Generic Top Level Domain Name (gTLD) Decisions

P. O. BOX 50191

MINNEAPOLIS, MINNESOTA 55405 USA

__________________________________________

America Online, Inc. (“AOL’)
22000 AOL Way
Dulles, Virginia 20166

COMPLAINANT

vs.

Netsbest,
Tyron, North Carolina

RESPONDENT

Forum File No.: FA002000093563

__________________________________________

DECISION

The above entitled matter came on for an administrative hearing on March 29, 2000,

before the undersigned on the complaint of America Online, Inc., (“AOL”), hereafter called “Complainant”, against Netsbest, hereafter called “Respondent”. Complainant was represented by James R. Davis II, 1040 Connecticut Avenue Washington, D. C. 20026-

5339. Respondent was represented by William H. Bode, 1150 Connecticut Avenue, NW,

9^th Floor, Washington D. C. 20036. Upon the written submitted record, the following

DECISION is made:

PROCEDURAL FINDINGS

Domain Name: ICQGUIDE.COM

Domain Name Registration: Netsbest

Date of Domain Registration: April 13, 1998

Date Complaint Filed: February 3, 2000

Date of Commencement of Administrative proceedings in accordance with Rule 2(a) &

Rule 4 ©: February 4, 2000

Due Date for a Response: February 28, 2000

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 February 4, 2000, in compliance with Rule 2 (a) and the administrative proceeding was commenced pursuant to rule 4 ©. In compliance with Rule 4 (d), the Forum immediately notified Network Solution, Inc., the Internet Corporation for Assigned Names and Numbers (ICANN), and the Complainant that the administrative proceedings had commenced. Respondent submitted responses to the Complaint.

On April 13, 1998, Respondent registered the domain name “ICQGUIDE.COM”, with Network Solutions, the entity that is the Registrar of the domain name. On February 8, 2000, Network Solutions verified that Responded is the Registrant for the domain name

“ICQGUIDE.COM”, and that further, by registering its domain name with Network Solutions, Respondent agreed to resolve any dispute regarding its domain name through ICANN’s Rules for Uniform Domain Name Dispute Resolution Policy, and the Uniform Domain Name Resolution Policy.

FINDING OF FACT

1. That Complainant is the owner of numerous trademarks, service marks, and trade

names that include the term "ICQ’, e.g. ICQ IT! ICQ SMS (collectively the ICQ

Marks). Complainant also uses the mark ICQ.COM as the domain name for its

portal Web site, which is a significant method of promoting the ICQ service.

2. 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.

3. 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. 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.

4. That Complainant has invested substantial sums of money in developing and

marketing its service.

5. That Respondent registered the domain name “ICQGUIDE.COM”, in bad faith and has no rights to said domain name. The following is evidence of Respondent’s bad faith:

a. That Respondent registered the domain name on April 13, 1998, long after

Complainant began using its other ICQ marks.

b. That Respondent has made no legitimate use of the domain name

“ICQGUIDE. COM”, and it seeks to profit from its registration of said domain

name to Complainant for $99,000.00, by letter.

6. Complainant’s prayer for relief requests that the domain name “ICQGUIDE.COM”, be

be transferred from Respondent to Complainant.

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:

1. The domain name “ICQGUIDE.COM”, registered by Respondent on April 13, 1999,

with Network Solutions, is nearly identical and confusingly similar to other ICQ marks in which Complainant has rights, including the mark ICQ, and to which Respondent has no right or legitimate interests.

2. Respondent registered and acquired the domain name “ICQGUIDE.COM”, for the

purpose of selling or otherwise transferring the said domain name registration to the

Complainant, or to a competitor of the Complainant, for valuable consideration in

excess of Respondent’s out-of-pocket costs directly related to the domain name.

Respondent registered and used the domain name in bad faith.

DECISION

Based upon the above findings and conclusions, an pursuant to Rule 4 (I), it is

decided as follows:

THE UNDERSIGNED DIRECTS THAT THE DOMAIN NAME

“ICQGUIDE.COM”, REGISTERED BY RESPONDENT NETSBEST BE

TRANSFERRED TO COMPLAINANT, AMERICA ONLINE, INC. (AOL).

Dated: March 29, 2000, by Judge Henry W. Blizzard (Ret.), Arbitrator

Henry W. Blizzard