Generic Top Level Domain Name (gTLD) Decisions

THE NATIONAL ARBITRATION FORUM

PO BOX 50191

MINNEAPOLIS, MINNESOTA 5405 USA

America Online, Inc.
22,000 aol Way
Dulles, VA 20116
AMENDED

COMPLAINANT

vs.

Tencent Communications Corp.
Room 404, Building 5
#25 JiaBin Road
Shenzhen, GD 518001
Peoples Republic of China

RESPONDENT

DECISION
FILE NO.: FA0002000093668

The above entitled matter came on for an administrative hearing on March 21, 2000 before the undersigned arbitrator on the Complaint of Americal Online, Inc. ("AOL" or "Complainant"), represented by James R. Davis, Arent Fox Kintner Plotkin & Kahn, PLLC, 1050 Connecticut Ave., NW, Washington, DC 20036, against Tencent Communications Corp. ("Tencent" or "Respondent"), represented by Stephen C. Warneck, Foley Hoag & Elliot, LLP, One Post Office Square, Boston, MA 02109. Upon the written submitted record including the Complaint, the Response to Complaint, the Complainant’s Rebuttal to Respondent’s Reply to Complaint and the Response of Respondent to the Rebuttal, the following AMENDED DECISION is rendered (superseding the original Decision of March 17, 2000):

PROCEDURAL FINDINGS

Domain Name: oicq.com; oicq.net;

Domain Name Registrar: Network Solutions

Domain Name Registrant: Tencent Communications Corporation

Date of Domain Name Registration: January 26, 1999; November 7, 1998

Date Complaint Filed: February 7, 2000

Date Response to Complaint Filed: March 3, 2000

After reviewing the complaint, and determining it to be in administrative compliance, the National Arbitration Forum ("Forum") forwarded the Complaint to the Respondent on February 9, 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 that the administrative proceeding had commenced. The Complaint, the Response, Complainant’s Rebuttal to Respondent’s Reply to Complaint and the Response of Respondent to the Rebuttal were docketed and forwarded to the undersigned arbitrator for decision.

FINDINGS OF FACT

1. Neither the complainant nor the respondent contests the jurisdiction of the Forum or the undersigned arbitrator to resolve this controversy.
2. AOL is the owner of at least nine trademark registrations, in various countries, for the mark "ICQ" and has many other pending registrations pursuant to an aggressive policy of protecting the mark worldwide. There are variations of the mark claimed by AOL, all containing the letters ICQ in sequence. The first claimed use of "ICQ" was in November of 1996 by an Israeli company named Mirabilis LTD., which was later acquired by AOL. AOL claims many millions of dollars spent over the last several years in the promotion of public awareness and association of ICQ with the Mirabilis/AOL Internet mail and instant messenger systems. AOL claims that the ICQ mark is "famous" within the scope of trademark law.
3. Tencent does not dispute the foregoing and admits that it registered the domain names "oicq.net" on November 7, 1998 and "oicq.com" on January 26, 1999. These sites are "portals" through which transfer is made to the tencent.com site. Essentially all website content is in Chinese and once drawn in through oicq.net or oicq.com, the visitor is advised that Tencent is the provider of the service. Although Tencent claims no extant registrations of any variation of "oicq" as a service or trademark, application for registration is claimed in the Peoples Republic of China, apparently some time in 1999, judging from Exhibit 1 of Tencent’s Response.
4. Tencent points out that it has two and one half million users in China and is signing up more users every day. Also noted, and not denied in the Rebuttal of AOL to the Response, is that AOL has not registered either "oicq" or "icq" in the U.S. or in the Peoples Republic of China. Further, Tencent emphasizes the separateness of the Chinese language market and the fact that AOL has only recently introduced ICQ in Chinese.
5. Counsel for Tencent makes the argument that AOL has the burden, pursuant to paragraph 4(a)(iii) [sic] of the Policy, to prove that Tencent "has no rights or legitimate interests in respect of the domain name." Case authority is cited by Tencent for the propositions that some overlap in usage of the marks at issue is permissible when different markets are served, there is no proof of actual confusion proffered and that reference to a "rival’s mark" is permissible, nay desirable, in some cases.
6. AOL points out, in its Rebuttal to the Response that, since the filing date of this administrative proceeding, Tencent has been registering new domains containing the mark, "ICQ" using a zero figure "0" instead of an "o," resulting in "0icq.com" instead of "oicq.com." This, AOL says, is a clear example of continuing bad faith on the part of Tencent. Tencent responds that the zero domain names are merely "visual cognates of its legitimate domain names" and claims further that AOL acted improperly by registering "oicq.org" just before filing to initiate this proceeding. Presumably, this "chicken or egg" debate could continue indefinitely.
7. The undersigned wishes to note the very high quality and creativity of the pleading and briefing by both sides in this proceeding. Such work makes the decision more difficult but serves to direct one’s focus on the realities of the Internet and the specific undertakings of the parties embraced in the Rules and the Policy pursuant to which we are all proceeding.
8. Accordingly, I find as matters of fact that:

1. the mark "oicq" in various .net or .org domain names are confusingly similar to the "ICQ" trademark or service mark in which AOL has at least common law protectable rights;
2. any rights or interest which Tencent has in use of any form of "icq" in a domain name is not legitimate, e.g., the admitted use of oicq.net and oicq.com as a portal to suck surfers into a site sponsored by Tencent seems hardly legitimate;
3. the domain names oicq.net and oicq.com have been registered in bad faith by Tencent in order to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with AOL’s ICQ mark as to the source, sponsorship, affiliation, or endorsement of Tencent’s various domains and sites.

CONCLUSION

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 ubiquitous nature of the Internet does not lend itself to the argument that domain names and confusingly similar marks may co-exist in different language or nation markets, and the dated case authority cited for this proposition will no doubt be revised when the courts begin to consider the implications of "cyberspace."
2. Further, it is important to note that this proceeding is based upon the Rules and the Policy previously defined to which the parties agreed to submit themselves in the event of a domain name dispute. I am bound to apply them based upon the facts determined and not any notion of equity or interpretations of trademark law treating a very different environment.
3. AOL’s request in its Rebuttal to the Response to include the domains "0icq.net" and "0icq.com" in this administrative proceeding is denied as being beyond the scope of relief sought in the Complaint.
4. Based on the forgoing, I find that Tencent has registered its marks in issue in bad faith in violation of paragraph 4. (a and b) of the Policy and that AOL is hereby granted the relief below.

AMENDED DECISION

Based upon the above findings and conclusions, and pursuant to Rule 4(i) of the ICANN’s Rules for Uniform Domain Name Dispute Resolution Policy and the National Arbitration Forum’s Supplemental Rules to ICANN’s Uniform Domain Resolution Policy, it is decided as follows:

THE UNDERSIGNED DIRECTS THAT THE DOMAIN NAMES "OICQ.NET" and "OICQ.COM," REGISTERED BY RESPONDENT TENCENT COMMUNICATIONS CORPORATION, BE TRANSFERRED TO COMPLAINANT AMERICA ONLINE, INC.

Signed this 21^st of March 2000 by Judge James A. Carmody (Retired), arbitrator.