DECISION

America Online, Inc. v. Inigo Investments Ltd.

Claim Number: FA0211000132451

PARTIES

Complainant is America Online, Inc., Dulles, VA, USA (“Complainant”) represented by James R. Davis, of Arent Fox Kintner Plotkin & Kahn.  Respondent is Inigo Investments Ltd., Tortola, VIRGIN ISLANDS (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <icqsexclub.com> and < sexicq.com>, registered with Tucows, Inc.

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.

Judge Harold Kalina (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on November 11, 2002; the Forum received a hard copy of the Complaint on November 13, 2002.

On November 12, 2002, Tucows, Inc. confirmed by e-mail to the Forum that the domain names <icqsexclub.com> and < sexicq.com> are registered with Tucows, Inc. and that Respondent is the current registrant of the names.  Tucows, Inc. has verified that Respondent is bound by the Tucows, Inc. 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 November 13, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 3, 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@icqsexclub.com and postmaster@ sexicq.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 December 17, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Harold Kalina (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 names be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

The  <sexicq.com> and <icqsexclub.com> domain names are confusingly similar to Complainant's ICQ mark.

Respondent has no rights or legitimate interests in the disputed domain names.

Respondent registered and used the disputed domain names in bad faith.

B. Respondent

Respondent failed to submit a Response.

FINDINGS

Complainant, America Online, Inc. and its affiliate ICQ, Inc., are the owners of the ICQ trademark, registered with the United States Patent and Trademark Office (“USPTO”) and in numerous countries throughout the world.  Complainant has used the mark since as early as 1996 in relation to its computer and Internet related goods and services.  The ICQ service offered by Complainant has been downloaded 200,000,000 times around the world, making it one of the largest online communities in the world.

Respondent registered the disputed domain names on July 25, 2002.  Respondent is using the two domain names in connection to commercial and pornographic websites.

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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) 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 that it has rights in the ICQ mark through continuous and substantial use throughout the world, as well as its registration of the mark with the USPTO.

Respondent’s <sexicq.com> domain name is confusingly similar to Complainant’s mark because it merely combines the entirety of Complainant’s mark with the generic term “sex.”  The addition of a generic term to a well-known mark does not create any distinct features capable of overcoming a claim of confusing similarity.  See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word…nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied); see also Arthur Guinness Son & Co. (Dublin) Ltd.  v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of Complainant combined with a generic word or term).

The <icqsexclub.com> domain name is confusingly similar to Complainant’s mark because it merely adds the phrase “sex club” to Complainant’s well-known mark.  The addition of the phrase “sex club” does not overcome the fact that Complainant’s mark is still the dominant feature of the domain name.  Therefore, the addition does not defeat a claim of confusing similarity.  See 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); see also Body Shop Int’l PLC v. CPIC NET & Hussain, D2000-1214 (WIPO Nov. 26, 2000) (finding that the domain name <bodyshopdigital.com> is confusingly similar to Complainant’s THE BODY SHOP trademark).

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

Rights or Legitimate Interests

Respondent has failed to come forward with a Response.  Therefore, it is presumed that Respondent has no rights or legitimate interests in the disputed domain names.  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, when Respondent fails to submit a Response the Panel is permitted to make all inferences in favor of Complainant.  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 is using the disputed domain names in order to host commercial and pornographic websites.  The domain names are confusingly similar to Complainant’s mark and therefore Internet users are likely to be confused as to the source, sponsorship and affiliation of these websites.  This could tarnish Complainant’s mark and therefore affect the goodwill Complainant has established in its mark.  This type of use is not considered to be in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Nat’l Football League Prop., Inc. v. One Sex Entm’t Co., D2000-0118 (WIPO Apr. 17, 2000) (finding that Respondent had no rights or legitimate interests in the domain names <chargergirls.com> and <chargergirls.net> where Respondent linked these domain names to its pornographic website); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that infringing on another's well-known mark to provide a link to a pornographic site is not a legitimate or fair use).

Based on the famous nature of Complainant’s mark it would be very difficult for Respondent to prove that it is commonly known as ICQ, SEXICQ, ICQSEXCLUB, <sexicq.com> or <icqsexclub.com>.   Respondent has failed to come forward with any evidence to establish that it is commonly known by the disputed domain names and therefore the Panel may find that Respondent has no rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c)(ii).  See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).

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

Registration and Use in Bad Faith

Respondent is using the confusingly similar domain names in order to attract Internet users to its pornographic and commercial websites.  Therefore, Respondent is creating a likelihood of confusion for its own commercial gain.  This type of behavior is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See State Farm Mut. Auto. Ins. Co. v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11, 2000) (finding that Respondent registered the domain name <statefarmnews.com> in bad faith because Respondent intended to use Complainant’s marks to attract the public to the website without permission from Complainant); 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).

Policy paragraph 4(b) lists four situations that are evidence of bad faith registration or use.  Paragraph 4(b) is not meant to be exclusive, and therefore many other circumstances can give rise to evidence of bad faith.  See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy paragraph 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith); see also Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence).

Respondent is using the disputed domain names in connection with pornographic websites.  This use, because it connects Complainant’s well-known mark with pornography, tarnishes Complainant’s ICQ mark.  Therefore, this type of use is considered to be evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).  See MatchNet plc. v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that the association of a confusingly similar domain name with a pornographic website can constitute bad faith); see also Youtv, Inc. v. Alemdar, FA 94243 (Nat. Arb. Forum Apr. 25, 2000) (finding bad faith where Respondent attracted users to his website for commercial gain and linked his website to pornographic websites).

Furthermore, based on the fame of Complainant’s mark, and the fact that Respondent is using the disputed domain names in order to attract Internet users to its websites, it can be inferred that Respondent had knowledge of Complainant’s ICQ mark when it registered the disputed domain names.  Registration of infringing domain names, despite actual knowledge of Complainant’s rights, is evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii).  See 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); see also Chanel, Inc. AG v. Designer Exposure, D2000-1832 (WIPO Feb. 15, 2001) (finding that Respondent's registration and use of the famous CHANEL mark suggests opportunistic bad faith).

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 shall be hereby granted.

Accordingly, it is Ordered that the domain names <sexicq.com> and <icqsexclub.com> be transferred from Respondent to Complainant.

Judge Harold Kalina (Ret.), Panelist

Dated:  December 26, 2002

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