America Online, Inc. v. The Ministry of Finance a/k/a Den Supra
Claim Number: FA0212000136298
PARTIES
Complainant is
America Online, Inc., Dulles, VA, USA (“Complainant”) represented by James
R. Davis, of Arent Fox Kintner Plotkin & Kahn. Respondent is The Ministry of Finance a/k/a
Den Supra, Moscow, RUSSIAN FEDERATION (“Respondent”).
REGISTRAR AND DISPUTED
DOMAIN NAME
The domain name at issue
is <icqgroup.net>, registered with Register.com, 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.
Honorable Paul A. Dorf
(Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant submitted a
Complaint to the National Arbitration Forum (the “Forum”) electronically on December
6, 2002; the Forum received a hard copy of the Complaint on December 12, 2002.
On December 9, 2002, Register.com,
Inc. confirmed by e-mail to the Forum that the domain name <icqgroup.net>
is registered with Register.com, Inc. and that Respondent is the current
registrant of the name. Register.com,
Inc. has verified that Respondent is bound by the Register.com, 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 December 12, 2002, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of January 2, 2003 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@icqgroup.net 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 January 9, 2003,
pursuant to Complainant’s request to have the dispute decided by a
single-member Panel, the Forum appointed Honorable Paul A. Dorf (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 name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The <icqgroup.net>
domain name is confusingly similar to Complainant’s ICQ mark.
Respondent does not have
any rights or legitimate interests in the <icqgroup.net> domain
name.
Respondent registered
and used the <icqgroup.net> domain name in bad faith.
B. Respondent
Respondent failed to
respond.
FINDINGS
Complainant owns
numerous trademarks for the ICQ mark, which it began using since at least as
early as November of 1996. In
particular, Complainant owns United States Patent and Trademark Office Reg. No.
2,411,657 for the ICQ mark. Moreover,
Complainant has registered the ICQ mark with the appropriate Russian Federation
governing body, the country where Respondent is located.
Complainant has
continually used the ICQ mark in connection with computer services, including, inter
alia, electronic transmission of data, online communications networks,
electronic storage and retrieval of data and documents, and electronic mail
services. Complainant has tens of
millions of customers worldwide that use its ICQ services. Complainant offers its ICQ services to
Russian users in their native Russian language.
Complainant also owns
multiple trademarks and service marks that reflect the ICQ mark, including
ICQmail, ICQphone, ICQgames and ICQcommunity.
Complainant operates a website at <icq.com>, where its ICQ marks are
used to denote the type of services offered under the ICQ umbrella of services.
Complainant has invested
substantial amounts of money to promote and market its ICQ services. Complainant targets its marketing efforts to
a worldwide audience. The ICQ mark and
related services are promoted through network and cable television programs,
radio broadcasts, and in print media.
As a result, Complainant’s ICQ related services are heavily used and the
general public has come to associate the ICQ mark with quality services.
Respondent registered
the <icqgroup.net> domain name on August 21, 2001. Respondent initially used the domain name to
divert Internet traffic to commercial pornographic websites. These websites have no connection with
Complainant or the ICQ mark and related services.
In an effort to resolve
this matter amicably, Complainant sent Respondent a letter requesting that
Respondent transfer the domain name registration. Respondent replied claiming that its costs in connection with the
subject domain name were $1,500 and implied that it would sell the registration
for that amount. Complainant refused to
purchase the domain name registration and sent subsequent letters to
Respondent, which were not replied to.
After the initial letter, Respondent “revised his site to begin offering
various commercial services.”
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.
Complainant has
established rights in the ICQ mark through proof of trademark registration with
the United States Patent and Trademark Office and the appropriate Russian
Federation authority.
Respondent’s <icqgroup.net>
domain name contains Complainant’s entire ICQ mark. The only difference between the ICQ mark and the subject domain
name is the addition of the generic word “group” in the domain name. The significance of this change is
diminished for two reasons: 1) “group”
is a generic word added to Complainant’s distinct and widely used ICQ mark; and
2) the ICQ mark is often used with generic words to denote the particular
services consumers are looking for.
Therefore, potential confusion exists with Respondent’s domain name and
Complainant’s ICQ mark. See 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 the Complainant
combined with a generic word or term); 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).
The Panel finds that
Respondent’s <icqgroup.net> domain name is confusingly similar to
Complainant’s ICQ mark and thus Policy ¶ 4(a)(i) has been satisfied.
Complainant presented
the Panel with a prima facie case, and in particular Complainant alleged
that Respondent has no rights or legitimate interests in the <icqgroup.net>
domain name. Hence, Complainant
discharged its burden effectively shifting the burden on Respondent to come
forward and articulate rights or legitimate interests in the subject domain
name. Respondent’s failure to submit a
Response, however, allows the Panel to presume that Respondent has no such
rights or legitimate interests. See
Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000)
(finding that once Complainant asserts that Respondent has no rights or
legitimate interests in respect of the domain, the burden shifts to Respondent
to provide credible evidence that substantiates its claim of rights and
legitimate interests in the domain name).
Furthermore, in the
absence of a Response the Panel accepts Complainant’s allegations as true, and
will draw all logical inferences in Complainant’s favor. 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”); see also
Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat.
Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences
of fact in the allegations of Complainant to be deemed true).
Respondent used the <icqgroup.net>
domain name to divert Internet traffic to pornographic websites. When Internet users enter the <icqgroup.net>
domain name into the web-browser they are directed to a website containing
compromising pictures of various women and links to a variety of other pornographic
websites. Respondent therefore first
used the subject domain name, which reflects Complainant’s valuable ICQ mark,
to increase traffic to a website wholly unrelated to any ICQ related services. Respondent only changed its pornographic use
of the domain name after it received notice of objection from Complainant, but
merely changed the use to offer various commercial services. Respondent’s
actions do not represent a bona fide offering of goods or services pursuant to
Policy ¶ 4(c)(i), nor is Respondent engaged in a legitimate noncommercial or
fair use of the subject domain name pursuant to Policy ¶ 4(c)(iii). See MatchNet plc v. MAC Trading,
D2000-0205 (WIPO May 11, 2000) (finding that it is not a bona fide offering of
goods or services to use a domain name for commercial gain by attracting
Internet users to third party sites offering sexually explicit and pornographic
material, where such use is calculated to mislead consumers and tarnish
Complainant’s mark); 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).
Respondent has no
business affiliation with Complainant and Complainant never authorized
Respondent to use its valuable ICQ mark or any version of said mark. Respondent has not come forward to establish
that it is commonly known by the <icqgroup.net> domain name and
Respondent’s identity, according to the WHOIS information, is “The Ministry of
Finance” a/k/a “Den Supra.” Therefore,
Policy ¶ 4(c)(ii) does not serve to assist Respondent in establishing rights or
legitimate interests in the <icqgroup.net> domain name. See 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); see also 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).
Accordingly, the Panel
finds that Respondent has no rights or legitimate interests in the <icqgroup.net>
domain name; thus, Policy ¶ 4(a)(ii) is satisfied.
Respondent responded to
Complainant’s cease and desist letter with a claim that it spent nearly $1,500
on the subject domain name. Respondent
intimated that it would be willing to transfer the <icqgroup.net>
domain name registration rights for that amount. Respondent has not substantiated its claim of expenses in
association with the subject domain name and Complainant contests the asserted
costs. Therefore, the Panel concludes that $1,500 is an amount in excess of
Respondent’s out-of-pocket expenses in connection with the domain name. In addition, Complainant, as owner in
interests of the ICQ mark, is the only party that has an interest in the
inherent value of the <icqgroup.net> domain name, and it can be
inferred that Respondent had the intent to trade off of that value. Thus, the Panel finds bad faith registration
and use pursuant to Policy ¶ 4(b)(i). See
Tech. Prop., Inc v. Hussain, FA 95411 (Nat. Arb. Forum Sept. 14, 2000)
(finding bad faith where Respondent verbally offered the domain names for sale
for $2,000); see also Nabisco Brands Co. v. Patron Group,
D2000-0032 (WIPO Feb. 23, 2000) (finding that the Respondent registered and
used the domain names to profit where Respondent offered to sell the domain
names for $2,300 per name).
Respondent initially
used the <icqgroup.net> domain name in an effort to increase
traffic to its pornographic website, which contains links to other pornographic
websites. It is inferred that Respondent
monetarily benefited from the increased hits its pornographic website received
from the subject domain name.
Respondent chose a domain name that has no apparent connection with its
pornographic website; however, the domain name is strongly connected to
Complainant’s ICQ mark. Hence, it is
reasonable to infer that Respondent registered the <icqgroup.net>
domain name with the intent to benefit from the goodwill associated with
Complainant’s ICQ mark. Moreover,
Respondent’s diversionary behavior likely resulted in Internet user confusion
as to Complainant’s affiliation with the resulting pornographic website. Therefore, Respondent’s actions represent
bad faith registration and use of the subject domain name under Policy ¶
4(b)(iv). See Geocities v. Geociites.com,
D2000-0326 (WIPO June 19, 2000) (finding bad faith where Respondent linked the
domain name in question to websites displaying banner advertisements and
pornographic material); see also Brown & Bigelow, Inc. v. Rodela,
FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (use of another's well-known mark to
provide a link to a pornographic site is evidence of bad faith registration and
use).
Accordingly, the Panel
finds that Respondent registered the <icqgroup.net> domain name in
bad faith; thus Policy ¶ 4(a)(iii) has been satisfied
DECISION
Having established all
three elements under ICANN Policy, the Panel concludes that relief shall be
hereby GRANTED.
Accordingly, it is
Ordered that the <icqgroup.net> domain name be TRANSFERRED
from Respondent to Complainant.
Honorable Paul A. Dorf
(Ret.) Panelist
Dated: January 13, 2003
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