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America Online, Inc. v. Shanghaihangwei Packing Material Co. Ltd. [2001] GENDND 998 (22 May 2001)

World Intellectual Property Organization

The Complainant is America Online, Inc., a Delaware corporation with its principal place of business at 22000 AOL Way, Dulles, Virginia 20166, U.S.A.

The Respondent is Shanghaihangwei Packing Material Co. Ltd. of Room 501, No. 6 Lane, 18 Hu Qing Ping Road, Shanghai, China.

The dispute concerns the domain name <ouricq.com> (the said Domain Name) registered with Melbourne IT, Ltd. (the Registrar) of Level 2, 120 King Street, Melbourne Vic 3000, Australia.

On March 27, 2001, the Complainant submitted a complaint electronically to the World Intellectual Property Organization Arbitration and Mediation Center (the Center) for a decision in accordance with the Uniform Domain Name Dispute Resolution Policy (the Policy), the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules) and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules). On March 29, 2001, the Complainant submitted the hardcopy of the same to the Center.

On April 3, 2001, the Center sent a Request for Registrar Verification to the Registrar. On April 4, 2001, the Registrar, confirmed by e-mail with the Center that it was the Registrar of the said Domain Name and that the registrant of the said Domain Name was the Respondent.

On April 4, 2001, having found that the Complainant had satisfied the formal requirements of the Policy, the Rules and the Supplemental Rules, the Center sent the Notification of Complaint and Commencement of Administrative Proceeding (the Notification) by post/courier (with enclosures), facsimile (with the complaint but without attachments) and e-mail (with the complaint but without attachments) to the Respondent and transmitted electronically copies of the said documents to the Complainant. It also extended a copy of the Notification to the Internet Corporation for Assigned Names and Numbers (ICANN) and the Registrar. The said Notification set the formal date of the commencement of this administrative proceeding as April 4, 2001, and required the Respondent to submit a response to the Complainant within 20 calendar days from the date of receipt of the Notification, i.e. by April 23, 2001, failing which the Respondent would be considered to be in default.

The Respondent failed to file the response with the Center by April 23, 2001. On April 25, 2001, the Center sent the Notification of Respondent Default to the Respondent by post/courier and e-mail and copied it to the Complainant via e-mail.

As the Complainant had elected to have the dispute decided by a single-member panel in its complaint, the Center appointed Mr. Hariram Jayaram to be the panelist (the Panel) on May 8, 2001, after receiving a Statement of Acceptance and Declaration of Impartiality and Independence from him on the same day and sent the Notification of Appointment of Administrative Panel and Projected Decision Date to the Complainant and the Respondent and copied it to the Panel by e-mail. On the same day, the Center sent a Transmission of Case File to the Panel.

The Panel finds that the Center has discharged its obligations and responsibilities under the Rules. The Panel will issue its decision based on the complaint, the Policy, the Rules and the Supplemental Rules and principles of law, which the Panel deems to be applicable, without the benefit of having received a response from the Respondent.

The Complainant states that it is the registered owner of the mark "ICQ" in at least 22 countries including the United States of America, Austria, Australia, Benelux, Chile, China, Denmark, Finland, France, Germany, Iceland, Israel, South Korea, Mexico, New Zealand, Norway, Panama, Portugal, Slovenia, Spain, Sweden and Switzerland. Since November 1996, it has been using the mark "ICQ" in connection with:

telecommunication services, namely, services relating to electronic transmission of data, images and documents via computer terminals, electronic storage and retrieval of data and documents, electronic mail services, facsimile transmission, personal communication services, paging services and messaging services;

computer operating programs which may be downloaded from a computer information network; computer software and pre-recorded computer programs for accessing computer networks and computer systems comprising computer hardware and computer software for electronic communications which may be downloaded from a computer information network and computer software for accessing online electronic diaries, online databases, web sites, online chatrooms, and electronic yellow pages which may be downloaded from a computer information network;

and computer services, namely, providing multiple user access to computer information networks and online communication networks; providing on-line services, namely, electronic yellow pages, and providing general interest information via computer networks.

The Complainant is also the owner of numerous trademarks, service marks, and trade names which include the mark "ICQ", e.g., ICQ Games, ICQ Phone, ICQmail, ICQ Search and ICQ Radio. It uses the mark <icq.com> as the domain name for its portal web site. The ICQ marks are used at this portal web site in connection with an online service, which allows Internet users to meet and communicate 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 these Internet-related services. The Complainant has invested substantial sums of money in developing and marketing its services. It has over one hundred million subscribers worldwide and ICQ is the world's largest online communications community. Each year millions of ICQ customers worldwide obtain services offered under the ICQ marks and millions more are exposed to the said marks through advertising and promotion. The ICQ marks have been and continue to be widely publicized through substantial advertising throughout the United States of America and the rest of the world. Millions of dollars have been spent in connection with such advertising which has been disseminated through network and cable television programs, radio broadcasts and in print media including newspapers and periodicals. Sales of services under the ICQ marks have amounted to millions of dollars. As a result, the general public has come to associate these names and marks with services of a high and uniform quality. These marks have become well-known and famous among members of the purchasing public.

As the Respondent has not filed its response, the available facts about it are that it has registered the said Domain Name with the Registrar and it is based in Shanghai, China.

The Complainant says that as early as 1996, the Complainant 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 Respondent registered the said Domain Name on March 8, 2001, and began using it for a commercial web site which provides services similar to those provided by it under its ICQ marks. The said site promotes a company named Tencent, which in at least two prior ICANN proceedings has been found to have acted in bad faith by providing services which infringe upon the ICQ service. In America Online, Inc. v. Tencent Communications Corp. NAF File No. FA0002000093668, the disputed domain names were <oicq.com> and <oicq.net> and in America Online, Inc. v. 0ICQ.com Limited NAF File No. FA0004000094420, the disputed domain names were <0icq.com> and <0icq.net>.

According to the Complainant, the said Domain Name is confusingly similar to the ICQ marks of the Complainant. The mere addition of the common word "our" to the Complainant’s ICQ marks does nothing to distinguish the said Domain Name or prevent consumers from being confused. It is particularly confusing because it is being used for a web site, which provides services nearly identical to those provided under the ICQ marks. The Respondent has no rights or legitimate interests in respect of the said Domain Name. The Respondent has registered and used the said Domain Name in bad faith to capitalize and profit from the famous mark "ICQ" and the goodwill the Complainant has built up in its several ICQ marks. Evidence of bad faith registration and use of the said Domain Name may be seen from the fact that the Respondent has registered the said Domain Name many years after the Complainant’s adoption and first use of its ICQ marks. The Respondent’s bad faith is demonstrated by its use of the said Domain Name in connection with a commercial web site which provides services similar to those provided by the Complainant under its ICQ marks. The Respondent’s actions indicate that it registered the said Domain Name with a bad faith intention to confuse consumers into believing that the Complainant endorses or is affiliated with the Respondent or Tencent. Further evidence of bad faith registration and use of the said Domain Name may be found in the prominent use by the Respondent of other marks, which are confusingly similar to the ICQ marks. For example, the marks "OICQ" and "QQ" are both used throughout the infringing web site. The Respondent’s unauthorized use of the mark "ICQ" in a domain name which routes to a web site using marks identical to the famous ICQ marks and its combination of the common word "our" with <icq.com> demonstrate the Respondent’s bad faith effort to confuse consumers and profit from the goodwill the Complainant has created in its marks. These actions also indicate that the Respondent is attempting to divert consumers to the Respondent’s web site and to mislead consumers into believing that the Complainant endorses or is affiliated with the corresponding web site.

In addition to the decisions rendered against Tencent, the Complainant refers to America Online, Inc. v. Chinese ICQ Network WIPO Case No. D2000-0808, involving the disputed domain name <4icq.com> and America Online, Inc. v. Shenzhen JZT Computer Software Co., Ltd. WIPO Case No. D2000-0809, involving the disputed domain names <gameicq.com> and <gameicq.net>. In both these proceedings, the decisions were in favor of the Complainant. The Respondent cannot, in good faith, claim that it has no knowledge of the Complainant's rights in the mark "ICQ" in view of the prior ICANN decisions, the fame of the mark "ICQ", the ICQ marks’ distinctive qualities and the Respondent’s use of the common word "our" in connection with the Complainant’s ICQ marks. It cannot also claim in good faith that it has made a legitimate noncommercial or fair use of the said Domain Name.

The Respondent has not filed a Response.

Paragraph 5 (a) of the Rules requires the Respondent to submit its response to the Center within twenty (20) days of the commencement of the administrative proceeding.

By the Notification, the Center informed the Respondent that the last date for sending its response was April 23, 2001. The Respondent has failed to submit its response. In view of the default it is open to the Panel, under paragraph (14)(b) of the Rules to:

"draw such inferences…as it considers appropriate."

The inferences include the right of the Panel to conclude as stated in Ogaan India Private Limited v. Mehboob Alam WIPO Case No. D2000-0720:

"that the Respondent has no evidence to rebut the assertion of the Complainant."

However before arriving at a decision, due heed must be paid to what was said in Charles Jourdan Holding AG v. AAIM WIPO Case No. D2000-0403. In that administrative proceeding, it was the Panel’s view that:

"in the absence of a response to the Complainant’s allegations by the Respondent, the Panel must evaluate those claims in the light of the unchallenged evidence submitted by the Complainant."

It is therefore obligatory on the part of the Panel, despite the absence of the Response, to ascertain whether the Complainant has successfully made out a case against the Respondent for the cancellation of the said Domain Name or its transfer to the Complainant.

Paragraph 4 (a) of the Policy envisages that to succeed, the Complainant must establish that:

i) the said Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

ii) the Respondent has no rights or legitimate interests in respect of the said Domain Name; and

iii) the said Domain Name has been registered and is being used in bad faith.

The Complainant must prove that all the aforesaid three elements are present.

The Complainant claims rights in "ICQ". It has registered the mark "ICQ" in several countries in classes 38 and 42 for telecommunications and computer services. It has made extensive use of the mark "ICQ" as well as the related marks ICQ Games, ICQ Phone, ICQmail, ICQ Search and ICQ Radio for Internet-related services. There can be no doubt that the Complainant enjoys goodwill in the word "ICQ".

The Panel has compared the said Domain Name with the Complainant’s mark "ICQ" and finds that the second level domain (SLD) "ouricq" is confusingly similar to the Complainant’s trademark.

6.4 Respondent’s rights or legitimate interests in the said Domain Name

Under paragraph 4 (c) of the Policy, the Respondent may demonstrate its rights and legitimate interests in the said Domain Name by showing inter alia:

(i) its use, of or demonstrable preparation to use, the said Domain Name or a name corresponding to the said Domain Name in connection with a bona fide offering of goods or services;

(ii) it has been commonly known by the said Domain Name, even if it has acquired no trademark or service mark rights or

(iii) it was making a legitimate non-commercial or fair use of the said Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Respondent goes by the name Shanghaihangwei Packing Material Co. Ltd. and in no sense can it be regarded as an entity commonly known by the said Domain Name. The Complainant has produced evidence in the form of a declaration by Kwan Koehler and a printout downloaded from the Respondent’s web site <ouricq.com> to bring home the point that the said web site is a commercial multi-purpose portal site offering chat-room services and instant communication services using inter alia "OICQ". These services are very similar to those offered by the Complainant. The Panel finds that such use of a confusingly similar mark is not bona fide since it will misleadingly divert surfers of the Internet to the Respondent and away from the Complainant.

Paragraph 4 (b) of the Policy sets out some non-exhaustive circumstances which may serve as evidence of the registration and use of a domain name in bad faith by the Respondent and they include the following:

(i) Registration of the said Domain Name primarily for the purpose of disrupting the business of a competitor.

(ii) Intentional attempt by the use of the said Domain Name to attract for commercial gain, Internet users to its web site, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its web site or a service on its web site.

The Complainant’s marks are "ICQ" and several words with "ICQ" as the prefix. It has also a web site, <icq.com>. The adoption by the Respondent of the domain name <ouricq.com> which closely resembles the mark of the Complainant, is bound to create confusion. It is reasonable to infer that Internet users will associate the said Domain Name with the activities of the Complainant and mistakenly believe that the said Domain Name is that of the Complainant or connected with it in some form or other and the net result would be disruption of the business of the Complainant.

The Panel finds that the Complainant has proved each of the three elements of paragraph 4 (a) of the Policy. It requires that the said Domain Name be transferred to the Complainant.

Hariram Jayaram
Sole Panelist

Dated: May 22, 2001