DECISION

America Online, Inc. v. Anony Mous a/k/a Taha Arvas

Claim Number: FA0205000114368

PARTIES

Complainant is America Online, Inc., Dulles, VA (“Complainant”) represented by James R. Davis, of Arent Fox Kintner Plotkin & Kahn.  Respondent is Anony Mous a/k/a Taha Arvas, Syracuse, NY (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <icqlite.com>, registered with Go Daddy Software.

PANEL

The undersigned certifies that he has acted independently and impartially and, to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on May 21, 2002; the Forum received a hard copy of the Complaint on May 24, 2002.

On May 21, 2002, Go Daddy Software confirmed by e-mail to the Forum that the domain name <icqlite.com> is registered with Go Daddy Software and that Respondent is the current registrant of the name.  Go Daddy Software has verified that Respondent is bound by the Go Daddy Software registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On May 24, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 13, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@icqlite.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On June 26, 2002 pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent.”  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

1. Respondent’s <icqlite.com> domain name is confusingly similar to Complainant’s registered ICQ family of marks.

2. Respondent has no rights or legitimate interests in the <icqlite.com> domain name.

3. Respondent registered and used the <icqlite.com> domain name in bad faith.

B. Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant owns many trademark registrations worldwide for the ICQ mark, including, U.S. Patent and Trademark Office (“USPTO”) Reg. No. 2411657 for the ICQ mark as registered on the Principal Register on December 12, 2000. Complainant is the owner of numerous trademarks, service marks and trade names that include the ICQ mark (e.g., ICQmail, ICQphone, ICQgames and ICQcommunity). Complainant uses the ICQ.COM mark in conjunction with a corresponding <icq.com> domain name for a portal to reach its ICQ service.

Each year, tens of millions of customers worldwide obtain goods and services offered under the ICQ mark; millions more are exposed to Complainant’s ICQ mark through advertising and promotion. Complainant’s ICQ service has registered over 100,000,000 subscribers worldwide, making it one of the largest online communities in the world.

Respondent registered the disputed <icqlite.com> domain name on October 3, 2001. Respondent’s domain name is used in connection with a commercial website that makes prominent references to Complainant’s ICQ service while offering competing telecommunications services. Respondent is not licensed or authorized to use the ICQ mark. 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

Identical and/or Confusingly Similar

Complainant has established its rights in the ICQ family of marks through international registration, including a listing on the Principal Register of the USPTO in the U.S. and subsequent continuous use of the mark.

Respondent’s <icqlite.com> domain name is confusingly similar to Complainant’s mark. Respondent’s addition of a generic word fails to detract from the dominant presence of Complainant’s ICQ mark. See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that adding the suffixes "502" and "520" to the ICQ trademark does little to reduce the potential for confusion); see also Am. Online Inc. v. Chinese ICQ Network, D2000-0808 (WIPO Aug. 31, 2000) (finding that the addition of the numeral 4 in the domain name <4icq.com> does nothing to deflect the impact on the viewer of the mark ICQ and is therefore confusingly similar); see also Westfield Corp., Inc. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element).

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Because Respondent has not submitted a Response in this proceeding, the Panel may presume it has no rights or legitimate interests in respect of the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names). Furthermore, Respondent’s failure to respond allows all reasonable inferences made by Complainant to be deemed true. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”).

Respondent’s domain name routes unsuspecting Internet users searching for Complainant’s ICQ site to Respondent’s competing website. Respondent intentionally compounds confusion by using advertisements, such as, “Dedicated to the fans of ICQ, like us” and images that emulate Complainant’s famous ICQ mark. Respondent’s registration of a confusingly similar domain name to divert Internet users to a competing website is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor is it a noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). Respondent undoubtedly is rewarded for this diversion by the advertisements listed on its website. See N. Coast Med., Inc. v. Allegro Med., FA 95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no bona fide use where Respondent used the domain name to divert Internet users to its competing website); see also Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was diverting consumers to its own website by using Complainant’s trademarks); see also Ticketmaster Corp. v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9, 2001) (finding no rights or legitimate interests where Respondent generated commercial gain by intentionally and misleadingly diverting users away from Complainant's site to a competing website).

Respondent is not an authorized agent of Complainant, nor is it licensed to use Complainant’s ICQ mark in connection with a website offering similar services. There is no evidence that Respondent is commonly known as ICQLITE or by its <icqlite.com> domain name pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question).

            The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Complainant’s ICQ family of marks has represented Complainant’s telecommunications services internationally and reflects famous and established marks. Because of Complainant’s renowned use of its ICQ mark, its registration of the mark on the USPTO’s Principal Register and Respondent’s conspicuous copying of Complainant’s logo, Respondent is thought to have had notice of Complainant’s rights in its ICQ family of marks. Respondent’s registration and use of its confusingly similar domain name, despite knowledge of Complainant’s preexisting rights in its mark, represents bad faith registration and use under the Policy. See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that ICQ mark is so obviously connected with Complainant and its products that the use of the domain names by Respondent, who has no connection with Complainant, suggests opportunistic bad faith); see also Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the world-wide prominence of the mark and thus Respondent registered the domain name in bad faith); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration).

Respondent’s registration and use of a domain name confusingly similar to Complainant’s competing ICQ mark also represents bad faith under Policy ¶ 4(b)(iii). Because Respondent is involved in the same industry as Complainant, it can be inferred that Respondent’s primary purpose for registering the disputed domain name was to disrupt Complainant’s ICQ business. See Mission Kwa Sizabantu v. Rost, D2000-0279 (WIPO June 7,2000) (defining “competitor” as "…one who acts in opposition to another and the context does not imply or demand any restricted meaning such as commercial or business competitor”); see also Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between Complainant and Respondent, Respondent likely registered the contested domain name with the intent to disrupt Complainant's business and create user confusion).

Furthermore, Complainant’s ICQ mark is so connected with Complainant’s services that the use of a confusingly similar domain name by any other party suggests bad faith under Policy ¶ 4(b)(iv). Respondent is attempting to intentionally attract, for commercial gain, unsuspecting Internet users by creating a likelihood of confusion between Respondent’s <icqlite.com> domain and Complainant’s ICQ mark and corresponding services. See Am. Online Inc. v. Shenzhen JZT Computer Software Co. Ltd, D2000-0809 (WIPO Sept. 6, 2000) (finding that <gameicq.com> and <gameicq.net> are obviously connected with services provided with the world-wide business of ICQ and that the use of the domain names by someone with no connection to the product suggests opportunistic bad faith); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent registered and used an infringing domain name to attract users to a website sponsored by Respondent); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that Respondent intentionally attempted to attract Internet users to his website for commercial gain by creating a likelihood of confusion with the Complainant’s mark and offering the same chat services via his website as the Complainant).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief should be hereby GRANTED.

Accordingly, it is Ordered that the <icqlite.com> domain name be TRANSFERRED from Respondent to Complainant.

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated: July 3, 2002

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