owner of its ICQ mark that it uses in relation to telecommunication services, personal advice, romance, news, and chat rooms, as well as many other uses.  Complainant owns trademark registrations with the United States Patent and Trademark Office ("USPTO") for its ICQ mark (Reg. No. 2,411,657 issued Dec. 12, 2000) and Russian Federation’s Federal Service for Intellectual Property, Patents and Trademarks (“ROSPATENT”) (Reg. No. 186,352 issued March 24, 2000).

 

Respondent registered the <icqshop.us> domain name on August 9, 2008.  Respondent’s disputed domain name resolves to a website that displays Complainant’s ICQ mark and flower logo, purports to sell ICQ numbers, and contains a forum-type chat feature similar to Complainant’s official website.    

 

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(f), 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 the 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 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 or is being used in bad faith.

 

Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.

 

Identical and/or Confusingly Similar

 

Complainant has submitted evidence to show that it owns trademark registrations for its ICQ mark with the USPTO (Reg. No. 2,411,657 issued Dec. 12, 2000) and ROSPATENT (Reg. No. 186,352 issued March 24, 2000).  The Panel finds that Complainant has established rights in its mark under Policy ¶ 4(a)(i) through its trademark registrations.  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 [UDRP] ¶ 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 UDRP ¶ 4(a)(i)).

 

Complainant argues that Respondent’s <icqshop.us> domain name is confusingly similar to Complainant’s ICQ mark because it contains Complainant’s entire mark in addition to the generic term “shop” and the country-code top-level domain (“ccTLD”) “.us.”  The Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s ICQ mark under Policy ¶ 4(a)(i).  See L.L. Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000) (finding that combining the generic word “shop” with the complainant’s registered mark “llbean” does not circumvent the complainant’s rights in the mark nor avoid the confusing similarity aspect of the ICANN Policy); see also 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.”).

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied. 

 

Rights or Legitimate Interests

 

Complainant has alleged that Respondent does not have any rights and legitimate interests in the <icqshop.us> domain name.  The Panel finds Complainant has produced a sufficient prima facie case.  Therefore, the burden of proof has properly shifted to Respondent to prove it has rights and legitimate interests in the <icqshop.us> domain name under Policy ¶ 4(a)(ii).  The Pane finds that Respondent’s failure to respond to the Complaint allows the Panel to infer that Respondent does not have rights and legitimate interests in the disputed domain name.    See Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed.  In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”); see also Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the [UDRP].”).  However, the Panel will examine the record to determine whether Respondent has rights and legitimate interests in the disputed domain name under Policy ¶ 4(c).

 

The Panel finds that there is no evidence in the record indicating that Respondent owns any service marks or trademarks that reflect the <icqshop.us> domain name.  Therefore, the Panel finds that Respondent does not have rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(i).  See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002 (finding that there was no evidence that Respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.com> domain name); see also Pepsico, Inc. v. Becky, FA 117014 (Nat. Arb. Forum Sep. 3, 2002) (holding that because Respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).

 

Complainant argues that Respondent is neither commonly known by the disputed domain name, nor has Complainant given Respondent permission to use its ICQ mark.  The WHOIS information for the disputed domain name identifies “Bondarenko A Pavel” as the registrant, which does not indicate that Respondent is commonly known by the <icqshop.us> domain name.  Therefore, the Panel finds that, absent evidence showing otherwise, Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(iii).  See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that UDRP ¶ 4(c)(ii) does not apply).

 

Complainant contends that Respondent is using the disputed domain name to advertise and promote online communications services in competition with Complainant.  Further Complainant argues that Respondent is using Complainant’s mark and Complainant’s flower logo prominently on its website which may cause Internet users to believe they are on a website that is owned by Complainant.  Complainant further alleges that Respondent is selling ICQ numbers through its website as well.  Complainant contends that Respondent’s use of the disputed domain name to compete directly with Complainant while also using Complainant’s marks on Respondent’s website is evidence that Respondent lacks rights and legitimate interests in the <icqshop.us> domain name.  The Panel finds that Respondent’s use of the disputed domain name to offer competing communications services and to sell services under Complainant’s mark is not a use in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv).  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 Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of UDRP ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site); see also Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not a bona fide offering of goods or services pursuant to UDRP ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to UDRP ¶ 4(c)(iii) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website).

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.    

 

Registration and Use in Bad Faith

 

Complainant contends that Respondent is using the disputed domain name to promote and advertise online communication services in competition with Complainant.  The Panel finds that Respondent is diverting Internet users seeking Complainant’s online communications services to Respondent’s competing website and that such use is evidence of Respondent’s bad faith registration and use of the <icqshop.us> domain name under Policy ¶ 4(b)(iii).  See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business.  The Panel finds this diversion is evidence of bad faith registration and use pursuant to [UDRP] ¶ 4(b)(iii).”); see also Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to UDRP ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website).

 

Complainant argues that Respondent is benefiting commercially from use of Complainant’s ICQ mark.  Complainant contends that Respondent sells ICQ numbers on Respondent’s website for as much as $1,000.  Further, Complainant argues that Respondent is using Complainant’s mark and logo on its website to create the impression that Respondent is either affiliated with or sponsored by Complainant.  The Panel finds that Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(iv) where it offers competing services, sale of services, and uses Complainant’s mark and logo prominently on its website.  See Amazon.com, Inc. v. Shafir, FA 196119 (Nat. Arb. Forum Nov. 10, 2003) (“As Respondent is using the domain name at issue in direct competition with Complainant, and giving the impression of being affiliated with or sponsored by Complainant, this circumstance qualifies as bad faith registration and use of the domain name pursuant to [UDRP] ¶ 4(b)(iv).”); see also Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”); see also Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site).

 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.       

 

DECISION

Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <icqshop.us> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

 

Dated: July 16, 2070

 

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