Generic Top Level Domain Name (gTLD) Decisions

DECISION

America Online, Inc. v. Jason

Claim Number: FA0211000133752

PARTIES

Complainant is America Online, Inc., Dulles, VA, USA (“Complainant”) represented by James R. Davis, II, of Arent Fox Kintner Plotkin & Kahn.  Respondent is Jason, HONG KONG, CHINA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <icqtogo.com>, registered with Dotster, 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.

Hon. Ralph Yachnin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on November 15, 2002; the Forum received a hard copy of the Complaint on November 15, 2002.

On November 15, 2002, Dotster, Inc. confirmed by e-mail to the Forum that the domain name <icqtogo.com> is registered with Dotster, Inc. and that Respondent is the current registrant of the name.  Dotster, Inc. has verified that Respondent is bound by the Dotster, 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 19, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 10, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail to postmaster@icqtogo.com.

No attempt was made to deliver the Commencement Notification via post or fax due to the lack of information provided by Respondent when initially registering the disputed domain name.

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 27, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Ralph Yachnin 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 <icqtogo.com> domain name is confusingly similar to Complainant’s registered ICQ mark.

2.           Respondent does not have rights to or legitimate interests in the <icqtogo.com> domain name.

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

B. Respondent

Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant has developed an online community through its use of the ICQ mark.  Complainant is the owner of numerous marks, inter alia, ICQ, ICQMAIL, ICQPHONE, ICQCOMMUNITY and ICQ2GO (collectively the “ICQ Mark”). Since at least 1996, Complainant and its predecessor in interest have been using the ICQ Mark in connection with computer and Internet related goods and services. Most notably of its endeavors has been the ICQ network online community, which, since its inception, has been downloaded over 200,000,000 times worldwide.

Complainant registered the ICQ Mark with the United States Patent and Trademark Office (“USPTO”). The ICQ Mark is listed with the USPTO on the Principle Register (e.g., Reg. No. 2,411,657). Moreover, the ICQ Mark is registered in several other countries, including Hong Kong and China, the countries where Respondent is listed as residing.

Complainant advertises the ICQ Mark extensively both domestically and abroad. Sales of services related to, and affiliated with the ICQ Mark have been substantial and Complainant has thus developed a reputation associated with the ICQ Mark and the goods associated with it. 

Respondent registered the disputed domain name on June 1, 2002. Respondent’s disputed domain name and corresponding website are currently offering services that are substantially similar to the services that Complainant offers through its ICQ and ICQ2GO marks. The website states, “Welcome to ICQtoGO.com” and “Now you can ICQ Anytime & Anywhere you want! At Work, at School, and while on the GO!”  There is no licensed or otherwise acceptable affiliation between Complainant and Respondent. Respondent also uses metatags to identify itself as ICQtoGO.

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 rights in the ICQ Mark through registration with the USTPO and subsequent continuous use of the mark.

Respondent’s disputed domain name is confusingly similar to that of Complainant’s registered mark. Respondent’s <icqtogo.com> incorporates the entire ICQ mark, and is phonetically identical to Complainant’s ICQ2GO mark. Knowing that the ICQ family of marks is so well known throughout the world, changing “2” to “to” is not adequate to create a distinct and unique domain name that is not confusingly similar to Complainant’s marks. See Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that <oicq.net> and <oicq.com> are confusingly similar to Complainant’s mark, ICQ); see also Martin v. MDD, Inc, AF-0310 (eResolution Oct. 4, 2000) (finding that the domain name <blueridgeknife.com> is identical to Complainant’s registered marks BLUE RIDGE KNIVES).

Respondent uses metatags to mimic Complainant’s ICQ mark. Metatags are keywords used by Internet search engines to distinguish one website from another. When the ICQ mark is searched for, someone searching for Complainant could, in actuality, be directed to Respondent. Respondent can be said to intentionally have a confusingly similar domain name. See Freebies Publ’g v. Retail Servs., Inc., FA 112565 (Nat. Arb. Forum July 8, 2002) (finding Respondent’s use of Complainant’s FREEBIES mark in meta-tags, which are keywords used by search engines to classify pages for searches, provides evidence that Respondent intended to confuse Internet users as to the source and sponsorship of its domain name”).

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

Rights or Legitimate Interests

Respondent did not respond to Complainant’s allegations, thereby allowing the Panel to accept all reasonable inferences alleged by Complainant. Moreover, by Respondent failing to reply, it has failed to fulfill its burden of demonstrating rights or legitimate interests in the disputed domain name over the allegations of Complainant.  See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertion in this regard”);  see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence).  There is no evidence that contradicts the allegations of Complainant.  Complainant has presented evidence that substantiates its claim that Respondent has no rights or legitimate interests in the contested domain name.

Complainant engages in Internet sales and services through use of the ICQ mark, including offering e-mail and an online network of communication. Respondent, through the disputed domain name <icqtogo.com>, is attempting to offer similar services. There is no bona fide offering of goods and services or legitimate noncommercial or fair use of the domain name under Policy ¶ ¶ 4(c)(i)-(iii) when Respondent attempts to use a name that is confusingly similar to Complainant’s mark and operates within the same industry as Complainant. See Chip Merch., Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that the disputed domain names were confusingly similar to Complainant’s mark and that Respondent’s use of the domain names to sell competing goods was illegitimate and not a bona fide offering of goods); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that “[I]t would be unconscionable to find a bona fide offering of services in a respondent’s operation of web-site using a domain name which is confusingly similar to the Complainant’s mark and for the same business”).

There has been no evidence affirming that Respondent has a considerable association with, or is known by the <icqtogo.com> name. Complainant has established itself as the sole possessor of all legitimate rights and interests in the ICQ mark. Moreover, Complainant has had rights in the mark that precede the registration of the disputed domain name. Since Respondent has not come forward with any evidence to legitimize its use of Complainant’s mark, and uses a confusingly similar domain name to provide services similar in nature to Complainant, it can be inferred that Respondent has no rights to the 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 Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding that Respondent is not commonly known by the mark contained in the domain name where Complainant has not permitted Respondent to use the NOKIA mark and no other facts or elements can justify prior rights or a legitimate connection to the names “Nokia” and/or “wwwNokia”). Respondent has not established under Policy ¶ 4(c)(ii) that it is commonly known by <icqtogo.com>, and alternatively, Complainant has shown that Respondent would be unable to do so even if a response had been filed.

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

Registration and Use in Bad Faith

Respondent registered and is using the disputed domain name in bad faith.

Complainant’s ICQ Mark is registered with the relevant Chinese and Hong Kong trademark authorities. Respondent was placed on constructive notice of the registered trademark by virtue of Complainant’s registration of the marks in China and Hong Kong, Respondent’s suggested place of domicile. Respondent’s registration of the disputed domain name thereafter, containing the distinctive service mark, is an indication of bad faith registration. See 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 worldwide prominence of the mark and thus Respondent registered the domain name in bad faith); see also Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”).

Respondent has intentionally tried to attract Internet traffic to its website by attempting to capitalize on the fame of the ICQ Mark that Complainant has developed. Respondent provides similar services at its commercial website, thereby attempting to intentionally confuse Internet consumers. It is evidence of bad faith under Policy¶ 4(b)(iv) when one tries to intentionally attract Internet users to its cite for commercial gain by means of intentional confusion between a respondent’s domain name and a complainant’s mark.  See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that Respondent had engaged in bad faith use and registration by linking the domain name to a website that offers services similar to Complainant’s services, intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s marks); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with Complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain). 

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

DECISION

Having established all three elements required under the ICANN policy, the Panel concludes that the requested relief shall be and hereby is granted.

Accordingly, it is ordered that the domain name <icqtogo.com> be hereby transferred from Respondent to Complainant.

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

Dated: December 30, 2002

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