America Online, Inc. v. IM Forwards Inc.
Claim
Number: FA0505000482623
Complainant is America Online, Inc. (“Complainant”), represented
by James R. Davis, of Arent Fox PLLC, 1050
Connecticut Avenue, NW, Washington, DC 20036.
Respondent is IM Forwards Inc. (“Respondent”),
represented by John Slafsky, of Wilson Sonsini Goodrich and Rosati, 650 Page Mill Road, Palo Alto, CA 94301.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <aimforwarding.com>, <aimforwards.com>,
<icqforwarding.com> and <icqforwards.com>, registered
with Network Solutions, 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 May
20, 2005; the National Arbitration Forum received a hard copy of the Complaint
on May 23, 2005.
On
May 26, 2005, Network Solutions, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain names <aimforwarding.com>, <aimforwards.com>,
<icqforwarding.com> and <icqforwards.com> are
registered with Network Solutions, Inc. and that Respondent is the current
registrant of the names. 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
May 26, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
June 15, 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@aimforwarding.com, postmaster@aimforwards.com, postmaster@icqforwarding.com
and postmaster@icqforwards.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
June 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <aimforwarding.com>,
<aimforwards.com>, <icqforwarding.com> and <icqforwards.com>
domain names are confusingly similar to Complainant’s AIM and ICQ marks.
2. Respondent does not have any rights or
legitimate interests in the <aimforwarding.com>, <aimforwards.com>,
<icqforwarding.com> and <icqforwards.com> domain
names.
3. Respondent registered and used the <aimforwarding.com>,
<aimforwards.com>, <icqforwarding.com> and <icqforwards.com>
domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, America
Online, Inc., holds registrations with the United States Patent and Trademark
Office (“USPTO”) for the AIM (Reg. No. 2,423,368 issued January 23, 2001) and
ICQ (Reg. No. 2,411,657 issued December 12, 2000) marks, as well as related
marks. In addition, Complainant holds
numerous registrations worldwide for those marks.
Complainant uses
its AIM and ICQ marks in association with software, computer and
Internet-related communications, goods and services. Complainant has spent substantial sums of money in developing and
marketing its products and services throughout the United States and the world.
Respondent registered
the <aimforwards.com> domain name on March 13, 2002 and the <aimforwarding.com>,
<icqforwarding.com> and <icqforwards.com> domain
names on July 15, 2004. The disputed domain names divert Internet
users to a website at the <imforwards.com> domain name that offers
services similar to those offered by Complainant under its AIM and ICQ
marks. Additionally, the website
displays Complainant’s marks.
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. 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.”).
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
asserts rights in the AIM and ICQ marks due to its registration of the marks
with the USPTO and with other trademark authorities worldwide. It is well-established under the Policy that
a complainant’s registration of a mark with a governmental authority is prima
facie evidence of the complainant’s rights. Thus, Complainant’s registration of its marks creates this
presumption of rights in Complainant’s favor, which shifts the burden of
rebuttal to Respondent. See Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) (“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.”). Without a response from Respondent, there is no challenge to
Complainant’s prima facie case of rights in the marks, and the Panel
finds that Complainant has rights in the marks for the purposes of making a
finding under Policy ¶ 4(a)(i). See
Janus Int’l Holding Co., supra.
The <aimforwarding.com>, <aimforwards.com>, <icqforwarding.com>
and <icqforwards.com> domain names clearly include either
Complainant’s AIM or ICQ mark. In fact, each domain name was formed by
adding either the term “forwards” or “forwarding” to one of Complainant’s
registered marks. Prior panels have
consistently held that adding a generic or descriptive term to a complainant’s
mark will not prevent a domain name from being deemed confusingly similar to
that mark. See 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); 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 discerns no reason to distinguish this case from established
precedent and holds that the disputed domain names are confusingly similar to
Complainant’s AIM and ICQ marks.
The Panel finds that Complainant has satisfied the requirements under
Policy ¶ 4(a)(i).
Under the Policy, the initial burden for proving that Respondent lacks
rights and legitimate interests in the disputed domain names falls on
Complainant. However, if Complainant
can establish a prima facie case as to
Policy ¶ 4(a)(ii), the burden of proof shifts to Respondent to make a showing
of rights or legitimate interests in the disputed domain names, which it may do
in accordance with Policy ¶ 4(c). See G.D.
Searle v. Martin Mktg.,
FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where the complainant
has asserted that the respondent has no rights or legitimate interests with
respect to the domain name it is incumbent on the respondent to come forward
with concrete evidence rebutting this assertion because this information is
“uniquely within the knowledge and control of the respondent”); see
also 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). In this
case, the Panel determines that Complainant has met its burden. Thus, since Respondent has not submitted a
response to Complainant’s contentions, the Panel finds that Respondent has not
established rights or legitimate interests in the disputed domain names. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO
Dec. 4, 2000) (finding that the respondents’ failure to respond can be
construed as an admission that they have no legitimate interest in the domain
names); see also Geocities v.
Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that the respondent
has no rights or legitimate interests in the domain name because the respondent
never submitted a response or provided the panel with evidence to suggest
otherwise).
Complainant
asserts that Respondent is not commonly known by the <aimforwarding.com>,
<aimforwards.com>, <icqforwarding.com> and <icqforwards.com>
domain names and that Respondent is not licensed or entitled to use
Complainant’s AIM or ICQ marks or any version thereof. Without a response from Respondent, the only
evidence of Respondent’s identity is the WHOIS information, which lists
Respondent as “IM Forwards Inc.” Thus,
there is nothing in the record to contest Complainant’s arguments and the Panel
finds that Respondent has not established rights or legitimate interests in the
disputed domain names under Policy ¶ 4(c)(ii).
See Gallup Inc. v. Amish
Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the
respondent does not have rights in a domain name when the respondent is not
known by the mark); see also Compagnie
de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000)
(finding no rights or legitimate interest 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).
Under the
Policy, numerous panels have held that using a domain name that contains
another’s mark to offer products or services that compete with those of the
mark holder is not sufficient to establish rights or legitimate interests in a
disputed domain name under Policy ¶¶ 4(c)(i) and (iii). See Avery Dennison Corp. v. Steele,
FA 133626 (Nat. Arb. Forum Jan 10, 2003) (finding that the respondent had no
rights or legitimate interests in the disputed domain name where it used the
complainant’s mark, without authorization, to attract Internet users to its
business, which competed with the complainant); see also N. Coast Med., Inc. v. Allegro Med., FA
95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no rights or legitimate interests
in a domain name that diverted Internet users to the respondent’s competing
website through the use of the complainant’s mark); see also Am. Online Inc. v. Shenzhen JZT Computer
Software Co., D2000-0809 (WIPO Sept. 6, 2000) (finding that the
respondent’s operation of website offering essentially the same services as the
complainant and displaying the complainant’s mark was insufficient for a
finding of bona fide offering of goods or services). In the instant case, Respondent is using the
<aimforwarding.com>, <aimforwards.com>, <icqforwarding.com>
and <icqforwards.com> domain names to divert Internet users to
Respondent’s website, where Respondent offers services that are virtually
identical to Complainant’s services offered under its AIM and ICQ marks. Furthermore, Respondent displays
Complainant’s marks on the competitive website. Thus, the Panel concludes that Respondent has not established
that it has rights or legitimate interests in the disputed domain names under
either Policy ¶ 4(c)(i) or (iii).
The Panel finds that Complainant has satisfied the requirements under
Policy ¶ 4(a)(ii).
Complainant uses its AIM and ICQ marks in association with providing
information and communications services on the Internet. Respondent is using the <aimforwarding.com>, <aimforwards.com>, <icqforwarding.com>
and <icqforwards.com> domain names to redirect Internet users to
Respondent’s website that offers goods and services that are similar to those
offered by Complainant under its marks.
Due to the apparent competitive relationship between the businesses of
Complainant and Respondent, the Panel finds that Respondent registered the
disputed domain names primarily to disrupt Complainant’s business in violation
of Policy ¶ 4(b)(iii). See Surface Prot. Indus.,
Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the
competitive relationship between the complainant and the respondent, the
respondent likely registered the contested domain name with the intent to
disrupt the complainant's business and create user confusion); see also S. Exposure v.
S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding that
the respondent acted in bad faith by attracting Internet users to a website
that competes with the complainant’s business); see also Lubbock Radio Paging v. Venture
Tele-Messaging, FA 96102 (Nat. Arb. Forum Dec. 23, 2000) (concluding that
domain names were registered and used in bad faith where the respondent and the
complainant were in the same line of business in the same market area).
Under the
Policy, it is evidence of bad faith to use a domain name that contains a
complainant’s mark to attract Internet users to a website that offers goods
similar to those of the complainant.
Respondent is using the <aimforwarding.com>, <aimforwards.com>,
<icqforwarding.com> and <icqforwards.com> domain
names to divert Internet users to Respondent’s website that offers Internet
communication services that compete with services offered by Complainant. Thus, the Panel finds that Respondent’s
attempts to attract Internet users to Respondent’s commercial website by using
Complainant’s marks to create a likelihood of confusion as to Complainant’s
affiliation with Respondent’s website is evidence of bad faith registration and
use pursuant to Policy ¶ 4(b)(iv).
See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb.
Forum June 23, 2003) (finding that the respondent’s use of the
<saflock.com> domain name to offer goods competing with the complainant’s
illustrates the respondent’s bad faith registration and use of the domain name,
evidence of bad faith registration and use pursuant to Policy 4(b)(iv)); see
also Busy Body, Inc. v. Fitness
Outlet, Inc., D2000-0127 WIPO Apr. 22, 2000) (finding bad faith where the
respondent attempted to attract customers to its website,
<efitnesswholesale.com>, and created confusion by offering similar
products for sale as the complainant).
The Panel finds that Complainant has satisfied the requirements under
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 <aimforwarding.com>, <aimforwards.com>,
<icqforwarding.com> and <icqforwards.com> domain
names be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated:
July 12, 2005
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