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America Online, Inc.
COMPLAINANTS, VS. 0ICQ.com Limited
RESPONDENT. DOMAIN NAME DISPUTE DECISION ___________________________________________
The above entitled matter came on for an administrative hearing on May 11, 2000 before the undersigned on the Complaint of the above named Complainant, against 0ICQ.com Limited, hereafter "Respondent". Complainant is represented by James R. Davis II, Arent Fox Kintner Plotkin & Kahn, 1050 Connecticut Avenue, NW, 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: 0icq.com and 0icq.net Domain Name Registrar: Network Solutions, Inc. Domain Name Registrant: 0ICQ.com Limited Date of Domain Name Registration: February 10, 2000 Date Complaint Filed: April 7, 2000 Due Date for a Response: April 27, 2000 Date of Commencement of Administrative Proceeding in Accordance with Rule 2(a)l and Rule 4(c): April 7, 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 April 7, 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 the above Registrar, 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. On February 10, 2000, Respondent registered the domain names "0icq.com" and "0icq.net" with Network Solutions, the entity that is the Registrar of the domain names. By registering its domain names with Network Solutions, Respondent agreed to resolve any dispute regarding its domain names through ICANN's Rules for Uniform Domain Name Dispute Resolution Policy, and the Uniform Domain Name Dispute Resolution Policy. 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: FINDINGS OF FACT 1. AOL is the owner of at least 9 trademark registrations worldwide for the mark ICQ, including registrations in Austria, Australia, Chile, Denmark, Finland, France, Mexico, Norway and Switzerland. In addition, AOL and its affiliate ICQ, Inc. have pending trademark applications in at least fifty other countries, including federal trademark application Ser. No. 75-381-414 in the United States. 2. Long prior to Respondent's registration of "0icq.net" and "0icq.com", and at least as early as 1996, AOL and its predecessor-in-interest adopted and began using many of its ICQ Marks in connection with computer online services and other Internet related services. The distinctive ICQ Marks have been used continuously and extensively in interstate and international commerce in connection with the advertising and sale of Internet-related services. 3. Because of substantial advertising expenditures and sales, the distinctive ICQ Marks have become well-known and famous among members of the purchasing public. 4. On February 7, 2000 Complainant filed a previous complaint with the National Arbitration Forum regarding domain names "oicq.com" and "oicq.net". After an arbitration proceeding the arbitrator determined that those domain names should be transferred to the Complainant. 5. On February 10, 2000, Respondent or an entity closely related to Respondent and using an identical mailing address and contact information, registered two nearly identical domain names, namely "0icq.com" and "0icq.net", wherein a zero was substituted for the "O" in "oicq". 6. The domain names in the previous proceeding were registered by an entity closely affiliated or identical to the Respondent in this matter. The identical mailing address, administrative contact, e-mail address and telephone number were used by the Respondent in the other proceeding and in this proceeding. 7. The domain names "0icq.net" and "0icq.com" are nearly identical and confusingly similar to the ICQ Marks, including the mark ICQ. 8. No evidence has been presented that Respondent has any right or legitimate interest to the domain names as provided in Rule 4(c). 9. Complainants prayer for relief requests that the domain names be transferred to America Online, Inc.
CONCLUSIONS
To obtain relief under paragraph 4(a)of the Policy, the Complainant must prove each of the following: 1. The domain names registered by the Respondent are identical or confusingly similar to a trademark or service mark in which the Complainant have rights; and
2. The Respondent has no right or legitimate interest in the domain names; and
3. The domain names have been registered and used in bad faith.
Similarity Between Registrant's Domain Names and Complainant's Trade Mark.
The addition of the number "0" is not significant in determining similarity. The domain names registered by Respondent are confusingly similar to or identical to the registered trade mark owned by Complainant. Respondent's Rights or Legitimate Interest in the Domain Name.
Under paragraph 4(c) of the Policy, evidence of a registrant's rights or legitimate interest in the domain names includes: 1. Demonstrable preparations to use the domain names in connection with a bona fide offering of goods or services prior to the dispute; 2. An indication that the registrant has been commonly known by the domain names even if it has acquired no trademark rights; or 3. Legitimate noncommercial or fair use of the domain names without intent to divert consumers or to tarnish the trademark. Respondent has made no showing with respect to any of the above factors. The Respondent has no rights or legitimate interest in the domain names. Respondent's Bad Faith Registration and Use of the Domain Names. Under paragraph 4(b) of the Policy, evidence of Respondent's bad faith registration and use includes: 1. Circumstances indicating the domain names were registered for the purpose of resale to the trademark owner or competitor for profit; 2. A pattern of conduct showing an attempt to prevent others from obtaining a domain names corresponding to their trademarks; 3. Registration of the domain names for the purpose of disrupting the business of a competitor; or 4. Using the domain names to attract, for commercial gain, Internet users to Respondent's web site or other on-line location by creating a likelihood of confusion with the trademark owner's mark.
The Respondent registered and used the domain names in bad faith as evidenced by circumstances indicating that Respondent registered and acquired the domain names for the purpose of disrupting the business of a competitor and to attract for commercial gain Internet users to Respondent's web site by creating a likelihood of confusion with the trademark owner's mark. Respondents registration of these names a few days after the Complaint was filed in the previous case is evidence of this purpose. Under ICANN's Uniform Domain Name Dispute Resolution Policy Complainant has proven that the domain names should be transferred to Complainant.
DECISION Based upon the above findings and conclusions, and pursuant to Rule 4(i), it is decided as follows: THE UNDERSIGNED DIRECTS THAT THE DOMAIN NAMES "0icq.com" and "0icq net" REGISTERED BY RESPONDENT BE TRANSFERRED TO COMPLAINANT, AMERICA ONLINE, INC.
Dated: May 11, 2000 Judge Karl Fink Retired Judge
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