AOL LLC v. Robert Farris d/b/a Virtual Clicks
Claim Number: FA0605000721968
Complainant is AOL LLC (“Complainant”), represented by James R. Davis, of Arent Fox PLLC, 1050 Connecticut Avenue, NW, Washington, DC 20036. Respondent is Robert Farris d/b/a Virtual Clicks (“Respondent”), PO Box 232471, San Diego, CA 92023.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <icqplus.org>, registered with eNom.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 31, 2006; the National Arbitration Forum received a hard copy of the Complaint on June 1, 2006.
On May 31, 2006, eNom confirmed by e-mail to the National Arbitration Forum that the <icqplus.org> domain name is registered with eNom and that Respondent is the current registrant of the name. eNom has verified that Respondent is bound by the eNom 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 1, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 21, 2006 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@icqplus.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 29, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 <icqplus.org> domain name is confusingly similar to Complainant’s ICQ mark.
2. Respondent does not have any rights or legitimate interests in the <icqplus.org> domain name.
3. Respondent registered and used the <icqplus.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, AOL LLC, owns a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the ICQ mark (Reg. No. 2,411,657 issued December 12, 2000). Complainant uses the ICQ mark in connection with a variety of telecommunications goods and services, including online directories of businesses and people, providing personal advice in the fields of romance and health, distributing general interest news, the electronic transmission of data, images and documents via computer, electronic mail services and other personal communication services. Complainant uses its ICQ mark in connection with multiple domain names, including <icq.com> and <icqmail.com>, which resolve to websites featuring Complainant’s goods and services.
Respondent registered the <icqplus.org> domain name on April 24, 2005. Respondent is using the disputed domain name in connection with a website featuring advertisements for, and links to, third-party websites offering goods and services in direct competition 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.
Procedural Issue
There are potential res judicata issues regarding this dispute. Complainant, AOL LLC, filed a previous UDRP dispute involving the disputed <icqplus.org> domain name, American Online, Inc. v. Eremeev, D2001-0003 (WIPO Feb. 15, 2001). In the original dispute, which involved a different respondent, Vadim Eremeev, the panel found for the respondent. While the panel found that the <icqplus.org> domain name was confusingly similar to the ICQ mark, the panel determined that the prior respondent was not making a commercial use of the disputed domain name and thus denied the complaint’s claim. In the current dispute, involving a different named Respondent, Respondent has failed to submit a response.
The UDRP Policy and Rules, are silent on the preclusive effects of a prior decision. However, Rule 15(a) directs the panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” This statement has been cited as the authority for determining the disposition of a subsequent complaint. See Grove Broad. Co. Ltd. V. Telesystems Commc’ns Ltd., D2000-0703 (WIPO Nov. 10, 2000); see also Creo Prods. Inc. v. Website In Dev., D2000-1490 (WIPO Jan. 19, 2001); see also MPC Trust v. Collicott, FA 98948 (Nat. Arb. Forum Dec. 9, 2003).
Subsequent complaints can include a “Refiled Complaint,” defined by the panel in Creo as “a subsequent complaint (whether or not precisely the same in substance) in relation to the same domain name, that is filed by the same complaint against the same respondent to a previous complaint.” Creo Prods. Inc. v. Website In Dev., D2000-1490 (WIPO Jan. 19, 2001). However, the dispute at hand is not, by definition, a Refiled Complaint. While Complainant was also the complainant in the previous dispute, and while the <icqplus.org> disputed domain name is also the same, Respondent in this case is different from the respondent in the previous case. In MPC Trust v. Collicott, FA 98948 (Nat. Arb. Forum Dec. 9, 2003), the panel found that the complainant failed to meet its burden because the respondent in the original case and the subsequently filed case, while different, were sufficiently connected to create a bar to the complainant’s renewed complaint.
The panel in Grove outlined the basic approach to res judicata in UDRP cases involving Refiled Complaints:
One must resort to the broad principle found in most common law jurisdictions that, once a party has been given a defended hearing in a Court and a decision rendered, then a case cannot be relitigated unless either (a) the decision is overturned on appeal and (b) limited grounds for rehearing or reconsideration by the first-instance court have been established. Such limited grounds are usually specified in Rules of Court and can include, for example: (a) serious misconduct on the part of a Judge, juror, witness or lawyer; (b) perjured evidence having been offered to the Court; (c) the discovery of credible and material evidence which could not have been reasonably forseen or known at trial and (d) a breach of natural justice. Grove Broad. Co. Ltd. v. Telesystems Commc’ns Ltd., D2000-0703 (WIPO Nov. 10, 2000).
However, subsequent to Grove the panel in Creo narrowed the circumstances in which a full res judicata analysis was warranted. The Creo panel stated that “a distinction should be drawn between (i) Refiled Complaints that concern the act which formed the basis of the original complaint, and (ii) Refiled Complaints that concern acts which have occurred subsequent to the decision on the original complaint.” Creo Prods. Inc. v. Website in Dev., D2000-1490 (WIPO Jan. 19, 2001). The Creo panel noted that for cases of the first type the Grove standard, which creates a high burden for the complainant and allows the acceptance of a Refiled Complaint only in exceptional circumstance, is appropriate. However, the Creo panel used a different approach to the second type of Refiled Complaint, those concerning acts occurring subsequent to the outcome of the original complaint:
With a Refiled Complaint of this type, the concept of res judicata does not arise. Because the subsequent complaint concerns acts which occurred after the original decision, it is not an action upon which an adjudication has already taken place; the subsequent complaint is truly a new action under the Uniform Policy. It follows that, subject to one exception, the merits of a Refiled Complaint of this type should be determined in the same manner as any new complaint under the Uniform Policy. The exception is that the acts on which the Refiled Complaint is based should not be, in substance, the same as the acts on which the previous complaint was based . . . . Creo Prods. Inc. v. Website in Dev., D2000-1490 (WIPO Jan. 19, 2001).
The refined standard from Creo has been consistently
applied to determine the viability of Refiled Complaints. See MPC Trust v. Collicott, FA 98948
(Nat. Arb. Forum Dec. 9, 2003); see also AB Svenska Spel v. Zacharov,
D2003-0527 (WIPO Oct. 2, 2003); see also Express Services, Inc. v. Hall,
FA57309 (Nat. Arb. Forum July 7, 2003).
Applying the Creo approach to the current Complaint, it appears that this is a complaint of the second type, involving acts that occurred after the original decision. First, Respondent in this case is different from the respondent in the original complaint. Second, while the panel in the original dispute found that the previous respondent was not making a commercial use of the disputed domain name, it now seems clear that such a commercial use is being made since the <icqplus.org> disputed domain name resolves to a website featuring links to third-party websites in competition with Complainant, and Respondent presumably receives pay-per-click fees from those websites. These differences are sufficient to address the subsequent Complaint as a new complaint under the UDRP. See AB Svenska Spel v. Zacharov, D2003-0527 (WIPO Oct. 2, 2003) (holding that since the subsequent complaint was based upon a number of acts occurring after the original decision, including a change of respondent, the subsequent complaint is admissible and shall be seen as a new action); see also Camper, S.L. v. Kasten, D2005-0056 (WIPO March 3, 2005) (accepting the refiled case because it was “based mainly on new evidence relating to an issue which was not contended for by the Complainant last time around.”).
Complainant has established rights in its ICQ mark through registration of the mark with the USPTO. The Panel finds that such registration is sufficient to establish Complainant’s rights in its mark pursuant to Policy ¶ 4(a)(i). See 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.”); 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 [or] have acquired secondary meaning.”).
Respondent’s <icqplus.org> domain name is confusingly similar to Complainant’s ICQ mark. Respondent’s domain name incorporates Complainant’s mark in its entirety, adding only the term “plus” and the top-level domain “.org.” The Panel finds that such minor additions are not sufficient to overcome the confusing similarity between the disputed domain name and Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks.”); 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 contains the identical mark of the complainant combined with a generic word or term); see also 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).
The Panel finds that Policy ¶4(a)(i) has been satisfied.
Complainant has asserted that Respondent lacks rights or legitimate interests in the <icqplus.org> domain name. Complainant’s assertion is sufficient to create a prima facie case and shifts the burden to Respondent to demonstrate that it has rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel may view Respondent’s failure to respond as evidence that Respondent lacks rights or legitimate interests in the disputed domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). The Panel will evaluate the available evidence to ascertain whether or not Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c).
Respondent is using the <icqplus.org> domain
name, which is confusingly similar to Complainant’s ICQ mark, to redirect
Internet users to Respondent’s website, which features advertisements for, and
links to, third-party websites offering goods and services in competition with
Complainant. Presumably, Respondent
receives pay-per-click referral fees from these third-party websites. The Panel finds that such use does not
constitute 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 24 Hour Fitness USA,
Inc. v. 24HourNames.com-Quality Domains For Sale, FA 187429 (Nat. Arb.
Forum Sep. 26, 2003) (holding that Respondent’s use of the
<24hrsfitness.com>, <24-hourfitness.com> and
<24hoursfitness.com> domain names to redirect Internet users to a website
featuring advertisements and links to Complainant’s competitors could not be
considered a bona fide offering of goods or services or a legitimate
noncommercial or fair use); see also WeddingChannel.com Inc. v. Vasiliev,
FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users
to websites unrelated to the complainant’s mark, websites where the respondent
presumably receives a referral fee for each misdirected Internet user, was not
a bona fide offering of goods or services as contemplated by the
Policy).
Further, there is no available evidence to indicate that Respondent is commonly known by the <icqplus.org> domain name. Complainant asserts that Respondent is not licensed by, or affiliated with, Complainant in any way that would justify Respondent’s use of Complainant’s mark. Respondent’s WHOIS information identifies Respondent as “Robert Farris,” which appears to be unrelated to the <icqplus.org> domain name. Thus, in the absence of additional evidence to substantiate that Respondent is commonly known by the disputed domain name, the Panel finds that Respondent has failed to demonstrate rights or legitimate interests 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 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); see also 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).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <icqplus.org> domain name to redirect Internet users to its website featuring advertisements for, and links to, third-party websites offering goods and services in competition with Complainant. The Panel finds that such use constitutes disruption of Complainant’s business, and is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See EBAY, Inc. v. MEOdesigns, D2000-1368 (Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites); see also EthnicGrocer.com, Inc. v. Latingrocer.com, FA 94384 (Nat. Arb. Forum July 7, 2000) (finding bad faith where the respondent’s sites pass users through to the respondent’s competing business).
Respondent’s <icqplus.org> domain name is
confusingly similar to Complainant’s ICQ mark, potentially confusing Internet
users looking for Complainant.
Respondent is using the disputed domain name to redirect Internet users
to its website featuring links to third-party websites in competition with
Complainant. Respondent is presumably
receiving pay-per-click referral fees from the links to third-party
websites. Because of the confusing
similarity between Respondent’s <icqplus.org> domain name and
Complainant’s ICQ mark Internet users finding themselves at Respondent’s
website may believe, incorrectly, that Respondent is sponsored by, or affiliated
with, Complainant. Thus, Respondent is
benefiting from the confusion created by the confusing similarity between
Respondent’s domain name and Complainant’s mark, which the Panel finds to be
evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Associated
Newspapers Ltd. v. Domain Manager, FA
201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the
<mailonsunday.com> domain name is evidence of bad faith pursuant to
Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's
competitors and Respondent presumably commercially benefited from the
misleading domain name by receiving ‘click-through-fees.’”); see also AltaVista Co. v. Krotov, D2000-1091
(WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the
respondent’s domain name resolved to a website that offered links to
third-party websites that offered services similar to the complainant’s
services and merely took advantage of Internet user mistakes).
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 <icqplus.org> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: July 7, 2006
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