DECISION

America Online, Inc. v. Juan Jose San Martin Vila d/b/a ICQNet

Claim Number:  FA0403000248946

PARTIES

Complainant is America Online, Inc. (“Complainant”), represented by James R. Davis II, of Arent Fox, PLLC, 1050 Connecticut Avenue, N.W., Washington DC 20036.  Respondent is Juan Jose San Martin Vila d/b/a ICQNet (“Respondent”), Juana de Arco 2069 Dpto., 44Providencia, Santiago, Chile.

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <icqchile.com>, <icqchile.net>, <icqchile.org>, <icqchile.biz>, <icqchile.info>, <icqniano.com>, <icqnet.biz>, and <icqnet.info>, registered with Omnis Network, Llc. 

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.

John J. Upchurch as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on March 23, 2004; the Forum received a hard copy of the Complaint on March 26, 2004.

On March 29, 2004, Omnis Network, Llc confirmed by e-mail to the Forum that the domain names <icqchile.com>, <icqchile.net>, <icqchile.org>, <icqchile.biz>, <icqchile.info>, <icqniano.com>, <icqnet.biz>, and <icqnet.info> are registered with Omnis Network, Llc and that Respondent is the current registrant of the names. Omnis Network, Llc has verified that Respondent is bound by the Omnis Network, Llc 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 March 31, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 20, 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@icqchile.com, postmaster@icqchile.net, postmaster@icqchile.org, postmaster@icqchile.biz, postmaster@icqchile.info, postmaster@icqniano.com, postmaster@icqnet.biz, and postmaster@icqnet.info 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 April 30, 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.

RELIEF SOUGHT

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

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <icqchile.com>, <icqchile.net>, <icqchile.org>, <icqchile.biz>, <icqchile.info>, <icqniano.com>, <icqnet.biz>, and <icqnet.info> domain names are confusingly similar to Complainant’s ICQ mark.

2. Respondent does not have any rights or legitimate interests in the <icqchile.com>, <icqchile.net>, <icqchile.org>, <icqchile.biz>, <icqchile.info>, <icqniano.com>, <icqnet.biz>, and <icqnet.info> domain names.

3. Respondent registered and used the <icqchile.com>, <icqchile.net>, <icqchile.org>, <icqchile.biz>, <icqchile.info>, <icqniano.com>, <icqnet.biz>, and <icqnet.info> domain names in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant owns numerous trademark registrations worldwide for the ICQ mark, including federal trademark registrations in the United States and Chile.  Complainant registered the ICQ mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,411,657) on December 12, 2000 for use in connection with a variety of goods and services including: computer software, online directories and services, telecommunications services, financial information services, among other things.  The mark has been used since 1996.

Complainant registered the ICQ mark with the governing authority of Chile on June 11, 1999 (Reg. No. 539,497) in connection with telecommunication services and other computer and online services.

Each year, tens of millions of customers worldwide obtain goods and services offered under the ICQ mark. In addition, Complainant uses a prominent flower logo alongside its ICQ mark in offering its goods and services.

Respondent registered the following disputed domain names: <icqchile.com> (Reg. Nov. 14, 2003), <icqchile.net> (Reg. Nov. 14, 2003), <icqchile.org> (Reg. Nov. 15, 2003), <icqchile.biz> (Reg. Nov. 15, 2003), <icqchile.info> (Reg. Nov. 15, 2003), <icqniano.com> (Reg. Aug. 26, 2003), <icqnet.biz> (Reg. Nov. 11, 2003), and <icqnet.info> (Reg. Nov. 11, 2003).

The domain names are used to promote varous online services.  The content located at the disputed domain names includes Complainant’s flower logo, which is used to promote Complainant’s goods and services offered under its ICQ mark.

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 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 and/or Confusingly Similar

Complainant has established rights in the ICQ mark as a result of its registration of the mark with the USPTO and the governing authority of Chile. See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that the 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); see also Wal-Mart Stores, Inc. v. MacLeod, D2000-0662 (WIPO Sept. 19, 2000) (finding that the failure of Complainant to register all possible domain names that surround its substantive mark does not hinder Complainant’s rights in the mark. “Trademark owners are not required to create ‘libraries’ of domain names in order to protect themselves.”).

A domain name that includes a third-party’s mark in its entirety and merely affixes a geographic term to the mark has consistently been found to be confusingly similar to the third-party’s mark under the Policy.  In this case, Respondent registered the disputed domain names <icqchile.com>, <icqchile.net>, <icqchile.org>, <icqchile.biz>, and <icqchile.info>, which all contain Complainant’s ICQ mark in its entirety.  The domain names each contain the geographic term “chile,” which is affixed to the end of Complainant’s ICQ mark.  Therefore, the disputed domain names <icqchile.com>, <icqchile.net>, <icqchile.org>, <icqchile.biz>, and <icqchile.info> are confusingly similar to Complainant’s ICQ mark under the Policy. See Net2phone Inc, v. Netcall SAGL, D2000-0666 (WIPO Sept. 26, 2000) (finding that Respondent’s registration of the domain name <net2phone-europe.com> is confusingly similar to Complainant’s mark . . ." the combination of a geographic term with the mark does not prevent a domain name from being found confusingly similar"); see also VeriSign, Inc. v. Tandon, D2000-1216 (WIPO Nov. 16, 2000) (finding confusing similarity between Complainant’s VERISIGN mark and the <verisignindia.com> and <verisignindia.net> domain names where Respondent added the word “India” to Complainant’s mark); see also CMGI, Inc. v. Reyes, D2000-0572 (WIPO Aug. 8, 2000) (finding that the domain name <cmgiasia.com> is confusingly similar to Complainant’s CMGI mark).

Likewise, a domain name that includes a third-party’s mark in its entirety and merely affixes a generic or descriptive term has consistently been found to be confusingly similar to the third-party’s mark under the Policy.  Here, the disputed domain names <icqnet.biz>, <icqnet.info>, and <icqniano.com> each contain Complainant’s ICQ mark in its entirety and merely have added the terms “net” and “niano” to the ends of the marks.  Therefore, the domain names <icqnet.biz>, <icqnet.info>, and <icqniano.com> are confusingly similar to Complainant’s ICQ mark under the Policy. See Am. Online Inc. v. Neticq.com Ltd., D2000-1606 (WIPO Feb. 12, 2001) (finding that the addition of the generic word “Net” to Complainant’s ICQ mark, makes the <neticq.com> domain name confusingly similar to Complainant’s mark); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the subject domain name incorporates the VIAGRA mark in its entirety, and deviates only by the addition of the word “bomb,” the domain name is rendered confusingly similar to Complainant’s mark); see also Body Shop Int’l PLC v. CPIC NET & Hussain, D2000-1214 (WIPO Nov. 26, 2000) (finding that the domain name <bodyshopdigital.com> is confusingly similar to Complainant’s THE BODY SHOP trademark).

Complainant has established Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent has not responded to the Complaint.  The Panel construes such inaction as an implicit admission 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 Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where Respondent fails to respond).

The use of domain names confusingly similar to a third-party’s mark to offer services that compete with those offered under the third-party’s mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  In this case, Respondent is using the disputed domain names to offer a variety of online services that compete with the services offered by Complainant under the ICQ mark.  Therefore, Respondent is not using the domain names in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Computerized Sec. Sys., Inc. d/b/a SAFLOK v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (holding that Respondent’s appropriation of Complainant’s mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services); see also Clear Channel Communications, Inc. v. Beaty Enters., FA 135008 (Nat. Arb. Forum Jan. 2, 2003) (finding that Respondent, as a competitor of Complainant, had no rights or legitimate interests in a domain name that utilized Complainant’s mark for its competing website).

Moreover, Respondent has failed to advance evidence to show that it is commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii).  Therefore, the Panel concludes that Respondent lacks rights and legitimate interests in the disputed domain names. See 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); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").

Complainant has established Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent has incorporated Complainant’s flower logo, which is used in connection with Complainant’s ICQ mark, on the attached websites to the disputed domain names.  Such appropriation is evidence that Respondent has attempted to pass itself off as Complainant, which evidences bad faith registration and use under Policy ¶ 4(a)(iii). See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that Respondent's use of <monsantos.com> to misrepresent itself as Complainant and to provide misleading information to the public supported a finding of bad faith); see also

Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where Respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . In a nutshell, Respondent used the disputed domain name to perpetrate a fraud”).

Respondent’s appropriation of Complainant’s mark and logo also is evidence that Respondent had actual notice of Complainant’s rights in the ICQ mark.  Therefore, the Panel finds that Respondent registered and used the disputed domain names in bad faith because it was aware of Complainant’s rights in the ICQ mark at the time of its registration of the disputed domain names. See Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. 2002) ("Where an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse."); see also Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.”).

Moreover, Respondent is offering a variety of online services that compete with Complainant’s services offered under the ICQ mark.  Therefore, Respondent and Complainant are competitors.  The fact that Respondent registered domain names that contain a mark of its competitor and then proceeded to sell services that compete with Complainant’s services evidences bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Surface Protection Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between Complainant and Respondent, Respondent likely registered the contested domain name with the intent to disrupt Complainant's business and create user confusion); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by attracting Internet users to a website that competes with Complainant’s business).

Complainant has established Policy ¶ 4(a)(iii).

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 <icqchile.com>, <icqchile.net>, <icqchile.org>, <icqchile.biz>, <icqchile.info>, <icqniano.com>, <icqnet.biz>, and <icqnet.info> domain names be TRANSFERRED from Respondent to Complainant.

John J. Upchurch, Panelist

Dated:  May 24, 2004

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