America Online, Inc. v. Timenka Danil
Aleksandrovich
Claim
Number: FA0505000474338
Complainant is America Online, Inc. (“Complainant”), represented
by James R. Davis of Arent Fox PLLC, 1050
Connecticut Avenue, NW, Washington, DC 20036.
Respondent is Timenka Danil
Aleksandrovich (“Respondent”), Lenina, Moscow, Moscow RU 144144.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <icq-ideal.net>, registered with Onlinenic,
Inc.
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.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on May
10, 2005; the National Arbitration Forum received a hard copy of the Complaint
on May 13, 2005.
On
May 11, 2005, Onlinenic, Inc. confirmed by e-mail to the National Arbitration
Forum that the domain name <icq-ideal.net> is registered with Onlinenic,
Inc. and that Respondent is the current registrant of the name. Onlinenic, Inc. has verified that Respondent
is bound by the Onlinenic, 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
May 16, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
June 6, 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@icq-ideal.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 National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
June 15, 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.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <icq-ideal.net>
domain name is confusingly similar to Complainant’s ICQ mark.
2. Respondent does not have any rights or
legitimate interests in the <icq-ideal.net> domain name.
3. Respondent registered and used the <icq-ideal.net>
domain name in bad faith.
B. Respondent failed to submit a response in
this proceeding.
Complainant, America Online, Inc., has used the ICQ mark
since at least as early as 1996 in connection with computer- and
Internet-related goods and services.
Complainant holds numerous registrations for the ICQ mark in various
countries, including Russia, Respondent’s purported country of residence. Complainant holds registrations with the
United States Patent and Trademark Office (“USPTO”) for the ICQ mark (Reg. No.
2,411,657 issued December 12, 2000) and ICQ-related marks. Since its first use of the mark in 1996,
Complainant has used the mark continuously and extensively in interstate and
international commerce to advertise and sell Complainant’s ICQ goods and
services.
Complainant has invested substantial sums of money in developing and
marketing its services via media such as television, radio, newspapers and
periodicals. Each year, tens of
millions of customers throughout the world obtain goods and services offered
under the ICQ mark. In addition,
millions more people are exposed to the ICQ mark through Complainant’s
advertising and promotion. Complainant’s
ICQ service has been downloaded more than 200,000,000 times around the world,
making it one of the largest online communities worldwide.
Respondent registered the <icq-ideal.net> domain name on December 23, 2004. The domain name resolves to a website that
displays adult-oriented images as well as numerous links to a variety of
third-party websites. Additionally, one
of the links on the website displays Complainant’s ICQ flower logo. Presumably, Respondent derives commercial
benefit from links to the third parties on its website.
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
provided evidence that it owns numerous registrations for the ICQ mark with the
USPTO and other governmental authorities throughout the world. Registration with a government authority
establishes presumptive rights in Complainant’s mark under the Policy. Thus, in the absence of a response from
Respondent, the Panel is left with no evidence to dispute Complainant’s prima
facie case of rights. Therefore,
the Panel finds that Complainant has established rights in the ICQ mark under Policy
¶ 4(a)(i). See 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 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.”).
The <icq-ideal.net>
domain name registered by Respondent comprises Complainant’s registered ICQ
mark in its entirety, adding a hyphen and the generic or descriptive term
“ideal.” Under the Policy, the additions
of a hyphen and a generic or descriptive term are insufficient to distinguish
the disputed domain name from Complainant’s mark. Therefore, the Panel finds that the disputed domain name is
confusingly similar to Complainant’s ICQ mark pursuant to Policy ¶
4(a)(i). See Chernow Communications, Inc. v. Kimball,
D2000-0119 (WIPO May 18, 2000) (“[T]he use or absence of punctuation marks,
such as hyphens, does not alter the fact that a name is identical to a
mark."); see also AXA China
Region Ltd. v. KANNET Ltd., D2000-1377 (WIPO Nov. 29, 2000) (finding that
common geographic qualifiers or generic nouns can rarely be relied upon to
differentiate the mark if the other elements of the domain name comprise a mark
or marks in which another party has rights).
Thus, the Panel
finds that Complainant has satisfied Policy ¶ 4(a)(i).
When left with
no response from Respondent to rebut any of Complainant’s contentions, 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.”).
Complainant
contends that Respondent does not have rights or legitimate interests in the <icq-ideal.net>
domain name, which is confusingly similar to Complainant’s ICQ mark. Complainant’s assertion in this instance is
sufficient to establish a prima facie case in support of its allegations
and shift the burden to Respondent to provide evidence to rebut Complainant’s
contentions. However, Respondent has
failed to respond and has, therefore, failed to meet its burden. Thus, the Panel determines that Respondent
lacks rights and legitimate interests in the disputed domain name. See Do The Hustle, LLC v. Tropic
Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once the complainant
asserts that the respondent has no rights or legitimate interests with respect
to the domain, the burden shifts to the respondent to provide credible evidence
that substantiates its claim of rights and legitimate interests in the domain
name); see also Clerical Med. Inv.
Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding
that under certain circumstances the mere assertion by the complainant that the
respondent has no right or legitimate interest is sufficient to shift the
burden of proof to the respondent to demonstrate that such a right or
legitimate interest does exist); see also 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).
Complainant
asserts that Respondent is not commonly known by the <icq-ideal.net>
domain name and is not licensed to use Complainant’s ICQ mark. In fact, the WHOIS information for
Respondent indicates that Respondent is known as “Timenka Danil
Aleksandrovich.” Respondent has not
provided a response to contradict Complainant’s arguments. Therefore, the Panel finds that Respondent
has not established rights or legitimate interests in the disputed domain name
pursuant to 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 Compagnie de Saint Gobain v. Com-Union
Corp., D2000-0020 (WIPO
Mar. 14, 2000) (finding no rights or legitimate interests where the respondent
was not commonly known by the mark and never applied for a license or
permission from the complainant to use the trademarked name).
Complainant
claims that Respondent is using the <icq-ideal.net> domain name to
divert Internet users searching for Complainant’s ICQ products and services to
Respondent’s website, which displays links to numerous products and services as
well as several adult-oriented images.
Respondent’s use of a domain name that is confusingly similar to
Complainant’s ICQ mark to host a commercial website that includes lists of
hyperlinks and adult-oriented materials is not a use in connection with a bona
fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See U.S. Franchise Sys., Inc. v.
Howell, FA 152457 (Nat. Arb. Forum May 6, 2003) (holding that the respondent’s use of the complainant’s mark and the
goodwill surrounding that mark as a means of attracting Internet users to an
unrelated business was not a bona fide offering of goods or services); see also BB Asea Brown Boveri Ltd. v. Quicknet, D2003-0215
(WIPO May 26, 2003) (stating that the fact that the “use of the disputed domain
name in connection with pornographic images and links tarnishes and dilutes
[the complainant’s mark]” was evidence that Respondent had no rights or
legitimate interests in the disputed domain name); see also Isleworth
Land Co. v. Lost In Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002)
(finding that the 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).
Accordingly, the
Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent is
using the <icq-ideal.net> domain name to attract Internet users
who are interested in finding Complainant’s ICQ products and services by
confusing the users as to Complainant’s affiliation with the commercial content
on Respondent’s website. The Panel
assumes from the evidence that Respondent earns compensation through its
website from third parties by redirecting Internet users via links on
Respondent’s website. Therefore, the
Panel determines that Respondent’s use of the disputed domain name to derive
commercial benefit through a likelihood of confusion of Internet users is
evidence of bad faith registration and use pursuant to 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
Am. Online, Inc. v. Tencent Comm. Corp.,
FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where the
respondent registered and used an infringing domain name to attract users to a
website sponsored by the respondent).
Although Policy
¶ 4(b) includes a list of four specific situations which constitute evidence of
bad faith registration and use, the Panel is not limited to this list and may
take into account additional evidence in making a finding under Policy ¶
4(a)(iii). 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, the 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.”).
Complainant
asserts that Respondent registered the <icq-ideal.net>
domain name with actual knowledge of Complainant’s rights in the ICQ mark. In fact, Respondent’s registration of a
domain name that includes Complainant’s mark in its entirety and also displays
Complainant’s flower logo suggests that Respondent did have knowledge of
Complainant’s rights. Furthermore,
Complainant’s registration of its mark with government authorities bestows upon
Respondent constructive knowledge of Complainant’s rights. Therefore, the Panel finds that there is
sufficient evidence to support a finding that Respondent had actual or
constructive knowledge of Complainant’s rights when Respondent registered the
disputed domain name. The Panel
concludes that this is evidence of bad faith registration and use pursuant to
Policy ¶ 4(a)(iii). See 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
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.”).
The Panel finds
that 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 <icq-ideal.net> domain name be TRANSFERRED
from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated:
June 28, 2005
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