America Online, Inc. v. Jason Lin
Claim
Number: FA0506000505556
Complainant is America Online, Inc. (“Complainant”), represented
by James R. Davis of Arent Fox PLLC, 1050
Connecticut Avenue, NW, Washington, DC 20036.
Respondent is Jason Lin (“Respondent”),
TYS Nassau Street, Mei Foo Sun Cheun, HK, HK.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <go2icq.com>, <icutogo.com>
and < icu2go.com>, registered with Dotster.
The
undersigned certifies that she has acted independently and impartially and to
the best of her knowledge has no known conflict in serving as Panelist in this
proceeding.
Sandra
Franklin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on June
27, 2005; the National Arbitration Forum received a hard copy of the Complaint
on June 30, 2005.
On
June 28, 2005, Dotster confirmed by e-mail to the National Arbitration Forum
that the domain names <go2icq.com>, <icutogo.com> and
<icu2go.com> are registered with Dotster and that Respondent is
the current registrant of the names. Dotster
has verified that Respondent is bound by the Dotster 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
June 30, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
July 20, 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@go2icq.com, postmaster@icutogo.com and
postmaster@icu2go.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
July 27, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed Sandra Franklin
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 <go2icq.com>, <icutogo.com>
and <icu2go.com> domain names are confusingly similar to
Complainant’s ICQ mark.
2. Respondent does not have any rights or
legitimate interests in the <go2icq.com>, <icutogo.com> and
<icu2go.com> domain names.
3. Respondent registered and used the <go2icq.com>,
<icutogo.com> and <icu2go.com> domain names in bad
faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, America Online, Inc., along with its
subsidiary ICQ, Inc., owns numerous trademark registrations worldwide for the
ICQ mark, including registrations with the United States Patent and Trademark
Office (“USPTO”) (Reg. No. 2,411,657 issued December 12, 2000). Complainant began using its ICQ mark at
least as early as 1996 in association with online communications services,
including e-mail and messaging services.
Complainant has invested substantial sums of money to develop and market
its services. Complainant has advertised
its ICQ products and services via network and cable television, radio, and in
print media such as newspapers and periodicals. Complainant’s ICQ service has been downloaded approximately
200,000,000 times around the world, which makes it one of the largest online
communities in the world.
Respondent registered the <go2icq.com> domain name on June 1, 2002 and the <icutogo.com>
and <icu2go.com> domain names on November 25, 2002. The disputed domain names resolve to a
website that prominently displays Complainant’s ICQ mark and offers e-mail
services in direct competition with Complainant’s ICQ products and
services. Additionally, the website
links Internet users to a commercial website that includes advertisements for
numerous third party services, some of which compete directly with
Complainant.
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 ICQ mark based on its to its registration of the mark
with the USPTO and other trademark authorities worldwide. It is well-established under the Policy that
a complainant’s registration of a mark with a federal authority establishes a prima
facie case of the complainant’s rights, which the respondent may
rebut. 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 Innomed Techs.,
Inc. v. DRP Servs., FA 221171 (Nat. Arb.
Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO
establishes Complainant's rights in the mark.”). Without a response from Respondent, there is no challenge to
Complainant’s prima facie case of rights in the mark. The Panel, therefore, determines that
Complainant has rights in the ICQ mark for the purposes of Policy ¶
4(a)(i). See U.S. Office of
Pers. Mgmt. v. MS Tech. Inc., FA 198898 (Nat. Arb. Forum Dec. 9, 2003)
(“[O]nce the USPTO has made a determination that a mark is registrable, by so
issuing a registration, as indeed was the case here, an ICANN panel is not
empowered to nor should it disturb that determination.”).
The <go2icq.com> domain name includes Complainant’s ICQ
mark in addition to the generic phrase “go2.”
The <icutogo.com> and <icu2go.com> domain
names replace the “q” in Complainant’s ICQ mark with the letter “u” and add the
generic or descriptive terms or phrases “togo” and “2go,” respectively. The Panel finds that these differences are
minor and, therefore, insufficient to distinguish the domain names from
Complainant’s registered mark, especially where Respondent has failed to
provide a response to contest Complainant’s contentions. Therefore, the domain names are confusingly
similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Am. Online,
Inc. v. iDomainNames.com, FA 93766 (Nat. Arb. Forum Mar. 24, 2000) (finding
that the respondent’s domain name <go2AOL.com> was confusingly similar to
the complainant’s AOL mark); see also Am. Online, Inc. v. Fu,
D2000-1374 (WIPO Dec. 11, 2000) (finding that adding the suffixes
"502" and "520" to the ICQ trademark does little to reduce
the potential for confusion); see also Am. Online, Inc. v. Deep, FA
96795 (Nat. Arb. Forum May 14, 2001) (finding the <ic2ster.com> domain
name confusingly similar to Complainant’s ICQ mark); see also Belkin
Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the
<belken.com> domain name confusingly similar to the complainant's BELKIN
mark because the name merely replaced the letter “i” in the complainant's mark
with the letter “e”).
Accordingly, the
Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
It has been
established under the Policy that the complainant has the initial burden of
proving that the respondent lacks rights and legitimate interests in the
disputed domain names. In Compagnie
Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May
14, 2001), the panel held:
Proving
that the Respondent has no rights or legitimate interests in respect of the
Domain Name requires the Complainant to prove a negative. For the purposes of
this sub paragraph, however, it is sufficient for the Complainant to show a
prima facie case and the burden of proof is then shifted on to the shoulders of
Respondent. In those circumstances, the
common approach is for respondents to seek to bring themselves within one of
the examples of paragraph 4(c) or put forward some other reason why they can
fairly be said to have a relevant right or legitimate interests in respect of
the domain name in question.
Id.; see
also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21,
2000) (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”). Having
found that Complainant has met its initial burden by establishing a prima
facie case, the Panel will now analyze whether Respondent has met its
burden to establish rights or legitimate interests in the disputed domain names
under Policy ¶ 4(c).
Complainant
asserts that Respondent is not licensed to use Complainant’s ICQ mark or any of
its ICQ family of marks. The WHOIS
information for the dispute domain names identifies Respondent as “Jason Lin”
and indicates no affiliation with either the <go2icq.com>, <icutogo.com>
or <icu2go.com> domain name apart from Respondent’s
registration of the domain names.
Furthermore, due to Respondent’s failure to respond, the Panel has not
been provided with any evidence to suggest that Respondent is commonly known by
the disputed domain names. Thus, the
Panel finds that Respondent has not established rights or legitimate interests
in the disputed domain names under Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v.
Paik, FA 206396 (Nat. Arb. Forum Dec. 22,
2003) (“Respondent has registered the domain name under the name ‘Ilyoup
Paik a/k/a David Sanders.’ Given the
WHOIS domain name registration information, Respondent is not commonly known by
the [<awvacations.com>] domain name.”); see also 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).
Respondent is
using the <go2icq.com>, <icutogo.com> and <icu2go.com>
domain names to resolve to a website that prominently displays Complainant’s
ICQ mark and offers products and services in competition with the products and
services Complainant offers under its ICQ mark. In addition, the website includes links to a commercial website
that advertises third-party services, including services that compete with
Complainant. Respondent’s use of domain
names that include Complainant’s ICQ mark to attract Internet users to a
website that both offers and links to competing services is not a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See DLJ
Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is
not using the disputed domain name in connection with a bona fide offering of
goods and services because Respondent is using the domain name to divert Internet
users to <visual.com>, where services that compete with Complainant are
advertised.”); see also Coryn Group, Inc. v. Media Insight, FA
198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not
using the domain names for a bona fide offering of goods or services nor
a legitimate noncommercial or fair use because the respondent used the names to
divert Internet users to a website that offered services that competed with
those offered by the complainant under its marks). Furthermore, in failing to submit a response to Complainant’s
allegations, Respondent has neglected to provide any evidence that would
challenge Complainant’s prima facie case. Thus, the Panel finds that Respondent has not established rights
or legitimate interests in the disputed domain names under Policy ¶ 4(c). See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June
20, 2000) (“By not submitting a response, Respondent has failed to invoke any
circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any
rights or legitimate interests in the domain name”); 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).
Thus, the Panel
finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant uses
its ICQ mark to offer numerous computer-related communications services,
including e-mail and messaging services.
Respondent is using the <go2icq.com>, <icutogo.com>
and <icu2go.com> domain names to operate a website that offers
e-mail services and links to advertisements for companies that compete with
Complainant. These circumstances
indicate that Respondent competes with Complainant and registered domain names
that include Complainant’s mark to disrupt Complainant’s business. This is evidence of bad faith registration
and use pursuant to Policy ¶ 4(b)(iii). See Lambros v. Brown, FA 198963 (Nat. Arb. Forum Nov. 19, 2003) (finding that
the respondent registered a domain name primarily to disrupt its competitor
when it sold similar goods as those offered by the complainant and “even
included Complainant's personal name on the website, leaving Internet users
with the assumption that it was Complainant's business they were doing business
with”); see also Disney Enters., Inc. v. Noel, FA 198805 (Nat.
Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly
similar to Complainant's mark to divert Internet users to a competitor's
website. It is a reasonable inference that Respondent's purpose of registration
and use was to either disrupt or create confusion for Complainant's business in
bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”)
Furthermore, the
<go2icq.com>, <icutogo.com> and <icu2go.com>
domain names attract Internet users searching for Complainant’s ICQ products
and services to Respondent’s website, where competing products and services are
advertised. By using Complainant’s mark
in the domain names to create a likelihood of confusion, Respondent is
attempting to attract Internet users who are searching for Complainant’s
products and services to Respondent’s website for commercial benefit. Respondent’s activities are evidence of bad
faith registration and use under Policy ¶ 4(b)(iv). See Am. Online, Inc.
v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that the respondent
violated Policy ¶ 4(b)(iv) by displaying the complainant’s mark on its website
and offering identical services as those offered by the complainant); see
also Identigene, Inc. v. Genetest
Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the
respondent's use of the domain name at issue to resolve to a website where
similar services are offered to Internet users is likely to confuse the user
into believing that the complainant is the source of or is sponsoring the
services offered at the site); see also MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17,
2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent
registered a domain name confusingly similar to the complainant’s mark and the
domain name was used to host a commercial website that offered similar services
offered by the complainant under its mark).
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 <go2icq.com>, <icutogo.com> and <icu2go.com>
domain names be TRANSFERRED from Respondent to Complainant.
Sandra Franklin, Panelist
Dated:
August 3, 2005
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