America Online, Inc. v. CredoNIC.com /
Domain For Sale c/o Domain Administrator
Claim
Number: FA0502000432156
Complainant is America Online, Inc. (“Complainant”),
represented by James R. Davis, of Arent Fox PLLC, 1050
Connecticut Avenue, NW, Washington, DC 20036. Respondent is CredoNIC.com / Domain For Sale c/o Domain Administrator (“Respondent”), PO Box 1991, Hallandale, FL 33008.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <icqespanol.com>, registered with Enom,
Inc.
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:
James
A. Carmody, Esq., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on February
25, 2005; the National Arbitration Forum received a hard copy of the Complaint
on March 1, 2005.
On
February 25, 2005, Enom, Inc. confirmed by e-mail to the National Arbitration
Forum that the domain name <icqespanol.com> is registered with Enom,
Inc. and that Respondent is the current registrant of the name. Enom, Inc. has
verified that Respondent is bound by the Enom, 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
March 2, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of March 22,
2005 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@icqespanol.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 National Arbitration
Forum transmitted to the parties a Notification of Respondent Default.
On
March 28, 2005, pursuant to Complainant’s request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed James A.
Carmody, Esq., 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.”
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 name be transferred from Respondent to Complainant.
A.
Complainant makes the following assertions:
1. Respondent’s <icqespanol.com>
domain name is confusingly similar to Complainant’s ICQ mark.
2. Respondent does not have any rights or
legitimate interests in the <icqespanol.com> domain name.
3. Respondent registered and used the <icqespanol.com>
domain name in bad faith.
B.
Respondent failed to submit a response in this proceeding.
Complainant has
provided telecommunications and computer software services under the ICQ mark
since at least as early as November 1996. The ICQ mark has been widely
publicized through substantial advertising throughout the United States and the
world. Each year, tens of millions of customers worldwide obtain goods and
services offered under the ICQ mark; millions more are exposed to the mark
through advertising and promotion. The ICQ service has approximately 175
million users around the world. Complainant holds numerous worldwide trademark
registrations for the ICQ mark, including U.S. Reg. No. 2,411,657 (issued
December 12, 2000), which is on the Principal Register of the United States
Patent and Trademark Office.
Respondent
registered the <icqespanol.com> domain name on February 28, 2004.
The domain name resolves to a website that promotes various online pornographic
services. Respondent is not licensed to use Complainant’s mark for any purpose.
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.
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 has
established that it has rights in the ICQ mark through registration with the
United States Patent and Trademark Office and through continuous use of the
mark 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 and
that a respondent has the burden of refuting this assumption).
The <icqespanol.com> domain name is
confusingly similar to Complainant’s ICQ registered trademark because the
disputed domain name merely adds the generic word “espanol,” which is the
Spanish-language word for “Spanish,” and the “.com” generic top-level domain to
the mark. The addition of a generic word and a generic top-level domain do not
distinguish the domain name from the mark. Thus, the Panel finds that the
domain name is confusingly similar to Complainant’s mark under Policy ¶
4(a)(i). See Rollerblade, Inc. v.
McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the
domain name such as “.net” or “.com” does not affect the domain name for the
purpose of determining whether it is identical or confusingly similar); 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 contained the identical
mark of the complainant combined with a generic word or term); see also Am. Online Inc. v. Neticq.com Ltd.,
D2000-1606 (WIPO Feb. 12, 2001) (finding that the addition of the generic word
“Net” to the complainant’s ICQ mark made the <neticq.com> domain name
confusingly similar to the complainant’s mark).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent
has failed to submit a response in this proceeding. In the absence of a response,
the Panel accepts as true all reasonable allegations contained in the Complaint
unless clearly contradicted by the evidence. Complainant has alleged that
Respondent lacks rights and legitimate interests in the <icqespanol.com>
domain name. Complainant’s submission has gone unopposed and its arguments
unrefuted. Further, because Respondent has failed to submit a response,
Respondent has failed to propose any set of circumstances that could
substantiate its rights or legitimate interests in the disputed domain name
under Policy ¶ 4(a)(ii). See Vertical Solutions Mgmt., Inc. v.
webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding
that a respondent’s failure to respond allows all reasonable inferences of fact
in the allegations of the complaint to be deemed true); see also Parfums
Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that,
by not submitting a response, the respondent failed to invoke any circumstance
which could demonstrate any rights or legitimate interests in the domain name).
Respondent
is not using the disputed domain name in connection with a bona fide offering
of goods or services under Policy ¶ 4(c)(i) or making a legitimate
noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii)
because the domain name is confusingly similar to Complainant’s mark and
redirects unsuspecting Internet users to a website that promotes pornographic
services, which are unrelated to Complainant’s business. Respondent’s use of
Complainant’s well-known ICQ mark in connection with a pornographic website
tarnishes and dilutes the mark and fails to establish rights or legitimate
interests in the domain name. See ABB Asea Brown Boveri Ltd. v. Quicknet,
D2003-0215 (WIPO May 26, 2003) (stating that using the domain name in
connection with pornographic images and links tarnished and diluted the
complainant’s mark and evidenced that the respondent had no rights or
legitimate interests in the domain name); see also Paws, Inc. v. Zuccarini,
FA 125368 (Nat. Arb. Forum Nov. 15, 2002) (holding that the use of a domain
name that was confusingly similar to an established mark to divert Internet
users to an adult-oriented website “tarnishes Complainant’s mark and does not
evidence noncommercial or fair use of the domain name by a respondent”); 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).
No
evidence before the Panel suggests Respondent is commonly known by the <icqespanol.com>
domain name under Policy ¶ 4(c)(ii). The domain name’s WHOIS information
indicates that the registrant of the disputed domain name is known as
“CredoNIC.com / Domain For Sale c/o Domain Administrator” and is not known by
the confusingly similar second-level domain that infringes on Complainant’s
famous ICQ mark. Moreover, Respondent is not authorized or licensed to use
Complainant’s mark for any purpose. Thus, Respondent lacks rights and
legitimate interests in the domain name under Policy ¶ 4(c)(ii). See 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 Policy ¶
4(c)(ii) does not apply); see also RMO, Inc. v. Burbridge, FA 96949
(Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) “to require a
showing that one has been commonly known by the domain name prior to
registration of the domain name to prevail”).
The
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
uses a confusingly similar variation of Complainant’s ICQ mark in its domain
name to ensnare unsuspecting Internet users. Respondent then redirects the
users to a pornographic website. The Panel infers that Respondent profits from
this diversion. Thus, Respondent is commercially benefiting from the
unauthorized use of Complainant’s registered mark in its domain name. Such
infringement is evidence of bad faith registration and use under Policy ¶
4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933
(Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and
used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the
respondent was using the confusingly similar domain name to attract Internet
users to its commercial website); see also Kmart v. Khan, FA 127708
(Nat. Arb. Forum Nov. 22, 2002) (finding that if a respondent profits from its
diversionary use of a complainant’s mark when the domain name resolves to
commercial websites and the respondent fails to contest the complaint, it may
be concluded that the respondent is using the domain name in bad faith pursuant
to Policy ¶ 4(b)(iv)).
Furthermore,
while each of the four circumstances listed under Policy ¶ 4(b), if proven,
evidences bad faith use and registration of a domain name, additional factors
can also be used to support findings of bad faith. See Twentieth Century Fox Film Corp. v. Risser,
FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that, in determining if a
domain name has been registered in bad faith, a panel must look at the
“totality of circumstances”); see also Do the Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph
4(b) are intended to be illustrative, rather than exclusive.”).
Respondent uses
the <icqespanol.com> domain name to direct Internet users to a
pornographic website. Such use tarnishes and dilutes Complainant’s well-known
ICQ mark. The Panel finds that Respondent’s use of the domain name is strong
evidence that Respondent registered and used the domain name in bad faith under
Policy ¶ 4(a)(iii). See Wells Fargo & Co. v. Party Night Inc., FA
144647 (Nat. Arb. Forum Mar. 18, 2003) (finding that the
respondent’s tarnishing use of the disputed domain names to redirect Internet users to adult-oriented websites was evidence
that the domain names were being used in bad faith); see also
Nat’l Ass’n of Stock Car Auto Racing, Inc. v. RMG Inc. – BUY or LEASE by E-MAIL,
D2001-1387 (WIPO Jan. 23, 2002) (“It is now well known that pornographers rely
on misleading domain names to attract users by confusion, in order to generate
revenue from click-through advertising, mouse-trapping, and other pernicious
online marketing techniques.”); see also Microsoft Corp. v. Horner,
D2002-0029 (WIPO Feb. 27, 2002) (holding that the respondent’s use of the
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).
Respondent’s
registration of the disputed domain name, a domain name that is confusingly
similar to Complainant’s well-known mark, suggests that Respondent knew of
Complainant’s rights in the ICQ mark. Additionally, Complainant’s trademark
registration on the Principal Register of the United States Patent and
Trademark Office gave Respondent constructive notice of Complainant’s mark. Thus,
the Panel finds that Respondent chose the <icqespanol.com> domain
name based on the distinctive and well-known qualities of Complainant’s mark,
which evidences bad faith registration and use under Policy ¶ 4(a)(iii). See
Sony Kabushiki Kaisha v. Inja, Kil,
D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use where it
is “inconceivable that the respondent could make any active use of the disputed
domain names without creating a false impression of association with the
Complainant”); see also Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb.
Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith, when the
respondent reasonably should have been aware of the complainant’s trademarks,
actually or constructively.”); 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 Am.
Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that the ICQ
mark is so obviously connected with the complainant and its products that the
use of the domain names by the respondent, who has no connection with the
complainant, suggests opportunistic bad faith); see also Harrods Ltd. v.
Harrod’s Closet D2001-1027 (WIPO Sept. 28, 2001) (finding that, where a
mark is so obviously connected with well-known products, its very use by
someone with no connection to these products can evidence opportunistic bad
faith).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it is
Ordered that the <icqespanol.com> domain name be TRANSFERRED
from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated:
April 11, 2005
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