AOL Inc. v. DomZilla Ltd.
Claim Number: FA1006001329312
Complainant is AOL
Inc. (“Complainant”), represented by James
R. Davis, of Arent Fox LLP,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain name at issue is <iccq.com>, <ivq6.com>, <ucq6.com>, <ocq6.com>, and <icw6.com>, registered with PSI-USA, INC. d/b/a DOMAIN ROBOT.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 10, 2010.
On June 14, 2010, PSI-USA, INC. d/b/a DOMAIN ROBOT confirmed by e-mail to the National Arbitration Forum that the <iccq.com>, <ivq6.com>, <ucq6.com>, <ocq6.com>, and <icw6.com> domain names are registered with PSI-USA, INC. d/b/a DOMAIN ROBOT and that Respondent is the current registrant of the names. PSI-USA, INC. d/b/a DOMAIN ROBOT has verified that Respondent is bound by the PSI-USA, INC. d/b/a DOMAIN ROBOT 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 14, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 6, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@iccq.com, postmaster@ivq6.com, postmaster@ucq6.com, postmaster@ocq6.com, and postmaster@icw6.com. Also on June 14, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 12, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch as Panelist.
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" through submission of a Written Notice, as defined in Rule 1. 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <iccq.com>, <ivq6.com>, <ucq6.com>, <ocq6.com>, and <icw6.com> domain names are confusingly similar to Complainant’s ICQ mark.
2. Respondent does not have any rights or legitimate interests in the <iccq.com>, <ivq6.com>, <ucq6.com>, <ocq6.com>, and <icw6.com> domain names.
3. Respondent registered and used the <iccq.com>, <ivq6.com>, <ucq6.com>, <ocq6.com>, and <icw6.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, AOL Inc., operates a variety of online businesses and uses the ICQ mark in connection with providing information and services on the Internet. The ICQ software has been downloaded more than 400 million times and is offered in 16 languages. Complainant holds numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the ICQ mark (e.g., Reg. No. 2,411,657 registered on December 12, 2000).
Respondent, DomZilla Ltd., registered the <iccq.com> domain name on March 30, 2003. Respondent registered the <ivq6.com>, <ucq6.com>, <ocq6.com>, and <icw6.com> domain names on August 18, 2008. The disputed domain names resolve to websites that feature Complainant’s mark and logo. The websites also provide software downloads that compete with Complainant’s products and services.
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 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 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.
Complainant asserts rights in the ICQ mark through its numerous registrations of the mark with the USPTO (e.g., Reg. No. 2,411,657 registered on December 12, 2000). The Panel finds these registrations sufficiently establish Complainant’s rights in the ICQ mark pursuant to Policy ¶ 4(a)(i). 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 Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Complainant argues Respondent’s disputed domain names are confusingly similar to its ICQ mark. Complainant alleges Respondent makes use of common typographical errors in the disputed domain names. In the <iccq.com> domain name, Respondent adds an extra letter “c” to Complainant’s mark. In the <ucq6.com> and <ocq6.com> domain names, Respondent replaces the first letter of Complainant’s mark with the letter “u” or the letter “o.” The letter “u” is directly to the left of the letter “i” on a keyboard. Similarly, the letter “o” is directly to the right of the letter “i” on a keyboard. In the <icw6.com> domain name, Respondent replaces the last letter in Complainant’s mark with the letter “w,” which is next to the letter “q” on a keyboard. In addition, Respondent adds the numeral “6” to Complainant’s mark in the <ivq6.com>, <ucq6.com>, <ocq6.com>, and <icw6.com> domain names. Finally, Respondent affixes the generic top-level domain (“gTLD”) “.com” to Complainant’s mark in each of the disputed domain names. The Panel finds these typographical errors and slight additions do not render Respondent’s disputed domain names distinct from Complainant’s mark. See The Royal Bank of Scotland Grp. plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (“The Panel finds that merely by misspelling Complainants’ mark, Respondent has not sufficiently differentiated the <privelage.com> domain name from the PRIVILEGE mark under Policy ¶ 4(a)(i).”); see also Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”); see also Omnitel Pronto Italia S.p.A. v. Bella, D2000-1641 (WIPO Mar. 12, 2001) (finding that the contested <omnitel2000.com> domain name is confusingly similar to the OMNITEL trademark); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Therefore, the Panel finds Respondent’s <iccq.com>, <ivq6.com>, <ucq6.com>, <ocq6.com>, and <icw6.com> domain names are confusingly similar to Complainant’s ICQ mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
According to Policy ¶ 4(a)(ii), Complainant must first make a prima facie case showing that Respondent lacks rights and legitimate interests in the disputed domain name. The burden then shifts to Respondent to prove it has rights or legitimate interests in the disputed domain name. The Panel may view Respondent’s failure to submit a response as evidence that Respondent lacks rights and legitimate interests. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). Although Respondent failed to respond, the Panel will analyze the record to determine if Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c).
The WHOIS information lists “DomZilla Ltd.” as the registrant of the disputed domain names. Complainant also states Respondent is not licensed or otherwise authorized to use its ICQ mark. Based on the evidence in the record, the Panel finds Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant alleges Respondent does not use its disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Screen shots of Respondent’s resolving websites show Complainant’s ICQ mark and logo prominently displayed throughout the sites. Furthermore, Complainant states Respondent’s websites include software downloads. Complainant claims Respondent uses the disputed domain names to profit from advertising and promoting these competing online communications services. The Panel agrees and finds Respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks); see also Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (finding that the respondent used a domain name for commercial benefit by diverting Internet users to a website that sold goods and services similar to those offered by the complainant and thus, was not using the name in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use).
The Panel finds that Respondent’s use of domain names that
incorporate common misspellings of Complainant’s ICQ mark constitutes
typosquatting, which is further evidence that Respondent lacks rights and
legitimate interests under Policy ¶ 4(a)(ii). See Microsoft Corp. v. Domain Registration
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant avers Respondent’s disputed domain names divert Internet users seeking its services to Respondent’s websites. The Panel finds Respondent’s use of confusingly similar domain names to redirect Internet users to its websites, which offers competing services, disrupts Complainant’s business. Therefore, the Panel finds this behavior constitutes bad faith under Policy ¶ 4(b)(iii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate websites that compete with the complainant’s business); 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 Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website).
Complainant also alleges Internet users who encounter Respondent’s disputed domain names are likely to falsely believe that Complainant endorses or is affiliated with Respondent or its services. Complainant claims confusion is particularly likely because Respondent’s sites prominently display Complainant’s ICQ mark and logo. Complainant states Respondent’s sites also include screen shots of Complainant’s ICQ service. Based on this evidence, the Panel finds Respondent intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s site or services on its website. Therefore, the Panel finds this behavior constitutes registration and use in bad faith under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was commercially gaining from the likelihood of confusion between the complainant’s AIM mark and the competing instant messaging products and services advertised on the respondent’s website which resolved from the disputed domain name).
As previously discussed, Respondent has engaged in typosquatting. Therefore, the Panel finds this use of the disputed domain names provides further evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See The Vanguard Group, Inc. v. IQ Mgmt. Corp., FA 328127 (Nat. Arb. Forum Oct. 28, 2004) (“By engaging in typosquatting, [r]espondent has registered and used the <vangard.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).”); see also Nat’l Ass’n of Prof’l Baseball League, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … is the intentional misspelling of words with [the] intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of itself evidence of bad faith.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <iccq.com>, <ivq6.com>, <ucq6.com>, <ocq6.com>, and <icw6.com> domain names be TRANSFERRED from Respondent to Complainant.
John U. Upchurch, Panelist
Dated: July 23, 2010
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