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Generic Top Level Domain Name (gTLD) Decisions |
America Online, Inc. v. BlackBoy
Claim
Number: FA0404000250761
Complainant is America Online, Inc. (“Complainant”), represented
by James R. Davis, of Arent Fox PLLC, 1050
Connecticut Avenue, NW, Washington, DC 20036.
Respondent is BlackBoy (“Respondent”),
eridano coloni 404, Becinecci, vt 640212, Italy.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <icqgirls.net>, registered with Intercosmos
Media Group, Inc. d/b/a Directnic.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.
James
A. Carmody, Esq., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on April 2, 2004; the Forum
received a hard copy of the
Complaint on April 5, 2004.
On
April 5, 2004, Intercosmos Media Group, Inc. d/b/a Directnic.com confirmed by
e-mail to the Forum that the domain name <icqgirls.net> is
registered with Intercosmos Media Group, Inc. d/b/a Directnic.com and that
Respondent is the current registrant of the name. Intercosmos
Media Group, Inc.
d/b/a Directnic.com has verified that Respondent is bound by the Intercosmos
Media Group, Inc. d/b/a Directnic.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
April 6, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"),
setting a deadline of
April 26, 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@icqgirls.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
May 12, 2004, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the Forum appointed James
A. Carmody, Esq., 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <icqgirls.net>
domain name is confusingly similar to Complainant’s ICQ mark.
2. Respondent does not have any rights or
legitimate interests in the <icqgirls.net> domain name.
3. Respondent registered and used the <icqgirls.net>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant is
the owner of many trademark registrations worldwide for the ICQ mark, including
federal trademark registrations in
the United States and Italy. Complainant registered the ICQ mark with the
U.S. Patent and Trademark Office (“USPTO”) on December 12, 2000 (Reg. No.
2,411,657). Complainant also provided
documentation showing that it holds a registration for the ICQ mark with
trademark authorities in Italy.
Complainant uses the mark in connection with computer and Internet
related goods and services.
Respondent
registered the <icqgirls.net> domain name on May 21, 2002. The domain name is used in connection with
commercial pornographic websites.
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 mark through registration with the USPTO and
authorities in Italy. 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 <icqgirls.net>
domain name is confusingly similar to Complainant’s ICQ mark because the domain
name fully incorporates the mark and adds the generic
term “girls.” The addition of the generic term “girls” is
insufficient to distinguish the domain name from Complainant’s 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 Complainant
combined with a generic word or term); see also Sony Kabushiki Kaisha v. 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).
Furthermore, the
addition of the generic top-level domain “.net” to the mark is irrelevant in
determining whether the domain name
is confusingly similar to Complainant’s
mark. 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 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).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent has
failed to contest the allegations of the Complaint; therefore, the Panel
presumes that Respondent lacks rights and
legitimate interests in the <icqgirls.net>
domain name. See Parfums Christian Dior v. QTR Corp.,
D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response,
Respondent has failed to invoke any circumstance which
could demonstrate any
rights or legitimate interests in the domain name); see also 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).
Furthermore,
nothing in the record establishes that Respondent is commonly known by the <icqgirls.net>
domain name. Moreover, Respondent is
not licensed or authorized to register or use domain names that incorporate
Complainant’s mark. Therefore, the
Panel concludes that Respondent lacks rights and legitimate interests in the
domain name 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).
Also,
Respondent’s <icqgirls.net> domain name is used in connection with
commercial pornographic websites.
Respondent is using a domain name confusingly similar to Complainant’s
mark for commercial gain. Commercial
use of a domain name confusingly similar to another’s mark does not constitute
a bona fide offering of goods or 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 Pfizer, Inc. v. Internet Gambiano
Prods., D2002-0325 (WIPO June 20, 2002) (finding that because the VIAGRA
mark was clearly well-known at the time of Respondent’s registration
of the
domain name it can be inferred that Respondent is attempting to capitalize on
the confusion created by the domain name’s similarity
to the mark).
In addition,
Respondent’s use of the <icqgirls.net> domain name in connection
with pornographic websites tarnishes Complainant’s mark and is further evidence
that Respondent lacks rights
and legitimate interests in the domain name. See Isleworth Land Co. v. Lost In Space,
SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (finding that Respondent’s
use of its domain name to link unsuspecting Internet traffic to an
adult- oriented website, containing images of scantily clad women in
provocative
poses, did not constitute a connection with a bona fide offering of
goods or services or a noncommercial or fair use); see also Paws,
Inc. v. Zuccarini, FA 125368 (Nat. Arb. Forum Nov. 15, 2002) (holding that
the use of a domain name that is confusingly similar to an established mark
to
divert Internet users to an adult-oriented website “tarnishes Complainant’s
mark and does not evidence noncommercial or fair use
of the domain name by a
respondent”).
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Respondent
commercially benefits from using a domain name confusingly similar to
Complainant’s mark, which is evidence that Respondent
registered and used the
domain name 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 Kmart v.
Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent
profits from its diversionary use of Complainant's mark when
the domain name
resolves to commercial websites and Respondent fails to contest the Complaint,
it may be concluded that Respondent
is using the domain name in bad faith
pursuant to Policy ¶ 4(b)(iv)).
Furthermore,
Respondent’s <icqgirls.net> domain name incorporates Complainant’s
mark and is used in connection with commercial pornographic websites. Respondent’s use of the domain name in connection
with commercial pornographic websites tarnishes Complainant’s mark and is
further
evidence of bad faith registration and use pursuant to Policy ¶
4(a)(iii). See Wells Fargo & Co.
v. Party Night Inc., FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (finding
that Respondent’s tarnishing use of the disputed domain names to redirect
Internet users to adult-oriented websites was evidence that the domain names
were being used in bad faith); see also Microsoft Corp. v.
Horner, D2002-0029 (WIPO Feb. 27, 2002) (holding that Respondent’s use of
Complainant’s mark to post pornographic photographs and to publicize
hyperlinks
to additional pornographic websites evidenced bad faith use and registration of
the domain name).
The Panel finds
that Policy ¶ 4(a)(iii) 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 <icqgirls.net> domain name be TRANSFERRED
from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated:
May 26, 2004
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