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Generic Top Level Domain Name (gTLD) Decisions |
America Online, Inc. v. Cai Zhejiong
Claim
Number: FA0404000263621
Complainant is America Online, Inc. (“Complainant”), represented
by James R. Davis, II, of Arent Fox PLLC, 1050
Connecticut Avenue, NW, Washington, DC 20036.
Respondent is Cai Zhejiong
(“Respondent”), 501 26, Lane 400, Pudong, Shanghai, China 200135.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <bookicq.com>, registered with Bulkregister,
Llc.
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.
Hon.
Ralph Yachnin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on April 29, 2004; the
Forum received a hard copy of the
Complaint on May 3, 2004.
On
May 4, 2004, Bulkregister, Llc. confirmed by e-mail to the Forum that the
domain name <bookicq.com> is registered with Bulkregister, Llc.
and that Respondent is the current registrant of the name. Bulkregister, Llc.
has verified
that Respondent is bound by the Bulkregister, 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
May 5, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"),
setting a deadline of
May 25, 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@bookicq.com 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 28, 2004, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the Forum appointed Hon.
Ralph Yachnin 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 <bookicq.com>
domain name is confusingly similar to Complainant’s ICQ mark.
2. Respondent does not have any rights or
legitimate interests in the <bookicq.com> domain name.
3. Respondent registered and used the <bookicq.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
In 1998,
Complainant America Online, Inc. acquired ICQ, Inc., which provides the international
community with instant messaging and community products.
Complainant
holds trademark registrations for the ICQ mark with the United States Patent
and Trademark Office (Reg. No. 2,411,657,
issued December 12, 2000) and the
Trademark Office of the State of Administration for Industry and Commerce for
the People’s Republic
of China (Reg. No. 1,379,784, issued March 28, 2000, and
Reg. No. 2,024,236, issued April 7, 2003).
Complainant also holds trademark registrations for the ICQ mark in
numerous other countries including Chile, Italy, Israel, Mexico,
New Zealand
and Sweden.
Complainant,
through acquisition, has used the ICQ mark since November 1996 in connection
with telecommunications services, computer
operating programs and computer
services. Complainant uses several
trade names to promote the ICQ service that include ICQmail, ICQphone,
ICQgames, ICQcommunity and ICQphone
book.
From 1996 to 2001, <icq.com> registered users went from zero to
100 million. The ICQ service has been
downloaded over 200,000,000 times around the world.
Complainant’s
main website is operated at the <icq.com> domain name.
Respondent
registered the disputed domain name on November 25, 2000. Respondent is using the domain name to provide
Internet users with search engine services that allow users to review and
purchase
books and movies online. The
website also includes floating advertisements showing women in various stages
of removing their clothing.
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 with extrinsic proof in this proceeding that it has rights in the
ICQ mark through registration with the
United States Patent and Trademark
Office and by continuous use of its mark in commerce for the last eight
years. 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 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”).
The domain name
registered by Respondent is confusingly similar to Complainant’s ICQ mark
because the domain name incorporates Complainant’s
mark in its entirety and
merely adds the generic or descriptive term, “book.” The mere addition of a generic or descriptive word to a
registered mark does not negate the confusing similarity of Respondent’s domain
name pursuant to Policy ¶ 4(a)(i). See
Elder Mfg. Co., Inc. v. Recker,
FA 98414 (Nat. Arb. Forum Sep. 10, 2001) (“In the matter at bar it is beyond
refute that Respondent’s domain names are virtually
identical, and thus
confusingly similar to Elder’s trademarks. Any superficial differences between
the domain names and the Elder
trademarks are de minimis and of no legal
consequence”); see also 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 AXA China Region Ltd. v. KANNET Ltd., D2000-1377 (WIPO Nov. 29,
2000) (finding that common geographic qualifiers or generic nouns can rarely be
relied upon to differentiate
the mark if the other elements of the domain name
comprise a mark or marks in which another party has rights).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant has
alleged that Respondent has no rights or legitimate interests in the domain
name that contains in its entirety Complainant’s
mark. Due to Respondent’s failure to respond to
the Complaint, it is assumed that Respondent lacks rights and legitimate
interests in the
disputed domain name.
The burden shifts to Respondent to show that it does have rights or
legitimate interests once Complainant establishes a prima facie case
pursuant to Policy ¶ 4(a)(ii). See
G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002)
(holding that where Complainant has asserted that Respondent has no rights or
legitimate
interests with respect to the domain name it is incumbent on
Respondent to come forward with concrete evidence rebutting this assertion
because this information is “uniquely within the knowledge and control of the
respondent”); see also Compagnie Generale des Matieres Nucleaires v.
Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (stating that “[p]roving
that the Respondent has no rights or legitimate interests in respect of
the
Domain Name requires the Complainant to prove a negative. For the purposes of
this sub paragraph, however, it is sufficient for
the Complainant to show a
prima facie case and the burden of proof is then shifted on to the shoulders of
Respondent. In those circumstances,
the common approach is for [R]espondents to
seek to bring themselves within one of the examples of paragraph 4(c) or put
forward
some other reason why they can fairly be said to have a relevant right
or legitimate interests in respect of the domain name in question”).
Respondent
is using the <bookicq.com> domain name to provide search engine
services that allow Internet users to review and purchase books and movies
online. The website also contains
floating advertisements showing women in various stages of removing their
clothes. Respondent’s use of a domain
name that is confusingly similar to Complainant’s ICQ mark to redirect Internet
users interested in Complainant’s
products to a commercial website that offers
a search engine unrelated to Complainant’s products and services is not a use in
connection
with a bona fide offering of goods or services pursuant to Policy ¶
4(c)(i) and it is not a legitimate noncommercial or fair use
of the domain name
pursuant to Policy ¶ 4(c)(iii). See
eBay Inc. v. Sunho Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating that the
"use of complainant’s entire mark in infringing domain names makes it
difficult
to infer a legitimate use"); see also Wells Fargo & Co.
v. Party Night Inc., FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (holding
that Respondent’s use of confusingly similar
derivatives of Complainant’s WELLS FARGO mark to divert Internet users to
websites featuring
pop-up advertisements was not a bona fide offering of goods
or services); see also Disney Enterss, Inc. v. Dot Stop,
FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that Respondent’s
diversionary use of Complainant’s mark to attract Internet
users to its own
website, which contained a series of hyperlinks to unrelated websites, was
neither a bona fide offering of goods
or services nor a legitimate noncommercial
or fair use of the disputed domain names).
Moreover,
nothing in the record, including the WHOIS domain name registration
information, suggests that Respondent is commonly known
by the domain name or
by Complainant’s mark 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 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).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
intentionally registered a domain name that contains Complainant’s well-known
mark for Respondent’s commercial gain.
Respondent’s domain name diverts Internet users seeking Complainant’s
services to Respondent’s commercial website through the use
of a domain name
that is confusingly similar to Complainant’s mark. Furthermore, Respondent is unfairly and opportunistically
benefiting from the goodwill associated with Complainant’s ICQ mark. Respondent’s practice of diversion,
motivated by commercial gain, constitutes bad faith registration and use
pursuant to Policy ¶
4(b)(iv). See
Bank of America Corp. v. Out Island Props., Inc., FA 154531 (Nat. Arb.
Forum June 3, 2003) (stating that “[s]ince the disputed domain names contain
entire versions of Complainant’s
marks and are used for something completely
unrelated to their descriptive quality, a consumer searching for Complainant
would become
confused as to Complainant’s affiliation with the resulting search
engine website” in holding that the domain names were registered
and used in
bad faith pursuant to Policy ¶ 4(b)(iv)); 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);
see also eBay, Inc v. Progressive Life Awareness
Network, D2001-0068 (WIPO Mar. 16, 2001) (finding bad faith where
Respondent is taking advantage of the recognition that eBay has created
for its
mark and therefore profiting by diverting users seeking the eBay website to
Respondent’s site).
Furthermore,
Respondent’s website at the disputed domain name contains floating
advertisements showing women in various stages of
removing their clothes. Respondent’s registration and use of a
domain name confusingly similar to Complainant’s mark to associate
Complainant’s mark with
unrelated adult-oriented content demonstrates bad faith
registration and use under Policy ¶ 4(a)(iii).
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 Wells Fargo & Co. v. Party Night Inc. & Peter Carrington,
FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (holding that Respondent’s use of confusingly similar derivatives of Complainant’s
WELLS FARGO mark to divert Internet users to websites featuring
pop-up
advertisements was not a bona fide offering of goods or services); see also Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO
June 27, 2000) (finding that absent contrary evidence, linking the domain names
in question to graphic, adult-oriented
websites is evidence of bad faith).
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 <bookicq.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated:
June 11, 2004
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