DECISION

America Online, Inc. v. The Ministry of Finance a/k/a Den Supra

Claim Number: FA0212000136298

PARTIES

Complainant is America Online, Inc., Dulles, VA, USA (“Complainant”) represented by James R. Davis, of Arent Fox Kintner Plotkin & Kahn.  Respondent is The Ministry of Finance a/k/a Den Supra, Moscow, RUSSIAN FEDERATION (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <icqgroup.net>, registered with Register.com, 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.

Honorable Paul A. Dorf (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on December 6, 2002; the Forum received a hard copy of the Complaint on December 12, 2002.

On December 9, 2002, Register.com, Inc. confirmed by e-mail to the Forum that the domain name <icqgroup.net> is registered with Register.com, Inc. and that Respondent is the current registrant of the name.  Register.com, Inc. has verified that Respondent is bound by the Register.com, 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 12, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 2, 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@icqgroup.net 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 9, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Honorable Paul A. Dorf (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

The <icqgroup.net> domain name is confusingly similar to Complainant’s ICQ mark.

Respondent does not have any rights or legitimate interests in the <icqgroup.net> domain name.

Respondent registered and used the <icqgroup.net> domain name in bad faith.

            B. Respondent

Respondent failed to respond.

FINDINGS

Complainant owns numerous trademarks for the ICQ mark, which it began using since at least as early as November of 1996.  In particular, Complainant owns United States Patent and Trademark Office Reg. No. 2,411,657 for the ICQ mark.  Moreover, Complainant has registered the ICQ mark with the appropriate Russian Federation governing body, the country where Respondent is located.

Complainant has continually used the ICQ mark in connection with computer services, including, inter alia, electronic transmission of data, online communications networks, electronic storage and retrieval of data and documents, and electronic mail services.  Complainant has tens of millions of customers worldwide that use its ICQ services.  Complainant offers its ICQ services to Russian users in their native Russian language. 

Complainant also owns multiple trademarks and service marks that reflect the ICQ mark, including ICQmail, ICQphone, ICQgames and ICQcommunity.  Complainant operates a website at <icq.com>, where its ICQ marks are used to denote the type of services offered under the ICQ umbrella of services.

Complainant has invested substantial amounts of money to promote and market its ICQ services.  Complainant targets its marketing efforts to a worldwide audience.  The ICQ mark and related services are promoted through network and cable television programs, radio broadcasts, and in print media.  As a result, Complainant’s ICQ related services are heavily used and the general public has come to associate the ICQ mark with quality services.

Respondent registered the <icqgroup.net> domain name on August 21, 2001.  Respondent initially used the domain name to divert Internet traffic to commercial pornographic websites.  These websites have no connection with Complainant or the ICQ mark and related services. 

In an effort to resolve this matter amicably, Complainant sent Respondent a letter requesting that Respondent transfer the domain name registration.  Respondent replied claiming that its costs in connection with the subject domain name were $1,500 and implied that it would sell the registration for that amount.  Complainant refused to purchase the domain name registration and sent subsequent letters to Respondent, which were not replied to.  After the initial letter, Respondent “revised his site to begin offering various commercial services.” 

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 proof of trademark registration with the United States Patent and Trademark Office and the appropriate Russian Federation authority.

Respondent’s <icqgroup.net> domain name contains Complainant’s entire ICQ mark.  The only difference between the ICQ mark and the subject domain name is the addition of the generic word “group” in the domain name.  The significance of this change is diminished for two reasons:  1) “group” is a generic word added to Complainant’s distinct and widely used ICQ mark; and 2) the ICQ mark is often used with generic words to denote the particular services consumers are looking for.  Therefore, potential confusion exists with Respondent’s domain name and Complainant’s ICQ mark.  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 the Complainant combined with a generic word or term); see also 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).

The Panel finds that Respondent’s <icqgroup.net> domain name is confusingly similar to Complainant’s ICQ mark and thus Policy ¶ 4(a)(i) has been satisfied. 

Rights or Legitimate Interests

Complainant presented the Panel with a prima facie case, and in particular Complainant alleged that Respondent has no rights or legitimate interests in the <icqgroup.net> domain name.  Hence, Complainant discharged its burden effectively shifting the burden on Respondent to come forward and articulate rights or legitimate interests in the subject domain name.  Respondent’s failure to submit a Response, however, allows the Panel to presume that Respondent has no such rights or legitimate interests.  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests in respect of the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name).

Furthermore, in the absence of a Response the Panel accepts Complainant’s allegations as true, and will draw all logical inferences in Complainant’s favor.  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”); see also Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).

Respondent used the <icqgroup.net> domain name to divert Internet traffic to pornographic websites.  When Internet users enter the <icqgroup.net> domain name into the web-browser they are directed to a website containing compromising pictures of various women and links to a variety of other pornographic websites.  Respondent therefore first used the subject domain name, which reflects Complainant’s valuable ICQ mark, to increase traffic to a website wholly unrelated to any ICQ related services.  Respondent only changed its pornographic use of the domain name after it received notice of objection from Complainant, but merely changed the use to offer various commercial services. Respondent’s actions do not represent a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor is Respondent engaged in a legitimate noncommercial or fair use of the subject domain name pursuant to Policy ¶ 4(c)(iii).  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 Complainant’s mark); 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).

Respondent has no business affiliation with Complainant and Complainant never authorized Respondent to use its valuable ICQ mark or any version of said mark.  Respondent has not come forward to establish that it is commonly known by the <icqgroup.net> domain name and Respondent’s identity, according to the WHOIS information, is “The Ministry of Finance” a/k/a “Den Supra.”  Therefore, Policy ¶ 4(c)(ii) does not serve to assist Respondent in establishing rights or legitimate interests in the <icqgroup.net> domain name.  See 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); see also 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).

Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the <icqgroup.net> domain name; thus, Policy ¶ 4(a)(ii) is satisfied. 

Registration and Use in Bad Faith

Respondent responded to Complainant’s cease and desist letter with a claim that it spent nearly $1,500 on the subject domain name.  Respondent intimated that it would be willing to transfer the <icqgroup.net> domain name registration rights for that amount.  Respondent has not substantiated its claim of expenses in association with the subject domain name and Complainant contests the asserted costs. Therefore, the Panel concludes that $1,500 is an amount in excess of Respondent’s out-of-pocket expenses in connection with the domain name.  In addition, Complainant, as owner in interests of the ICQ mark, is the only party that has an interest in the inherent value of the <icqgroup.net> domain name, and it can be inferred that Respondent had the intent to trade off of that value.  Thus, the Panel finds bad faith registration and use pursuant to Policy ¶ 4(b)(i).  See Tech. Prop., Inc v. Hussain, FA 95411 (Nat. Arb. Forum Sept. 14, 2000) (finding bad faith where Respondent verbally offered the domain names for sale for $2,000); see also Nabisco Brands Co. v. Patron Group, D2000-0032 (WIPO Feb. 23, 2000) (finding that the Respondent registered and used the domain names to profit where Respondent offered to sell the domain names for $2,300 per name).

Respondent initially used the <icqgroup.net> domain name in an effort to increase traffic to its pornographic website, which contains links to other pornographic websites.  It is inferred that Respondent monetarily benefited from the increased hits its pornographic website received from the subject domain name.  Respondent chose a domain name that has no apparent connection with its pornographic website; however, the domain name is strongly connected to Complainant’s ICQ mark.  Hence, it is reasonable to infer that Respondent registered the <icqgroup.net> domain name with the intent to benefit from the goodwill associated with Complainant’s ICQ mark.  Moreover, Respondent’s diversionary behavior likely resulted in Internet user confusion as to Complainant’s affiliation with the resulting pornographic website.  Therefore, Respondent’s actions represent bad faith registration and use of the subject domain name under Policy ¶ 4(b)(iv).  See Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding bad faith where Respondent linked the domain name in question to websites displaying banner advertisements and pornographic material); see also 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).

Accordingly, the Panel finds that Respondent registered the <icqgroup.net> domain name in bad faith; thus Policy ¶ 4(a)(iii) has been satisfied

DECISION

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

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

Honorable Paul A. Dorf (Ret.) Panelist

Dated:  January 13, 2003

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