national arbitration forum

 

DECISION

 

America Online, Inc. v. MegaWeb.com Inc.

Claim Number:  FA0504000463099

 

PARTIES

Complainant is America Online, Inc. (“Complainant”), represented by James R. Davis, of Arent Fox PLLC, 1050 Connecticut Avenue, NW, Washington, DC 20036.  Respondent is MegaWeb.com Inc. (“Respondent”), 1201 North Market Street, 18th Floor, Wilmington, DE 19801.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <peopleconnection.com>, <ajol.com>, <aoel.com>, <aoil.com>, <aolc.com>, <aolh.com>, <aolk.com>, <aoln.com>, <aolo.com>, <aool.com>, <aqol.com>, <auol.com>, <axol.com>, <ayol.com>, <caol.com>, <eaol.com>, <faol.com>, <gaol.com>, <jaol.com>, <oaol.com>, <xaol.com>, <yaol.com>, <zaol.com>, <ciq.com>, <iseeku.com>, <iseekyou.com>, <ixq.com>, <jcq.com>, <ncq.com>, <ocq.com>, <qcq.com>, <ucq.com>, <vcq.com>, <xcq.com>, and <ycq.com>, registered with Tucows Inc.

 

PANEL

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.

 

Tyrus R. Atkinson, Jr., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on April 14, 2005; the National Arbitration Forum received a hard copy of the Complaint on April 18, 2005.

 

On April 15, 2005, Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the domain names <peopleconnection.com>, <ajol.com>, <aoel.com>, <aoil.com>, <aolc.com>, <aolh.com>, <aolk.com>, <aoln.com>, <aolo.com>, <aool.com>, <aqol.com>, <auol.com>, <axol.com>, <ayol.com>, <caol.com>, <eaol.com>, <faol.com>, <gaol.com>, <jaol.com>, <oaol.com>, <xaol.com>, <yaol.com>, <zaol.com>, <ciq.com>, <iseeku.com>, <iseekyou.com>, <ixq.com>, <jcq.com>, <ncq.com>, <ocq.com>, <qcq.com>, <ucq.com>, <vcq.com>, <xcq.com>, and <ycq.com> are registered with Tucows Inc. and that Respondent is the current registrant of the names. Tucows Inc. has verified that Respondent is bound by the Tucows 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 April 20, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 10, 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@peopleconnection.com, postmaster@ajol.com, postmaster@aoel.com, postmaster@aoil.com, postmaster@aolc.com, postmaster@aolh.com, postmaster@aolk.com, postmaster@aoln.com, postmaster@aolo.com, postmaster@aool.com, postmaster@aqol.com, postmaster@auol.com, postmaster@axol.com, postmaster@ayol.com, postmaster@caol.com, postmaster@eaol.com, postmaster@faol.com, postmaster@gaol.com, postmaster@jaol.com, postmaster@oaol.com, postmaster@xaol.com, postmaster@yaol.com, postmaster@zaol.com, postmaster@ciq.com, postmaster@iseeku.com, postmaster@iseekyou.com, postmaster@ixq.com, postmaster@jcq.com, postmaster@ncq.com, postmaster@ocq.com, postmaster@qcq.com, postmaster@ucq.com, postmaster@vcq.com, postmaster@xcq.com, and postmaster@ycq.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 May 13, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1.      Respondent’s <peopleconnection.com>, <ajol.com>, <aoel.com>, <aoil.com>, <aolc.com>, <aolh.com>, <aolk.com>, <aoln.com>, <aolo.com>, <aool.com>, <aqol.com>, <auol.com>, <axol.com>, <ayol.com>, <caol.com>, <eaol.com>, <faol.com>, <gaol.com>, <jaol.com>, <oaol.com>, <xaol.com>, <yaol.com>, <zaol.com>, <ciq.com>, <iseeku.com>, <iseekyou.com>, <ixq.com>, <jcq.com>, <ncq.com>, <ocq.com>, <qcq.com>, <ucq.com>, <vcq.com>, <xcq.com>, and <ycq.com> domain names are identical or confusingly similar to Complainant’s PEOPLE CONNECTION, AOL, and ICQ marks.

 

2.      Respondent does not have any rights or legitimate interests in the <peopleconnection.com>, <ajol.com>, <aoel.com>, <aoil.com>, <aolc.com>, <aolh.com>, <aolk.com>, <aoln.com>, <aolo.com>, <aool.com>, <aqol.com>, <auol.com>, <axol.com>, <ayol.com>, <caol.com>, <eaol.com>, <faol.com>, <gaol.com>, <jaol.com>, <oaol.com>, <xaol.com>, <yaol.com>, <zaol.com>, <ciq.com>, <iseeku.com>, <iseekyou.com>, <ixq.com>, <jcq.com>, <ncq.com>, <ocq.com>, <qcq.com>, <ucq.com>, <vcq.com>, <xcq.com>, and <ycq.com> domain names.

 

3.      Respondent registered and used the <peopleconnection.com>, <ajol.com>, <aoel.com>, <aoil.com>, <aolc.com>, <aolh.com>, <aolk.com>, <aoln.com>, <aolo.com>, <aool.com>, <aqol.com>, <auol.com>, <axol.com>, <ayol.com>, <caol.com>, <eaol.com>, <faol.com>, <gaol.com>, <jaol.com>, <oaol.com>, <xaol.com>, <yaol.com>, <zaol.com>, <ciq.com>, <iseeku.com>, <iseekyou.com>, <ixq.com>, <jcq.com>, <ncq.com>, <ocq.com>, <qcq.com>, <ucq.com>, <vcq.com>, <xcq.com>, and <ycq.com> domain names in bad faith.

 

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

 

FINDINGS

Complainant, America Online, Inc., and Complainant’s wholly owned subsidiary ICQ, have registered numerous trademarks with the U.S. Patent and Trademark Office (“USPTO”), including the PEOPLE CONNECTION, AOL, AOL.COM, and ICQ marks. 

 

On January 19, 1988, Complainant registered the PEOPLE CONNECTION mark with the USPTO in connection with “providing access time to a computer database in the field of social events and information relating thereto” (Reg. No. 1,473,650).

 

On June 4, 1996, Complainant registered the AOL mark with the USPTO in connection with a variety of goods and services, including a variety of telecommunication and computer services (Reg. No. 1,977,731).

 

On October 29, 1997, Complainant filed a federal trademark registration for the ICQ mark with the USPTO in connection with a variety of goods and services, including computer operating programs, computer software, online directories, telecommunication services, and providing financial information, inter alia.  The USPTO granted registration for that mark on December 12, 2000 (Reg. No. 2,411,657).

 

On March 17, 1998, Respondent registered the domain names <iseekyou.com>, <iseeku.com>, and <xaol.com>. On March 23, 1998, Respondent registered the domain name <ayol.com>.  On March 28, 1998, Respondent registered the domain name <aool.com>.  On March 29, 1998, Respondent registered the domain names <yaol.com>, <zaol.com>, <oaol.com>, <jaol.com>, <gaol.com>, <faol.com>, <caol.com>, <axol.com>, <auol.com>, <aqol.com>, <aolo.com>, <aoln.com>, <aoel.com>, <aoil.com>, <aolc.com>, <aolh.com>, and <aolk.com>.  On April 7, 1998, Respondent registered the domain names <ixq.com>, <jcq.com>, <ncq.com>, <ocq.com>, <qcq.com>, <vcq.com>, <xcq.com>, and <ycq.com>.  On May 1, 1998, Respondent registered the domain names <eaol.com> and <ajol.com>.  On June 13, 1998, Respondent registered the domain name <peopleconnection.com>.  On September 16, 1998, Respondent registered the domain name <ucq.com>.  On September 23, 1998, Respondent registered the domain name <ciq.com>.

 

Each of the aforementioned domain names resolves to a website located at <megago.com>.  The resolved website contains a variety of links entitled “Gambling,” “Massage,” “Sex,” “Viagra,” “Adult,” “Adult Life,” “Free XXX,” “Casino,” “BlackJack,” and “Craps.”  Moreover, the resolved website contains a variety of pop-up advertisements relating to the above categories.

 

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 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.

Identical and/or Confusingly Similar

 

At the outset it is noted that Respondent has failed to respond to the Complaint; therefore, “all reasonable inferences of fact in the allegations of the Complainant will be deemed true.” Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000); see also Strum v. Nordic Net Exchange AB, FA 102843 (Nat. Arb. Forum Feb. 21, 2002) (finding that in accordance with Paragraph 14(b) of the Policy, the Panel may draw such inferences as it considers appropriate, if Respondent fails to comply with the Panel's requests for information).

 

Complainant has established a presumption of valid trademark rights in the PEOPLE CONNECTION, AOL, and ICQ marks as a result of registering the marks with the U.S. Patent and Trademark Office (“USPTO”).  See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that the 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 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.”).

 

Although the USPTO granted registration for Complainant’s ICQ mark after the disputed domain name registrations, Complainant filed the registration application on October 29, 1997, prior to every disputed domain name registration.  Prior panels have held that a complainant’s trademark rights, based on federal registration, date back to the original filing date (provided the mark is granted registration); therefore, Complainant’s rights in the ICQ mark date back to 1997 and priority is not an issue.  See FDNY Fire Safety Educ. Fund, Inc. v. Miller, FA 145235 (Nat. Arb. Forum Mar. 26, 2003) (finding that Complainant’s rights in the FDNY mark relate back to the date that its successful trademark registration was filed with the U.S. Patent and Trademark Office); see also J. C. Hall Co. v. Hallmark Cards, Inc., 340 F.2d 960, 144 U.S.P.Q. 435 (C.C.P.A. 1965) (registration on the Principal Register is prima facie proof of continual use of the mark, dating back to the filing date of the application for registration).

 

The Panel finds that the <peopleconnection.com> domain name is identical to Complainant’s PEOPLE CONNECTION mark pursuant to Policy ¶ 4(a)(i).  As evidence, the domain name incorporates Complainant’s entire mark without modification.  The fact that the domain name adds the generic top-level domain “.com” is without significance 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 Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding that the addition of a top-level domain is without legal significance).

 

Prior panels have held that a domain name, which contains a third-party mark in its entirety, that simply adds a single letter to the mark is confusingly similar to the mark under Policy ¶ 4(a)(i).  See Am. Online, Inc. v. Informatics, Inc., FA 104570 (Nat. Arb. Forum Mar. 25, 2002) (finding the <iaol.com> domain name confusingly similar to the AOL mark); see also Canadian Tire Corp. v. 849075 Alberta Ltd., D2000-0985 (WIPO Oct. 19, 2000) (finding that the domain-names <ecanadiantire.com> and <e-canadiantire.com> are confusingly similar to Canadian Tire’s trademarks).

 

Consistent with these prior decisions, in combination with the facts that Respondent has failed to respond to the Complaint and the AOL mark is highly distinctive,[1] the Panel finds the following domain names confusingly similar to Complainant’s AOL mark pursuant to Policy ¶ 4(a)(i): <ajol.com>, <aoel.com>, <aoil.com>, <aolc.com>, <aolh.com>, <aolk.com>, <aoln.com>, <aolo.com>, <aool.com>, <aqol.com>, <auol.com>, <axol.com>, <ayol.com>, <caol.com>, <eaol.com>, <faol.com>, <gaol.com>, <jaol.com>, <oaol.com>, <xaol.com>, <yaol.com>, and <zaol.com>.  See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive).

 

Prior decisions under the Policy have held that a domain name, which is phonentically identical to a third-party mark, is confusingly similar to the mark under Policy ¶ 4(a)(i).  See Hewlett-Packard Co. v. Cupcake City, FA 93562 (Nat. Arb. Forum Apr. 7, 2000) (finding that a domain name which is phonetically identical to Complainant’s mark satisfies ¶ 4(a)(i) of the Policy); see also YAHOO! Inc. v. Murray, D2000-1013 (WIPO Nov. 17, 2000) (finding that the domain name <yawho.com> is confusingly similar to Complainant’s YAHOO mark).

 

In the instant case, the domain names <iseeku.com> and <iseekyou.com> are both phonetically identical to Complainant’s ICQ mark.  In the absence of a response, and consistent with prior decisions under the Policy, the Panel finds that the domain names <iseeku.com> and <iseekyou.com> are confusingly similar to Complainant’s ICQ mark under Policy ¶ 4(a)(i).

 

However, the Panel finds that the following domain names are not confusingly similar to Complainant’s ICQ mark, despite Respondent’s failure to respond: <ciq.com>, <ixq.com>, <jcq.com>, <ncq.com>, <ocq.com>, <qcq.com>, <ucq.com>, <vcq.com>, <xcq.com>, and <ycq.com>.  In “the Internet context, consumers are aware that domain names for different Web sites are quite often similar, because of the need for language economy, and that very small differences matter.”  Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1147 (9th Cir. 2002).  “Especially in cases involving only a few letters, where those letters do not create a recognized word…the Panel may choose to consider whether the scarcity of domain names should be included in its analysis.”  IMDb, Inc. v. Seventh Summit Ventures, FA 436735 (Nat. Arb. Forum Apr. 25, 2005).

 

A primary difference between domain names and trademarks is that only one entity is able to use a single domain name; whereas many different entities are capable of using the same trademark, albeit for different goods or services.  Given the scarcity of useful and recognizable domain names, the Panel may choose to consider whether a possible confusing similarity between a domain name and mark may be trumped by the competing need to allow for diversified registrants and uses of such domain names.  Id.

 

See also Susan Thomas Johnson, Internet Domain Name and Trademark Disputes: Shifting Paradigms in Intellectual Property, 43 Ariz. L. Rev. 465, 470 (2001) (“The uniqueness requirement of domain names creates an exclusivity that has important economic ramifications, since only one entity can use a specific domain name.  This contrasts with trademarks, where more than one entity can have the same trademark, depending on circumstances, such as geographic location.”).

 

Based on the foregoing rationale, the Panel finds that the following domain names are not confusingly similar to Complainant’s ICQ mark pursuant to Policy ¶ 4(a)(i): <ciq.com>, <ixq.com>, <jcq.com>, <ncq.com>, <ocq.com>, <qcq.com>, <ucq.com>, <vcq.com>, <xcq.com>, and <ycq.com>. 

 

Complainant has established Policy ¶ 4(a)(i) with respect to the following domain names:  <peopleconnection.com>, <ajol.com>, <aoel.com>, <aoil.com>, <aolc.com>, <aolh.com>, <aolk.com>, <aoln.com>, <aolo.com>, <aool.com>, <aqol.com>, <auol.com>, <axol.com>, <ayol.com>, <caol.com>, <eaol.com>, <faol.com>, <gaol.com>, <jaol.com>, <oaol.com>, <xaol.com>, <yaol.com>, <zaol.com>, <iseeku.com>, and <iseekyou.com>.

 

Complainant has failed to establish Policy ¶ 4(a)(i) with respect to the following domain names: <ciq.com>, <ixq.com>, <jcq.com>, <ncq.com>, <ocq.com>, <qcq.com>, <ucq.com>, <vcq.com>, <xcq.com>, and <ycq.com>. 

 

Rights or Legitimate Interests

 

The failure of Respondent to respond to the Complaint functions as an implicit admission that Respondent lacks rights and legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii).  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names); see also Bloomberg L.P. v. GAF, FA 190614 (Nat. Arb. Forum Oct. 20, 2003) (finding that since Respondent did not come forward to explain what legitimate use it may have had in the domain names, the panel could “presume that Respondent lacks rights and legitimate interests in the domain names at issue”).

 

In addition, in the absence of a Response, the Panel may accept all reasonable allegations set forth in the Complaint as true.  See Honeywell Int’l Inc. v. Domain Deluxe, FA 269166 (Nat. Arb. Forum June 29, 2004) (“The failure of Respondent to respond to the Complaint functions both as an implicit admission that Respondent lacks rights to and legitimate interests in the domain names, as well as a presumption that Complainant’s reasonable allegations are true.”); see also Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertion in this regard.”).

 

Respondent is using the disputed domain names to divert Internet users to a website that offers links to a variety of adult-oriented websites and online gambling websites.  Moreover, Respondent uses a variety of pop-up advertisements at the resolved websites.  None of these actions evidence a bona fide offering of goods or services, or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) and (iii).  See Vivendi Universal Games v. Chang, FA 206328 (Nat. Arb. Forum Dec. 17, 2003) (finding it was not a bona fide offering of goods or services nor a legitimate noncommercial or fair use when respondent used the domain name to divert Internet users seeking Complainant's goods or services to pornographic material and links, presumably earning commission or referral fees from advertisers); see also Am. Online, Inc. v. Bates, FA 192595 (Nat. Arb. Forum Oct. 7, 2003) (“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 also Pioneer Hi-Bred Int’l Inc. v. Chan, FA 154119 (Nat. Arb. Forum May 12, 2003) (finding that Respondent did not have rights or legitimate interests in a domain name that used Complainant’s mark and redirected Internet users to website that pays domain name registrants for referring those users to its search engine and pop-up advertisements).

 

Moreover, there is nothing in the record that indicates, let alone suggests, that Respondent is commonly known by any of the disputed domain names pursuant to Policy ¶ 4(c)(ii).  See 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); see also 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).

 

Complainant has established Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Respondent has registered 25 domain names that are identical or confusingly similar to not only one of Complainant’s trademarks, but three.  This is strong evidence that Respondent had actual knowledge of Complainant and its trademarks prior to registering the domain names.  Respondent’s actions are evidence of bad faith registration and use of the following domain names pursuant to Policy ¶ 4(a)(iii): <peopleconnection.com>, <ajol.com>, <aoel.com>, <aoil.com>, <aolc.com>, <aolh.com>, <aolk.com>, <aoln.com>, <aolo.com>, <aool.com>, <aqol.com>, <auol.com>, <axol.com>, <ayol.com>, <caol.com>, <eaol.com>, <faol.com>, <gaol.com>, <jaol.com>, <oaol.com>, <xaol.com>, <yaol.com>, <zaol.com>, <iseeku.com>, and <iseekyou.com>.  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 Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.”); see also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. 2002) ("Where an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse.").

 

Furthermore, the Panel finds that Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with Complainant’s marks pursuant to Policy ¶ 4(b)(iv).  As stated prior, Respondent has registered 25 domain names that are confusingly similar to Complainant’s trademarks.  Respondent has used those domain names to point to its own website, which utilizes pop-up advertisements and links to adult-oriented and gambling websites, presumably for commercial gain.  In the absence of a response, and especially given the fame of Complainant’s AOL mark, the Panel finds Respondent is in violation of Policy ¶ 4(b)(iv).  See Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its diversionary use of Complainant's mark when the domain name resolves to commercial websites and Respondent fails to contest the Complaint, it may be concluded that Respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also ESPN, Inc. v. Ballerini, FA 95410 (Nat. Arb. Forum Sept. 15, 2000) (finding bad faith where Respondent linked the domain name to another website <iwin.com>, presumably receiving a portion of the advertising revenue from the site by directing Internet traffic there, thus using a domain name to attract Internet users for commercial gain); see also Encyclopaedia Britannica Inc. v. Shedon.com, D2000-0753 (WIPO Sept. 6, 2000) (finding that Respondent violated Policy ¶ 4(b)(iv) by using the domain name <britannnica.com> to hyperlink to a gambling site); see also Wells Fargo & Co. v. Party Night Inc. and Peter Carrington, FA 144647 (Nat. Arb. Forum March 18, 2003) (finding that 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).

 

Moreover, based on the foregoing, the Panel also concludes that Respondent is engaged in the practice of typosquatting.  “Typosquatting is the intentional misspelling of words with 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.”  Nat’l Ass’n of  Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003); see also Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) ("Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii)."); see also Dermalogica, Inc. v. Domains to Develop, FA 175201 (Nat. Arb. Forum Sept. 22, 2003) (finding that the <dermatalogica.com> domain name was a typosquatted version of Complainant's DERMALOGICA mark and stating, "[t]yposquatting itself is evidence of bad faith registration and use pursuant to Policy 4(a)(iii).").

DECISION

Having failed to establish that the following domain names are confusingly similar to Complainant’s ICQ mark, pursuant to ICANN Policy ¶ 4(a)(i), the Panel concludes that relief shall be DENIED: <ciq.com>, <ixq.com>, <jcq.com>, <ncq.com>, <ocq.com>, <qcq.com>, <ucq.com>, <vcq.com>, <xcq.com>, and <ycq.com>. 

 

Having established all three elements required under the ICANN Policy for the remaining domain names, the Panel concludes that relief shall be GRANTED:  Accordingly, it is Ordered that the <peopleconnection.com>, <ajol.com>, <aoel.com>, <aoil.com>, <aolc.com>, <aolh.com>, <aolk.com>, <aoln.com>, <aolo.com>, <aool.com>, <aqol.com>, <auol.com>, <axol.com>, <ayol.com>, <caol.com>, <eaol.com>, <faol.com>, <gaol.com>, <jaol.com>, <oaol.com>, <xaol.com>, <yaol.com>, <zaol.com>, <iseeku.com>, and <iseekyou.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

 

Tyrus R. Atkinson, Jr., Panelist

Dated:  May 26, 2005

 

 

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[1] E.g., Am. Online, Inc. v. Amigos On Line RJ, FA 115041 (Nat. Arb. Forum Aug. 28, 2002) (referring to Complainant’s AOL mark as “famous”); Am. Online, Inc. v. Alliance for Online Living, FA 414567 (Nat. Arb. Forum Mar. 22, 2005) (referring to Complainant’s AOL mark as “well-known”); Am. Online, Inc. v. Niche Profit LTD., FA 209902 (Nat. Arb. Forum Dec. 22, 2003) (referring to Complainant’s AOL mark as having “worldwide prominence”).