DECISION

America Online, Inc. v. Claus Bang Andersen

Claim Number: FA0310000203204

PARTIES

Complainant is America Online, Inc., Dulles, VA, USA (“Complainant”) represented by James R. Davis of Arent Fox Kintner Plotkin & Kahn PLLC, 1050 Connecticut Avenue, NW, Washington, DC  20036.  Respondent is Claus Bang Andersen, Torvevaenget 150, Tranbjerg, Jylland, Denmark (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <icq-dating.com>, registered with Bulkregister.com.

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 October 16, 2003; the Forum received a hard copy of the Complaint October 20, 2003.

On October 16, 2003, Bulkregister.com confirmed by e-mail to the Forum that the domain name <icq-dating.com> is registered with Bulkregister.com and that the Respondent is the current registrant of the name. Bulkregister.com verified that Respondent is bound by the Bulkregister.com 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 October 23, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 12, 2003, 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@icq-dating.com by e-mail.

A timely Response was received and determined to be complete October 28, 2003.

On November 7, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant makes the following allegations in this proceeding:

Complainant urges that Respondent registered a domain name containing a mark in which Complainant has rights.  Complainant contends that the domain name is identical to or confusingly similar to Complainant’s protected mark.  Complainant also urges that Respondent acted in bad faith in registering and using the domain name in issue without Complainant’s authorization.

B. Respondent makes the following points in response:

Respondent urges that Respondent first became aware “that I had caused a problem to AOL” on October 24, 2003, when the Forum forwarded notice of the Complaint to Respondent. Respondent urges that he then forwarded a “Registrar and Domain Name Transfer Agreement” to transfer the domain name.  Respondent made no additional points and the Panel has no evidence before it to show that this occurred.

FINDINGS

Complainant established in this proceeding with appropriate extrinsic documentation that it has established rights in the ICQ mark through registration of the mark in the United States and in Denmark, as well as through widespread use of the mark in commerce.

Respondent did not refute Complainant’s allegation that Respondent has no such rights.  In fact, Respondent did not challenge or refute any of Complainant’s contentions.

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”

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;

(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 established in this proceeding that it has established rights in the ICQ mark through registration of the mark in the United States and in Denmark, as well as through widespread use of the mark in commerce. Complainant maintains that the <icq-dating.com> domain name is confusingly similar to Complainant’s ICQ mark. Complainant’s allegations are supported by relevant authority.  See 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); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) ( “[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).

            Further, Respondent does not contest this element of the complaint.

The Panel finds that Policy ¶ 4(a)(i) relative to the disputed domain name’s “confusing similarity” has been satisfied.

Rights to or Legitimate Interests

Complainant established that it has rights to and legitimate interests in the mark contained within the domain name in issue.  Complainant alleges that Respondent has no such rights and no authorization to use Complainant’s ICQ mark at the disputed domain name.  Further, Complainant maintains that Respondent has no authority to operate a commercial online dating service using Complainant’s mark.  Without authorization, Respondent’s use does not evidence rights or legitimate interests in the domain name pursuant to either Policy ¶ 4(c)(i) or ¶ 4(c)(iii). See eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001) ("use of complainant’s entire mark in infringing domain names makes it difficult to infer a legitimate use"); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that use of Complainant’s mark “as a portal to suck surfers into a site sponsored by Respondent hardly seems legitimate”).

Complainant further contends that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (“nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one “would be hard pressed to find a person who may show a right or legitimate interest” in a domain name containing Complainant's distinct and famous NIKE trademark).

Respondent has conceded this element of the Complaint. See Marcor Int’l v. Langevin, FA 96317 (Nat. Arb. Forum Jan. 12, 2001) (Respondent’s willingness to transfer the domain name at issue indicates that it has no rights or legitimate interests in the domain name in question); see also Colgate-Palmolive Co. v. Domains For Sale, FA 96248 (Nat. Arb. Forum Jan. 18, 2001) (Respondent’s willingness to transfer the domain name at issue to Complainant, as reflected in its Response, is evidence that it has no rights or legitimate interests in the domain name).

The Panel finds that pursuant to Policy ¶ 4(a)(ii), Complainant has shown “rights to or legitimate interests” in the domain name and Respondent has conceded that no such rights exist in Respondent.   

Registration and Use in Bad Faith

Complainant contends that Respondent is using the disputed domain name opportunistically to capitalize on the fame surrounding Complainant’s ICQ mark. Further, Complainant urges that such use creates a likelihood of confusion among Internet users who seek Complainant’s mark but connect with a commercial online dating service.  Further, Complainant maintains that Respondent’s use constitutes bad faith use and registration of the domain name pursuant to Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that the 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 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).

Complainant alleges that Respondent’s use of the domainadmin@buydomains.dk e-mail address in its WHOIS contact information is evidence that Respondent registered the disputed domain name with the primary purpose of selling its registration to Complainant.  Such use also constitutes evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(i). See Euromarket Designs, Inc. v. Domain For Sale VMI, D2000-1195 (WIPO Oct. 26, 2000) (“the manner in which the Respondent chose to identify itself and its administrative and billing contacts both conceals its identity and unmistakably conveys its intention, from the date of the registration, to sell rather than make any use of the disputed domain name”); see also Parfums Christain Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding bad faith where Respondent’s WHOIS registration information contained the words, “This is domain name is for sale”).

 

Respondent conceded this element of the Complaint as well. See Global Media Group, Ltd. v. Kruzicevic, FA 96558 (Nat. Arb. Forum Mar. 7, 2001) (finding Respondent’s failure to address Complainant’s allegations coupled with its willingness to transfer the names is evidence of bad faith registration and use); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that Respondent’s failure to submit a formal response combined with its agreement at the onset of the Complaint to transfer the disputed names satisfies all the requirements of 4(a)).

The Panel finds that Policy ¶ 4(a)(iii) relative to “bad faith registration and use” has been satisfied.

DECISION

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

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

Hon. Carolyn Marks Johnson, Panelist
Dated: November 17, 2003.

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