America Online, Inc. v. David Bates
Claim Number: FA0309000192595
PARTIES
Complainant
is America Online, Inc., Dulles, VA
(“Complainant”) represented by James R.
Davis, II of Arent Fox Kintner Plotkin & Kahn, PLLC. Respondent is David Bates, Padstow Heights, Australia (“Respondent”) represented
by David Bates.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <icq4xxx.com>,
registered with Network Solutions, 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.
The
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on September 3, 2003; the Forum received a hard copy of the
Complaint on September 5, 2003.
On
September 8, 2003, Network Solutions, Inc. confirmed by e-mail to the Forum
that the domain name <icq4xxx.com>
is registered with Network Solutions, Inc. and that the Respondent is the
current registrant of the name. Network
Solutions, Inc. has verified that Respondent is bound by the Network Solutions,
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
September 9, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of September 9, 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@icq4xxx.com by e-mail.
A
timely Response was received and determined to be complete on September 16,
2003.
On September 25, 2003, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the Forum appointed the
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant makes the following assertions:
1. Respondent’s <icq4xxx.com> domain name is confusingly similar to
Complainant’s ICQ mark.
2. Respondent does not have any rights or
legitimate interests in the <icq4xxx.com>
domain name.
3. Respondent registered and used the <icq4xxx.com> domain name in bad
faith.
B.
Respondent
Respondent has
stated that he has deleted all the material related to the <icq4xxx.com> domain name
and will not use the domain name in the future. Respondent says that he has complied with Complainant’s requests
stated in the Complaint and will abide by any ruling of the Panel.
FINDINGS
America
Online, Inc. and ICQ, Inc. (collectively “AOL”), are the owners of many
trademark registrations worldwide for the mark ICQ, including federal trademark
registrations in the United States and Australia. The mark ICQ has been used since at least as early as November
1996, in connection with computer and telecommunications services. AOL uses the mark ICQ.COM as the domain name
for its portal web site for the ICQ service.
Many
years prior to Respondent’s registration of the domain name <icq4xxx.com>
and at least as early as 1996, AOL and its predecessor-in-interest adopted and
began using the ICQ mark in connection with computer- and Internet-related
goods and services. Since its first
adoption, the distinctive ICQ mark has been used continuously and extensively
in interstate and international commerce in connection with the advertising and
sale of goods and services.
AOL
has invested substantial sums of money in developing and marketing its
services. The ICQ mark has been and
continues to be widely publicized through substantial advertising throughout
the United States and the world.
Respondent,
David Bates, is a resident of Australia.
Respondent registered the <icq4xxx.com> domain name in
March 2002. Respondent uses the domain
name in connection with commercial pornographic web sites.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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.”
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;
(2)
the
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 registration with the U.S.
Patent and Trademark Office on December 12, 2000 (Reg. No. 2,411,657) and
with authorities in Australia on
October 19, 1998 (Reg. No. 776,100).
Complainant also has established rights in the ICQ mark through the
marks’s use in commerce since 1996. See
Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002)
(“Under U.S. trademark law, registered marks hold a presumption that they are
inherently distinctive and have acquired secondary meaning”); see also Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that
registration of a mark is prima facie evidence
of validity, which creates a rebuttable presumption that the mark is inherently
distinctive. Respondent has the burden
of refuting this assumption), see also Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000)
(finding common law rights in a mark where its use was continuous and ongoing,
and secondary meaning was established).
Also, Complainant asserts that Respondent’s
<icq4xxx.com> domain name is
confusingly similar to the ICQ mark because the domain name fully incorporates
the mark and merely adds the descriptive term “4xxx,” which describes the adult
content that is exhibited on the <icq4xxx.com>
website. 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
Complainant combined with a generic word or term); see also Am. Online,
Inc. v. Anytime Online Traffic Sch., FA 146930 (Nat. Arb. Forum Apr. 11,
2003) (finding that Respondent’s domain names, which incorporated Complainant’s entire mark and merely added the descriptive
terms “traffic school,” “defensive driving,” and “driver improvement” did not
add any distinctive features capable of overcoming a claim of confusing
similarity).
Accordingly,
the Panel finds that the <icq4xxx.com>
domain name is confusingly similar to
Complainant’s ICQ mark under Policy ¶ 4(a)(i).
Respondent
lacks rights or legitimate interests in the <icq4xxx.com> domain name
because Respondent was not authorized or licensed to register or use a domain
name that incorporates the ICQ mark.
The record fails to establish that Respondent is commonly known by the <icq4xxx.com> domain name
and hence Respondent lacks rights or legitimate interests in the domain
name. See Tercent, Inc.
v. 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 Policy ¶ 4(c)(ii)
does not apply); see also Compagnie de Saint Gobain v. Com-Union
Corp., D2000-0020 (WIPO
Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was
not commonly known by the mark and never applied for a license or permission
from Complainant to use the trademarked name).
Furthermore,
Complainant asserts that Respondent has attempted to commercially benefit from the
<icq4xxx.com> domain name
by linking it to adult-oriented websites.
Attempts to commercially benefit from a domain name that is confusingly
similar to another’s mark by linking the domain name to an adult-oriented
website as evidence that the registrant lacks rights or legitimate interests in
the domain name. See Isleworth Land Co. v. Lost In Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27,
2002) (finding that Respondent’s use of its domain name to link
unsuspecting Internet traffic to an adult-orientated website, containing images
of scantily clad women in provocative poses, did not constitute a connection
with a bona fide offering of goods or services or a noncommercial or fair use);
see also McClatchy Mgmt. Servs., Inc. v. Carrington a/k/a Party Night
Inc., FA 155902 (Nat. Arb. Forum June 2, 2003) (holding that Respondent’s
use of the disputed domain names to divert Internet users
to a website that features pornographic material, had been “consistently held”
to be neither a bona fide offering of goods or services . . . nor a legitimate
noncommercial or fair use).
In addition,
Respondent’s willingness to transfer the <icq4xxx.com> domain name
is evidence that Respondent lacks rights or legitimate interests in the domain
name. See Marcor
Int’l v. Langevin, FA
96317 (Nat. Arb. Forum Jan. 12, 2001) (finding that Respondent’s willingness to
transfer the domain name at issue indicates that it has no rights or legitimate
interests in the domain name in question); see also Colgate-Palmolive Co. v. Domains For Sale, FA 96248 (Nat. Arb.
Forum Jan. 18, 2001) (finding that Respondent’s willingness to transfer the
domain name at issue to Complainant, as reflected in its Response, is evidence
that it has no rights or legitimate interests in the domain name).
Accordingly,
the Panel finds that Respondent does not have rights or legitimate interests in
the <icq4xxx.com> domain name under Policy ¶ 4(a)(ii).
Respondent had actual knowledge of the
ICQ mark because the <icq4xxx.com> domain name fully incorporates the
mark. Respondent also had constructive
knowledge of the ICQ mark recognized worldwide and registered with the U. S.
Patent and Trademark Office and other countries including Respondent’s country
of residence. Therefore, Respondent
registered and used the domain name in bad faith. 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 Orange Glo Int’l v.
Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN
mark is listed on the Principal Register of the USPTO, a status that confers
constructive notice on those seeking to register or use the mark or any
confusingly similar variation thereof”); see also Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18, 2000)
(finding that Respondent had actual and constructive knowledge of Complainant’s
EXXON mark given the worldwide prominence of the mark and thus Respondent
registered the domain name in bad faith).
In addition, Respondent used the <icq4xxx.com> domain name to
commercially benefit from the goodwill associated with the ICQ mark by linking
the domain name to adult-oriented websites which is evidence that the domain
name was registered and used in bad faith.
See Microsoft Corp. v. Horner, D2002-0029 (WIPO Feb. 27, 2002)
(holding that Respondent’s use of Complainant’s mark to post pornographic
photographs and to publicize hyperlinks to additional pornographic websites
evidenced bad faith use and registration of the domain name); 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,
Respondent’s willingness to transfer the <icq4xxx.com> domain name
to Complainant is evidence that Respondent registered and used the domain name
in bad faith. See Marcor
Int’l v. Langevin, FA
96317 (Nat. Arb. Forum Jan. 12, 2001) (Respondent’s registration and use of the
domain name at issue coupled with its expressed willingness to transfer the
name amply satisfies the bad faith requirements set forth in the Policy).
The
Panel thus finds that Respondent registered and used the <icq4xxx.com> domain
name in bad faith, and that Policy ¶ 4(a)(iii) is satisfied.
DECISION
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <icq4xxx.com>
domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated: October 7, 2003
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