DECISION

America Online Inc v. Allen Ginsberg

Claim Number: FA0112000102969

PARTIES

Complainant is America Online Inc., Dulles, VA (“Complainant”) represented by James R. Davis, II, of Arent, Fox, Kintner, Plotkin & Kahn.  Respondent is Allen Ginsberg, Obninsk, Kaluga, RUSSIA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME(s) 

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

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on December 14, 2001; the Forum received a hard copy of the Complaint on December 14, 2001.

On December 18, 2001, Dotster, Inc. confirmed by e-mail to the Forum that the domain name <gerryicq.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 December 18, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 7, 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@gerryicq.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 January 25, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson 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 makes the following allegations:

The domain name registered by Respondent, <gerryicq.com>, is confusingly similar to Complainant’s ICQ marks.  Complainant has rights in the mark but Respondent has no such rights or legitimate  interests with regard to the mark contained in its entirety in the disputed domain name. Respondent registered and used the disputed domain name in bad faith..

B. Respondent did not file a Response in this proceeding.

FINDINGS

Complainant registered the ICQ service mark on the Principal Register of the United States Patent and Trademark Office on December 12, 2000.  In addition to its registration in the United States, Complainant owns worldwide at least 40 other registrations of the ICQ trademark.  Moreover, Complainant has used the ICQ mark as early as November 1996, in connection with computer and Internet-related goods and services such as: telecommunications, electronic mail, facsimile transmission, personal communication, online databases, chat rooms, websites and online yellow pages, among many others.

Additionally, Complainant has demonstrated its own use of the ICQ.COM mark on the Internet in its domain name for its portal Website advertising ICQ services.

Complainant has spent a significant amount of money advertising the distinctive ICQ mark resulting in many millions of dollars worth of sales of service.  Due to successful advertising and sales, Complainant has developed substantial goodwill wiht the purchasing public.

Respondent registered <gerryicq.com> on October 4, 2001.  The domain is used in connection with a commercial amd pornographic Web site that makes no references to ICQ or GERRYICQ.  Respondent is attempting to sell the domain, and according to the Whois records, used the words “For Sale” as part of its mailing address.

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 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 to and/or Confusingly Similar

Complainant has established in this proceedings that it has common law and legal rights in the ICQ service mark.  Complainant registered the Service mark on the Principal Register of the USPTO and has used it in commerce worldwide.

Respondent’s <gerryicq.com>  is confusingly similar to Complainant’s domain because the addition of the top level “.com” as  well as a generic term like “gerry” to Complainant’s ICQ mark does not defeat the claim that the two are confusingly similar.  See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); 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 the Complainant combined with a generic word or term); see also America Online, Inc. v. iDomainNames.com, FA 93766 (Nat. Arb. Forum Mar. 24, 2000) (finding that Respondent’s domain name <go2AOL.com> was confusingly similar to Complainant’s AOL mark).  Moreover, the inclusion of Complainant’s mark in its entirety also permits the finding that the disputed domain is confusingly similar to the mark.  See Quixtar Inv., Inc. v. Smithberger and QUIXTAR-IBO, D2000-0138 (WIPO Apr. 19, 2000) (finding that because the domain name <quixtar-sign-up.com> incorporates in its entirety the Complainant’s distinctive mark, QUIXTAR, the domain name is confusingly similar).

Due to Complainant’s large presence on the Internet as well as the similarity of the disputed domain with Complainant’s mark, Internet users are likely to identify the ICQ mark in Respondent’s <gerryicq.com> domain name and associate or affiliate the two although Complainant denies and association and the Respondent has not come forward to show the existence of one. See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding that given the similarity of the Complainant’s marks with the domain name, consumers will presume the domain name is affiliated with the Complainant).

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

Rights to or Legitimate Interests

Complainant has established in this proceeding that it has rights to and interest in the mark contained in its entirety in the domain name registered by Respondent.  Because Respondent failed 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”).

Further, Respondent is presumed not to have rights or legitimate interests in the domain names because it has not responded to this Complaint.  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)

Respondent’s use of the confusingly similar domain to mislead Internet users into believing that the domain and Complainant’s mark are affiliated, combined with Respondent’s use of the domain for a pornographic website is not a bona fide offering of goods pursuant to Policy ¶ 4(c)(i).  See MatchNet plc v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that it is not a bona fide offering of goods or services to use a domain name for commercial gain by attracting Internet users to third party sites offering sexually explicit and pornographic material where such use is calculated to mislead consumers and tarnish the Complainant’s mark).  Moreover, Respondent’s commercial use of the confusingly similar domain to confuse Internet users indicates Respondent does not create rights or legitimate interests in the domain name pursuant to Policy ¶ 4(c)(i).  See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name).

Respondent’s website does not mention “gerryicq.com”, “gerry”, or “icq” and  no evidence shows that Respondent is commonly known by the domain name.  As a result, Respondent has no rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent has no rights or legitimate interests in domain names because it is not commonly known by Complainant’s marks and Respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in domain name when Respondent is not known by the mark).

Respondent’s attempt to sell the disputed domain name and incorporation of “For Sale” in the domain name’s mailing address also permits the inference that Respondent has no rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(iii).   See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding Respondent’s conduct purporting to sell domain name suggests it has no legitimate use).

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

Registration and Use in Bad Faith

Respondent’s selection of a mailing address that offers the domain for sale in addition to Respondent’s offer to sell the domain name for profit suggests that Respondent had the intention of selling the domain name for profit at the time of registration.  This permits the finding that Respondent registered the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(i).  See Wembley Nat’l Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16, 2000) (finding bad faith based on the apparent willingness of the Respondent to sell the domain name in issue from the outset, albeit not at a price reflecting only the costs of registering and maintaining the name); see also Dynojet Research, Inc. v. Norman, AF-0316 (eResolution Sept. 26, 2000) (finding that the Respondent demonstrated bad faith when he requested monetary compensation beyond out of pocket costs in exchange for the registered domain name).

Respondent’s unauthorized attempt to commercially benefit by trading on the goodwill of Complainant’s popular mark by using a confusingly similar domain name also permits the finding of bad faith pursuant to Policy ¶ 4(b)(iv).  See State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where the Respondent registered the domain name <bigtex.net> to infringe on the Complainant’s good will and attract Internet users to the Respondent’s website); see also 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 web site without permission from Complainant).

Due to the fame of Complainant’s ICQ mark, Respondent’s registration and use of a domain name that contained Complainant’s mark in its entirety is presumed to be motivated by opportunistic bad faith.  See America 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 London Metal Exch. Ltd. v. Hussain; D2000-1388 (WIPO Dec. 15, 2000) (finding that the “letters ‘lme’ are so obviously connected with a well-known entity that their very use by someone with no connection to Complainant suggests opportunistic bad faith”).

Further, Respondent’s use of Complainant’s famous mark in its confusingly similar domain to link to a pornographic site is evidence of bad faith registration and use.  See Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (use of another's well-known mark to provide a link to a pornographic site is evidence of bad faith registration and use); see also 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)

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 name <gerryicq.com> be hereby transferred from Respondent to Complainant.

Hon. Carolyn Marks Johnson, Panelist

     Dated: February 8, 2002.

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