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Generic Top Level Domain Name (gTLD) Decisions |
America Online, Inc. v. longo
Claim
Number: FA0411000367088
Complainant is America Online, Inc. (“Complainant”), represented
by James R. Davis, of Arent Fox PLLC, 1050
Connecticut Avenue, NW, Washington, DC 20036. Respondent is longo (“Respondent”), 75 rue des
pyrenees, Paris, IDF 75020, France.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <support-icq.com>, registered with Network
Solutions, Inc.
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known
conflict in serving as
Panelist in this proceeding.
Tyrus
R. Atkinson, Jr., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on November
19, 2004; the National Arbitration
Forum received a hard copy of the Complaint
on November 22, 2004.
On
December 1, 2004, Network Solutions, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <support-icq.com> is
registered with Network Solutions, Inc. and that Respondent is the current
registrant of the name. Network Solutions, Inc. has
verified that Respondent is
bound by the Network Solutions, 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 1, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"),
setting
a deadline of December 21, 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@support-icq.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 National Arbitration
Forum transmitted to the parties a Notification of Respondent Default.
On
December 28, 2004, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the National Arbitration
Forum appointed
Tyrus R. Atkinson, Jr., as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration 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 National Arbitration 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 <support-icq.com>
domain name is confusingly similar to Complainant’s ICQ mark.
2. Respondent does not have any rights or
legitimate interests in the <support‑icq.com> domain name.
3. Respondent registered and used the <support-icq.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant owns
several trademark registrations worldwide for the ICQ mark, including U.S. trademark
Reg. No. 2,411,657 (issued December
12, 2000), on file at the United States
Patent and Trademark Office. At least as early as 1996, Complainant began using
the ICQ mark
in connection with computer- and Internet-related goods and
services. Since its first adoption, the ICQ mark has been used continuously
and
extensively in interstate and international commerce in connection with the
advertising and sale of goods and services. Each
year, tens of millions of
customers worldwide obtain goods and services offered under the ICQ mark. The
ICQ mark has been and continues
to be publicized though advertising throughout
the United States and the world. At the time that Respondent registered the
disputed
domain name, Internet users had downloaded Complainant’s ICQ software
almost 200 million times. Complainant also operates a website
at the
<icq.com> domain name.
Respondent
registered the <support-icq.com> domain name on August 20, 2003.
The domain name resolves to a commercial pornographic website. Respondent is
not authorized or
licensed to use Complainant’s ICQ mark for any purpose.
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 that it has rights in the ICQ mark through registration with the
United States Patent and Trademark Office
and through continuous use of the
mark in commerce. 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).
The <support-icq.com>
domain name is confusingly similar to Complainant’s ICQ registered trademark
because the disputed domain name fully incorporates
the mark while merely
adding the generic term “support,” a hyphen between the terms of the
second-level domain, and the “.com” generic
top-level domain. The addition of a
generic term, a hyphen, and a generic top-level domain does not distinguish the
disputed domain
name from 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 InfoSpace.com, Inc. v. Ofer,
D2000-0075 (WIPO Apr. 27, 2000) (“[t]he domain name ‘info-space.com’ is
identical to Complainant’s INFOSPACE trademark. The addition
of a hyphen and
.com are not distinguishing features”); 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 Westfield
Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the
<westfieldshopping.com> domain name confusingly similar because the
WESTFIELD
mark was the dominant element); see also 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).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent
has failed to submit a Response in this proceeding. Therefore, Complainant’s
submission has gone unopposed and its arguments
unrefuted. In the absence of a
Response, the Panel accepts as true all reasonable allegations contained in the
Complaint unless clearly
contradicted by the evidence. Because Respondent has
failed to submit a Response, it has failed to propose any set of circumstances
that could substantiate its rights or legitimate interests in the <support-icq.com>
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 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 the Complaint to be deemed true).
Respondent
is not using the disputed domain name in connection with a bona fide offering
of goods or services under Policy ¶ 4(c)(i),
nor is Respondent making a
legitimate noncommercial or fair use of the domain name pursuant to Policy ¶
4(c)(iii). The record reveals
that Respondent’s domain name redirects
unsuspecting Internet users to a pornographic website. The Panel infers that
Respondent commercially
benefits from the diversion of Internet users searching
under Complainant’s mark to Respondent’s unrelated pornographic website.
Respondent makes opportunistic use of Complainant’s mark in order to capitalize
on the goodwill and fame associated with the ICQ
moniker; thus, Respondent
fails to establish rights or legitimate interests in the <support-icq.com>
domain name. See U.S. Franchise Sys., Inc. v. Howell, FA 152457 (Nat.
Arb. Forum May 6, 2003) (holding that
Respondent’s use of Complainant’s mark and the goodwill surrounding that mark
as a means of attracting Internet users
to an unrelated business was not a bona
fide offering of goods or services); see
also 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 Am.
Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21,
2000) (finding that use of Complainant’s mark “as a portal to suck surfers into
a site sponsored
by Respondent hardly seems legitimate”); 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).
Moreover,
the fact that the disputed domain name, which is confusingly similar to
Complainant’s ICQ mark, resolves to a pornographic
website is evidence that
Respondent lacks rights or legitimate interests in the <support-icq.com>
domain name pursuant to Policy ¶ 4(a)(ii). See 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”); see
also McClatchy Mgmt. Serv., Inc. v. Carrington, FA 155902 (Nat. Arb. Forum
June 2, 2003) (holding that Respondent’s use of the disputed domain names
to divert Internet users to a website that features pornographic material, had
been “consistently held” to be neither
a bona fide offering of goods or
services . . . nor a legitimate noncommercial or fair use).
No
evidence before the Panel suggests that Respondent is commonly known by the
<support-icq.com> domain name under Policy ¶ 4(c)(ii).
Respondent’s WHOIS information indicates that the registrant of the disputed
domain name
is known as “longo”
and is not known by the confusing second-level domain that infringes on
Complainant’s ICQ mark. Moreover, Respondent is not authorized
or licensed to
use Complainant’s mark for any purpose. 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 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").
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
uses a confusingly similar variation of Complainant’s ICQ mark within the <support-icq.com>
domain name to ensnare unsuspecting Internet users. Respondent then redirects
the users to a commercial website. The Panel infers
that Respondent
commercially benefits from this diversion. Such infringement is what the Policy
was intended to remedy. Thus, the
Panel finds Respondent registered and used
the domain name in bad faith under Policy ¶ 4(b)(iv). See 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 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,
while each of the four circumstances listed under Policy ¶ 4(b), if proven,
evidences bad faith use and registration
of the <support-icq.com>
domain name, additional factors can also be used to support findings of bad
faith. See Twentieth Century Fox
Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that
in determining if a domain name has been registered in bad faith, the Panel
must look at the “totality of circumstances”); see also Do The Hustle, LLC
v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“the examples [of bad
faith] in Paragraph 4(b) are intended to be illustrative, rather than
exclusive”).
The disputed
domain name resolves to a pornographic website that is unrelated to services
that Complainant offers under its ICQ mark.
Such tarnishing use of
Complainant’s mark is itself evidence of bad faith registration and use of the
disputed domain name 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 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).
Respondent’s
registration of the disputed domain name, which incorporates Complainant’s
well-known registered mark and simply adds
a hyphen and the generic term
“support,” suggests that Respondent knew of Complainant’s rights in the ICQ
mark. Additionally, Complainant’s
trademark registration, on file at the United
States Patent and Trademark Office, gave Respondent constructive notice of
Complainant’s
mark. Thus, the Panel finds that Respondent chose the <support-icq.com>
domain name based on the distinctive and well-known qualities of Complainant’s
mark, which evidences bad faith registration and
use pursuant to Policy ¶
4(a)(iii). See Pavillion Agency,
Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding
that the “domain names are so obviously connected with the Complainants that
the use or
registration by anyone other than Complainants suggests
‘opportunistic bad faith’”); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000)
(finding bad faith registration and use where it is “inconceivable that the
respondent could make
any active use of the disputed domain names without
creating a false impression of association with the Complainant”); see also Reuters Ltd. v. Teletrust IPR Ltd.,
D2000-0471 (WIPO Sept. 8, 2000) (finding that Respondent demonstrated bad faith
where Respondent was aware of Complainant’s famous
mark when registering the
domain name as well as aware of the deception and confusion that would
inevitably follow if he used the
domain names); see also Digi Int’l v. DDI
Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy
paragraph 4(b) sets forth certain circumstances, without limitation,
that shall
be evidence of registration and use of a domain name in bad faith); see also
Samsonite Corp. v. Colony Holding,
FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith
includes actual or constructive knowledge of a commonly
known mark at the time
of registration); see also Orange Glo Int’l v. Blume, FA 118313 (Nat.
Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the
Principal Register of the USPTO, a status
that confers constructive notice on
those seeking to register or use the mark or any confusingly similar variation
thereof”).
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 <support-icq.com> domain name be TRANSFERRED
from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated:
January 10, 2005
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URL: http://www.worldlii.org/int/other/GENDND/2005/126.html