THE NATIONAL ARBITRATION FORUM
P. O. BOX 50191
MINNEAPOLIS, MINNESOTA 55405 USA
America Online, Inc. ("AOL")
22000 AOL Way
Dulles, Virginia 20166,
Forum File No.: FA0001000092016
The above entitled matter came on for an administrative hearing on February
4, 2000 before the undersigned on the Complaint of America Online, Inc.
("AOL"), hereafter "Complainant", against QTR Corporation,
hereafter "Respondent". Complainant was represented by James
R. Davis. II, 1050 Connecticut Avenue, N. W., Washington, D. C. 20036.
There was no representation on behalf of Respondent. Upon the written
submitted record, the following DECISION is made: PROCEDURAL
FINDINGS Domain Name: icqsms.com Domain Name Registrar: Network Solutions,
Inc. Domain Name Registrant: QTR Corporation Date of Domain Name Registration:
December 3, 1999 Date Complaint Filed: January 11, 2000
Date of Commencement of Administrative Proceeding in Accordance with
Rule 2(a) and Rule 4(c): January 11, 2000 Due date for a Response: February
3, 2000. Respondent did not submit a Response to the Complaint.
After reviewing the Complaint, and determining it to be in administrative
compliance, the National Arbitration Forum (The Forum) forwarded the Complaint
to the Respondent on January 11, 2000 in compliance with Rule 2(a), and
the administrative proceeding was commenced pursuant to Rule 4(c). In compliance
with Rule 4(d), The Forum immediately notified Network Solutions, Inc.(Network
Solutions), the Internet Corporation for Assigned Names and Numbers (ICANN),
and the Complainant that the administrative proceeding had commenced. Respondent
did not submit a response to The Forum within twenty (20) days pursuant
to Rule 5(a). On December 3, 1999, Respondent registered the domain name
"icqsms.com" with Network Solutions, the entity that is the Registrar
of the domain name. On January 11, 2000, Network Solutions verified that
Respondent is the Registrant for the domain name "icqsms.com",
and that further by registering its domain name with Network Solutions,
Respondent agreed to resolve any dispute regarding its domain name through
ICANNs Rules for Uniform Domain Name Dispute Resolution Policy, and
the Uniform Domain Name Dispute Resolution Policy. FINDINGS
- That Complainant is the owner of numerous trademarks, service marks,
and trade names that include the term "ICQ", e.g. ICQ, ICQ
IT!, ICQ SMS (collectively the ICQ Marks). Complainant also uses the
mark ICQ.COM as the domain name for its portal Web site for the ICQ
services. The ICQ Marks are used extensively at this portal Web site,
which is a significant method of promoting the ICQ service.
- That Complainant is the owner of at least 9 trademark registrations
worldwide for the mark ICQ, including registration in Austria, Australia,
Chile, Denmark, Finland, France, Mexico, Norway, and Switzerland.
- That as early as 1996, Complainant and its predecessor-in-interest
adopted and began using many of its ICQ Marks in connection with computer
on-line services and other Internet-related services. Complainant adopted
and began using the Mark ICQ SMS publicly at least as early as November,
1999 in connection with wireless services offered through the ICQ service.
The ICQ Marks have been used continuously and extensively in interstate
and international commerce in connection with the advertising and sale
of Internet-related services.
- That Complainant has invested substantial sums of money in developing
and marketing its service.
- That Respondent registered the domain name "icqsms.com"
in bad faith and has no rights or legitimate interests in respect to
said domain name. The following is evidence of Respondents bad
- That Respondent registered the domain name on December 3, 1999,
shortly after Complainants adoption and first use of the mark
"ICQ SMS" in November 1999, and long after Complainant began
using its other ICQ marks.
- That respondent has made no legitimate use of the domain name "icqsms.com"
and it seeks to profit from its registration of said domain name by
trading upon the goodwill associated with the ICQ Marks. Respondents
profit motive is evidenced by its offer to sell said domain name by
listing in the WHOIS directory "
This domain name is for
." Further that Respondent provided incomplete and/or
false contact information in the WHOIS directory by failing to provide
any street address or street name, and that the facsimile number provided
does not route to a legitimate facsimile number.
- Respondent, or persons affiliated with Respondent, have engaged
in a pattern of registering domain names that infringe upon other
CONCLUSIONS The undersigned certifies that he has
acted independently and has no known conflict of interest to serve as the
Arbitrator in this proceeding. Having been duly selected, and being impartial,
the undersigned makes the following findings and conclusions:
- Complainants prayer for relief requests that the domain name
"icqsms.com" be transferred from Respondent to Complainant.
Based upon the above findings and conclusions, and pursuant to Rule 4(i),
it is decided as follows: THE UNDERSIGNED DIRECTS THAT THE DOMAIN NAME
"icqsms.com" REGISTERED BY RESPONDENT QTR CORPORATION BE TRANSFERRED
TO COMPLAINANT AMERICA ONLINE, INC. (AOL). Dated: February 10, 2000, by
Judge Harold Kalina (Ret.), Arbitrator
- The domain name "icqsms.com", registered by Respondent on
December 3, 1999 with Network Solutions, is identical to Complainants
ICQ Mark, ICQ SMS and is nearly identical and confusingly similar to
the other ICQ marks in which Complainant has rights, including the mark
ICQ, and to which Respondent has no right or legitimate interests.
- Respondent registered and acquired the domain name "icqsms.com"
primarily for the purpose of selling or otherwise transferring the said
domain name registration to the Complainant who is the owner of the
trade mark or service mark, or to a competitor of the Complainant, for
valuable consideration in excess of Respondents out-of-pocket
costs directly related to the domain name. Respondent registered and
used the domain name in bad faith.