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Generic Top Level Domain Name (gTLD) Decisions |
America Online, Inc. v. Miguel Villanueva
Claim
Number: FA0402000236589
Complainant is America Online, Inc. (“Complainant”), represented
by James R. Davis II, of Arent Fox Kintner Plotkin & Kahn, 1050 Connecticut Avenue, NW, Washington, DC 20036. Respondent is Miguel Villanueva (“Respondent”), Via Favencia 67, Barcelona, Spain
08042.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <descargarwinamp.com>, <bajarwinamp.com>,
<telecharger-winamp.com>, <telechargerdewinamp.com>, <telecharger-icq.com>,
<telechargerdeicq.com> and <telechargericq.net>,
registered with Iholdings.com, Inc. d/b/a Dotregistrar.com.
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.
John
J. Upchurch as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on February 12, 2004; the
Forum received a hard copy of the
Complaint on February 17, 2004.
On
February 16, 2004, Iholdings.com, Inc. d/b/a Dotregistrar.com confirmed by
e-mail to the Forum that the domain names <descargarwinamp.com>, <bajarwinamp.com>,
<telecharger-winamp.com>, <telechargerdewinamp.com>, <telecharger-icq.com>,
<telechargerdeicq.com> and <telechargericq.net> are
registered with Iholdings.com, Inc. d/b/a Dotregistrar.com and that Respondent
is the current registrant of the names. Iholdings.com,
Inc. d/b/a
Dotregistrar.com has verified that Respondent is bound by the Iholdings.com,
Inc. d/b/a Dotregistrar.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
February 20, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"),
setting
a deadline of March 11, 2004 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@descargarwinamp.com,
postmaster@bajarwinamp.com, postmaster@telecharger-winamp.com, postmaster@telechargerdewinamp.com,
postmaster@telecharger-icq.com, postmaster@telechargerdeicq.com and postmaster@telechargericq.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
March 23, 2004, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed John
J. Upchurch 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.
Complainant
requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <descargarwinamp.com>,
<bajarwinamp.com>, <telecharger-winamp.com>, <telechargerdewinamp.com>,
<telecharger-icq.com>, <telechargerdeicq.com> and <telechargericq.net>
domain names are confusingly similar to Complainant’s ICQ and WINAMP marks.
2. Respondent does not have any rights or
legitimate interests in the <descargarwinamp.com>, <bajarwinamp.com>,
<telecharger-winamp.com>, <telechargerdewinamp.com>, <telecharger-icq.com>,
<telechargerdeicq.com> and <telechargericq.net>
domain names.
3. Respondent registered and used the <descargarwinamp.com>,
<bajarwinamp.com>, <telecharger-winamp.com>, <telechargerdewinamp.com>,
<telecharger-icq.com>, <telechargerdeicq.com> and <telechargericq.net>
domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant is
known worldwide for its computer and Internet-related goods and services. Complainant uses its ICQ and WINAMP marks in
conjunction with its business.
Complainant registered the ICQ and WINAMP marks with the U.S. Patent and
Trademark Office (“USPTO”) on December 12, 2000 and April
9, 2002,
respectively. (Reg. Nos. 2411657 and
2557585, respectively).
Respondent
registered the disputed domain names between October 26, 2003 and January 18,
2004. Respondent uses the domain names
to route Internet users to various commercial websites that make prominent use
of the ICQ and WINAMP
marks and logos and provide software downloads. The websites are either in the French or
Spanish language.
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 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.
Complainant has
established rights in the ICQ and WINAMP marks through registration with the
USPTO. See Men’s Wearhouse, Inc. v.
Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark
law, registered marks hold a presumption that they are inherently
distinctive
and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5,
2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this
assumption).
Respondent’s
domain names are confusingly similar to Complainant’s marks because each of the
domain names fully incorporates one of
Complainant’s marks and merely adds
either a French or Spanish word meaning “download.” The word “download” translates into French as “telechargement”
and in Spanish translates as “bajar” or “descargar.” The French word “de” translates to the word “of.” The addition of
the generic French and Spanish words is insufficient to distinguish
the domain
names from Complainant’s marks.
Moreover, the word “download” is descriptive of Complainant’s business
because Complainant provides computer and Internet-related
goods and
services. Therefore, the Panel
concludes that the domain names are confusingly similar to Complainant’s ICQ
and WINAMP marks. See Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing
similarity where Respondent’s domain name combines Complainant’s mark with
a
generic term that has an obvious relationship to Complainant’s business); see
also L.L. Bean, Inc. v.
ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000) (finding that
combining the generic word “shop” with Complainant’s registered mark “llbean”
does not circumvent Complainant’s rights in the mark nor avoid the confusing
similarity aspect of the ICANN Policy).
Furthermore, the
addition of the generic top-level domains “.com” and “.net” are not relevant in
determining whether the domain names
are confusingly similar to Complainant’s
marks. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000)
(finding <pomellato.com> identical to Complainant’s mark because the
generic top-level domain
(gTLD) “.com” after the name POMELLATO is not
relevant); see also Little Six,
Inc. v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding
that <mysticlake.net> is plainly identical to Complainant’s MYSTIC LAKE
trademark and service mark).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent
failed to provide a Response; therefore, the Panel may accept all reasonable
allegations and inferences in the Complaint
as true. See Vertical Solutions Mgmt., Inc. v. webnet-marketing,
inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s
failure to respond allows all reasonable inferences of fact in
the allegations
of Complainant to be deemed true); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000)
(finding it appropriate for the Panel to draw adverse inferences from
Respondent’s failure to reply
to the Complaint).
Due to
Respondent’s failure to contest the allegations of the Complaint, the Panel
presumes that Respondent lacks rights and legitimate
interests in the 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); see
also Canadian Imperial Bank of
Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000)
(finding no rights or legitimate interests where no such right or interest was
immediately
apparent to the Panel and Respondent did not come forward to
suggest any right or interest it may have possessed).
Complainant
alleges that each of the domain names is confusingly similar to one of Complainant’s
marks and resolves to a commercial
website.
The Panel accepts this assertion as true and finds that Respondent’s use
of the domain names does not constitute a bona fide offering
of goods and
services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use
pursuant to Policy ¶ 4(c)(iii). See MSNBC Cable, LLC v. Tysys.com,
D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in
the famous MSNBC mark where Respondent attempted to
profit using Complainant’s
mark by redirecting Internet traffic to its own website); see also Nike,
Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no “bona
fide” offering of goods or services where Respondent used Complainant’s
mark
without authorization to attract Internet users to its website, which offered
both Complainant’s products and those of Complainant’s
competitors).
Furthermore,
Respondent is not authorized or licensed to register or use domain names that
incorporate Complainant’s marks.
Moreover, the record fails to establish that Respondent is commonly
known by the domain names. Therefore,
the Panel finds that Respondent lacks rights and legitimate interests in the
domain names pursuant to Policy ¶ 4(c)(ii).
See Tercent Inc. v. Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (stating “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 Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000)
(finding no rights or legitimate interests where (1) Respondent is not a
licensee of Complainant;
(2) Complainant’s prior rights in the domain name
precede Respondent’s registration; (3) Respondent is not commonly known by the
domain
name in question).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Each of
Respondent’s domain names takes advantage of the goodwill associated with
Complainant’s marks and is used for commercial gain.
Therefore, the Panel finds that each of the domain names were
registered and used in bad faith pursuant to Policy ¶ 4(b)(iv). See H-D Michigan, Inc. v. Petersons Auto.,
FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed domain name
was registered and used in bad faith pursuant to
Policy ¶ 4(b)(iv) through
Respondent’s registration and use of the infringing domain name to
intentionally attempt to attract Internet
users to its fraudulent website by
using Complainant’s famous marks and likeness); see also G.D. Searle
& Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002)
(finding that Respondent registered and used the domain name in bad faith
pursuant to
Policy ¶ 4(b)(iv) because Respondent was using the confusingly
similar domain name to attract Internet users to its commercial website).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <descargarwinamp.com>, <bajarwinamp.com>,
<telecharger-winamp.com>, <telechargerdewinamp.com>, <telecharger-icq.com>,
<telechargerdeicq.com> and <telechargericq.net>
domain names be TRANSFERRED from Respondent to Complainant.
John
J. Upchurch, Panelist
Dated: April 2, 2004
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